3M Company v. Domain Registries Foundation c/o Domain Admin
Claim Number: FA1504001614321
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Domain Registries Foundation c/o Domain Admin (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmanstethascope.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Scott R. Austin, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2015; the Forum received payment on April 13, 2015.
On April 14, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <littmanstethascope.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2015 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@littmanstethascope.com. Also on April 15, 2015, 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.
A timely Response was received and determined to be complete on May 4, 2015.
On May 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant, 3M Company, owns the LITTMANN mark through its numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 2,683,822, registered February 4, 2003 for a full line of stethoscopes, and Reg. No. 751, 809, registered June 25, 1963 for stethoscopes.
2. Complainant uses the LITTMANN mark in connection with a variety of products and services in the medical industry.
3. The <littmanstethascope.com> domain name is confusingly similar to Complainant’s LITTMANN mark, because it simply removes a letter “n” and adds the descriptive term “stethascope”, which is a common misspelling of “Stethoscope”, which is descriptive of one of Complainant’s products.
4. Respondent lacks rights and legitimate interests in the disputed domain name.
5. Respondent is not commonly known by the disputed domain name.
6. Respondent is neither licensed nor authorized to use Complainant’s LITTMANN mark.
7. Respondent has not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
8. Respondent uses the disputed domain name to intentionally divert Internet users away from Complainant’s website and to Respondent’s own website, in which it features confusingly similar content to that of Complainant, along with a variety of advertisements.
9. Respondent has offered the disputed domain name for sale.
10. Respondent’s disputed domain name resolves to a website that features links to competing products.
11. Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain.
12. Respondent had actual or constructive knowledge of Complainant and its rights in the LITTMANN mark when it registered the disputed domain name, due to the intentional misspelling of LITTMANN and the obvious connection between Respondent’s website and Complainant’s business.
B. Respondent makes the following contentions:
1. Respondent contends that it is a foreign company that owns a portfolio of generic and descriptive domain names which it acquired through lawful and fair methods.
2. Respondent consents to transfer the domain name, but requests that the Domain Name be transferred to Complainant without further findings of fact or liability, including those related to the elements set forth in Paragraph 4(a) UDRP Policy.
Complainant owns numerous registrations for the LITTMANN family of trademarks used with a variety of products and services in the medical industry. These include registrations for the marks LITTMANN in the United States specifically to identify a full line of stethoscopes, which distinctive marks have been used throughout the U.S., Canada and abroad.
Complainant through its predecessors in interest has used its marks in the U.S. since at least as early as 1942.
Complainant first registered and used the littmann.com domain name on August 5, 1997 and Complainant has continuously maintained the registration for littmann.com since that time.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LITTMANN mark including Reg. No. 2,683,822, registered February 4, 2003 for a full line of stethoscopes, and Reg. No. 751, 809, registered June 25, 1963 for stethoscopes.
Complainant’s marks were registered in the U.S well before Respondent registered its disputed domain name on March 26, 2015.
Respondent’s disputed domain name, <littmanstethascope.com> is confusingly similar to Complainant’s mark, because it incorporates Complainant’s distinctive LITTMANN mark in its entirety deleting only the final “n” at the end of the name comprising the mark, the products the mark is used to identify albeit containing a common typographical error substituting the initial “o” in stethoscope with the letter “a”, and the addition of a generic top-level domain. These additions do not distinguish the disputed domain name from Complainant’s mark.
Respondent’s WHOIS information identifies Respondent DOMAIN REGISTRIES FOUNDATION C/O DOMAIN ADMIN as registrant of the disputed domain name.
Respondent is not commonly known by Complainant’s mark LITTMANN, nor is Respondent authorized by Complainant to use any of Complainant’s marks.
Respondent is not affiliated with Complainant, nor an authorized employee, vendor, supplier, or distributor of Complainant’s goods or services.
Respondent has no rights or legitimate interests in the disputed domain <littmanstethascope.com> because it resolves to a website that provides for various searches linking users to websites where the products and services of competitors of Complainant are sold.
Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Respondent used Complainant’s trademarks in its domain name to direct Internet users to websites offering products and services in direct competition with Complainant.
Respondent had actual and constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using the disputed domain name
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 that Complainant must 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.
Preliminary Issue: Consent to Transfer
Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
As in Graebel, the Panel here is of the view that the consent to transfer is insufficient and this case should be decided on the merits, especially here, where the disputed domain name involves clear typo-squatting substituting the “a” for “o” in the word stethoscope, and incorporates Complainant’s mark and is not merely representative of “a portfolio of generic and descriptive domain names which it acquired through lawful and fair methods” as Respondent asserts.
