3M Company v. XianYun Zeng / YunYao Technology Co.,Ltd
Claim Number: FA1408001576095
Complainant is 3M Company (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is XianYun Zeng / YunYao Technology Co.,Ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3m-privacy-filter.asia>, registered with Name.com R106-ASIA (625).
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 21, 2014; the National Arbitration Forum received payment August 21, 2014.
On August 21, 2014, Name.com R106-ASIA (625) confirmed by e-mail to the National Arbitration Forum that the <3m-privacy-filter.asia> domain name is registered with Name.com R106-ASIA (625) and that Respondent is the current registrant of the name. Name.com R106-ASIA (625) verified that Respondent is bound by the Name.com R106-ASIA (625) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2014, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@3m-privacy-filter.asia. Also on August 21, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant brings the following allegations in this proceeding:
Complainant uses the 3M mark in connection its broad range of products. The <3m-privacy-filter.asia> domain name is confusingly similar to the 3M mark in that it adds in hyphenation, the phrase “privacy filter,” and the top-level domain “.asia.”
Respondent has no rights to or legitimate interests in Complainant’s protected mark. Respondent is not known by the domain name. Respondent’s use of the domain name is neither a bona fide nor legitimately fair or noncommercial.
Respondent’s conduct is tantamount to bad faith use and registration.
Respondent’s Contentions in this proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the <3m-privacy-filter.asia> domain name February 28, 2013.
Complainant established that it has rights and legitimate interests in the 3M mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical to or Confusingly Similar
Complainant has used the 3M mark since it began operating in the early twentieth century in the Iron Range and upon the shores of Lake Superior in Minnesota. The 3M mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,275,187, registered April 24, 1984). This registration sufficiently evidences Policy ¶ 4(a)(i) rights in the 3M mark due to the scrutiny USPTO officials put into their registration processes. See, e.g., W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims the <3m-privacy-filter.asia> domain name is confusingly similar to the 3M mark. Complainant claims that neither “.asia” nor the portion “-privacy-filter” add distinctive value to this domain name. The Panel agrees; addition of the top-level domain “.asia” and the segment “-privacy-filter” do not distinguish the disputed domain name, which is confusingly similar to Complainant’s protected 3M mark. See, e.g., Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen). Therefore, this Panel finds the disputed domain name confusingly similar under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by the disputed domain name. Complainant notes that the only available evidence to demonstrate Respondent’s identity is the WHOIS information, which lists “XianYun Zeng / YunYao Technology Co.,Ltd” as the registrant of record for this domain name. The Panel agrees; Respondent is not known by the disputed domain name. Policy ¶ 4(c)(ii) is left unfulfilled. See, e.g., LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant next claims that the <3m-privacy-filter.asia> domain name is being used to promote a competing line of privacy filter products that will compete with Complainant’s legitimate merchandise. The Panel notes that Complainant supports this assertion with a screenshot of the <3m-privacy-filter.asia> domain name’s website—a website that promotes a line of screens that consumers can put over their computer or tablet screens to prevent other people from seeing what the consumer is working on at the angle of an onlooker. See Compl., at Attached Ex. F. The Panel agrees that Respondent’s use is not a bona fide offering when the domain name uses Complainant’s own mark to promote a line of goods attempting to compete with Complainant’s products. See, e.g., Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). Further, the Panel agrees it is unnecessary to analyze noncommercial or fair use under Policy ¶ 4(c)(iii) when the domain name as shown is clearly commercial.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims bad faith by alleging that Respondent engaged in a pattern of bad faith registration and use. See, e.g., 3M Company v. YunYao Technology Co., Ltd / XianYun Zeng / Xiankai Zeng, FA1403241 (Nat. Arb. Forum Sept. 28, 2011) (ordering transfer of <3mprivacyfilter.biz> and <3mprivacyfilter.asia> to Complainant); 3M Company v. XianYun Zeng / ZengXianYun, FA1405103 (Nat. Arb. Forum Oct. 11, 2011) (ordering transfer of <3mprivacyfilter.us> to Complainant); 3M Company v. li liandou / Robinson.Zeng / Zeng Xian Yun, FA1410335 (Nat. Arb. Forum Nov. 22, 2011) (ordering transfer of <3m-privacyfilter.com> and <3mprivacyfilter.org> to Complainant); 3M Company v. xiankai zeng, FA1473769 (Nat. Arb. Forum Jan. 18, 2013) (ordering transfer of <3m-privacyfilter.org to Complainant). The Panel agrees that Respondent’s pattern of infringing on Complainant’s trademark rights satisfied the Policy’s ¶ 4(b)(ii) requirements for bad faith. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant further alleges that Respondent’s sale of competing privacy filters is part of a scheme to capitalize on the likelihood that Internet users will confuse Complainant as the source or origin of these competing goods. See Compl., at Attached Ex. F. The Panel agrees that these competing privacy filter products may cause confusion among Internet users, who will assume a domain name such as <3m-privacy-filter.asia> would be associated with Complainant. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). As such, the Panel finds Policy ¶ 4(b)(iv) bad faith.
Complainant claims that Respondent ought to be held to have actual notice of Complainant’s rights, especially in light of the fact Respondent has many times before been ordered to transfer domain names that infringe on the 3M mark. The Panel agrees that Respondent actually knew of Complainant’s rights in the mark and Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3m-privacy-filter.asia> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 30, 2014
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