Complainant contends that the <littmanstethascope.com> domain name is confusingly similar to Complainant’s LITTMANN mark, because Respondent has simply removed the redundant final letter “n” from the mark and added a misspelled version of the term “stethascope” which is the product Complainant’s mark identifies. Complainant also contends that the addition of this term enhances confusing similarity under Policy ¶ 4(a)(i), because it is a common misspelling of the word “stethoscope”, which is a term descriptive of Complainant’s products and services. The Panel notes that Respondent’s disputed domain name also differs from Complainant’s mark by the addition of the generic top-level domain (“gTLD”) “.com.” This Panel, however, agrees with previous panels that have found that removing a letter from a mark and adding a generic term to a mark are not sufficiently significant to remove a disputed domain from the realm of confusing similarity. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Similarly, as with prior panels, this Panel finds that the addition of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that a top level domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). As such, the Panel finds that Respondent’s <littmanstethascope.com> domain name is confusingly similar to Complainant’s LITTMANN mark pursuant to Policy ¶ 4(a)(i).
The Panel is reminded that 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 shifts to Respondent to show it does have 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.”).
It is Complainant’s contention that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). Further, Complainant urges that Respondent is neither licensed nor authorized to use any of Complainant’s LITTMANN marks. The Panel finds that “Domain Admin” is listed as the registrant of the disputed domain name. The Panel also notes that Respondent has failed to rebut any of Complainant’s specific contentions. Given the lack of evidence or argument to find otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also contends that Respondent has not provided any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that Respondent uses the disputed domain name to divert Internet users to its own website, at which it displays content provided confusing similarities to the goods and services of Complainant and offers pay-per-click advertisements and hyperlinks. See Compl., at attached Ex. 6-8. The Panel notes that the hyperlinks include “Stethoscope StethOLock” and “Welch Allyn Stethoscopes”, which appear to be Complainant’s competitors. Complainant contends that this is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. The Panel agrees and finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Additionally, Complainant contends that Respondent’s lack of rights and legitimate interests in the disputed domain name is further demonstrated by Respondent’s general offer to sell the disputed domain name. As shown in Complainant’s Exhibit 9, Respondent has offered to sell the disputed domain name for $799. This Panel finds that general offers to sell a disputed domain name indicate a lack of rights and legitimate interests in a disputed domain name according to Policy ¶ 4(a)(ii). See Deutsche Lufthansa AG v. Future Media Architects, Inc., FA 1153492 (Nat. Arb. Forum Apr. 17, 2008) (“The Panel finds that an offer to rent or lease the <lh.com> domain name supports findings of a lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”). As such, the Panel finds that Respondent’s offer to sell the disputed domain name demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). First, as noted above, Complainant maintains that Respondent has offered to sell the disputed domain name, which is evidence of bad faith under Policy ¶ 4(b)(i). The Panel refers to the evidence of such sale as shown in Complainant’s Exhibit 9. In light of this evidence, the Panel finds that Respondent’s offer to sell the disputed domain name is indicative of bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant also contends that Respondent’s use of the disputed domain name disrupts its business, which is evidence of bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent uses the disputed domain name to divert Internet users to Respondent’s own website, in which hyperlinks that point to some of Complainant’s competitors are featured as shown in Complainant’s Exhibit 8. The Panel notes the links featured are for “Stethoscope StethOLock” and “Welch Allyn Stethoscopes”. Panels have consistently found hyperlinks to a complainant’s competitors to be disruptive of Complainant’s business and to be evidence of bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Consequently, this Panel finds that Respondent’s actions are consistent with a finding of bad faith pursuant to Policy ¶ 4(b)(iii).
Next, Complainant contends that Respondent is acting in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent benefits by intentionally attracting Internet users to its own website. Complainant notes that Respondent has placed a variety of advertisements and hyperlinks as website content located at the disputed domain name, for which Respondent presumably receives click-through fees as shown in Complainant’s Exhibits 6-8. Generally, such behavior has been found indicative of bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Thus, the Panel finds that Respondent’s behavior indicates bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent must have had actual and or constructive knowledge of Complainant’s rights in the LITTMANN mark, due to its large global presence and the obvious connection between Respondent’s website and Complainant’s business. The Panel finds that arguments of bad faith based on constructive notice are irrelevant, because recent trends in UDRP case precedent have declined to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, based on the evidence provided by Complainant, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <littmanstethascope.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: June 7, 2015
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