3M Company v. Burcu Honca
Claim Number: FA1505001618437
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Burcu Honca (“Respondent”), TR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3mespe.dental>, registered with Dynadot, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2015; the Forum received payment on May 8, 2015.
On May 11, 2015, Dynadot, LLC confirmed by e-mail to the Forum that the <3mespe.dental> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 May 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@3mespe.dental. Also on May 12, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
A. Complainant
Complainant made the following contentions
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a leading seller of various products for consumers and businesses including products catering for the dental profession.
2. Complainant has established rights in the 3M mark through registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 793,456, registered July 27, 1965). Complainant has also registered the ESPE mark with the USPTO for use in its business of providing material for dental impressions (Reg. No. 759,295, registered October 29, 1963).
3. Respondent registered the disputed domain name on October 17,
2015. Respondent has failed to make any active use of 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.
In view of 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 draw such inferences it 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant, 3M, uses and has used the 3M mark in connection with its business as a leading provider of products for individual consumers and businesses. Complainant uses the ESPE mark when selling products catering for the dental profession. Complainant claims that it has rights in the 3M and ESPE marks through registration with multiple domestic and international trademark agencies including the USPTO. Complainant’s USPTO registration information for the 3M and ESPE marks are, respectively, (Reg. No. 793,456, registered July 27, 1965); (Reg. No. 759,295, registered October 29, 1963). Panels have routinely held that registration with the USPTO is sufficient to establish a complainant’s rights in a mark. See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”) As Complainant has registered the 3M and ESPE marks with the USPTO, the Panel finds that Complainant has established its rights in the marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical
or confusingly similar to Complainant’s 3M and ESPE marks .Complainant further
claims that Respondent’s disputed <3mespe.dental> domain name is
confusingly similar to the 3M and ESPE marks in which it has rights. The Panel
notes that Respondent’s disputed domain name includes both the 3M and ESPE
marks in their entirety plus the top-level domain (“TLD”) “.dental” which can
only strengthen the notion that the domain name deals with the dental products
of Complainant. Previous panels have held that the inclusion of a TLD in a
domain name is not relevant to a determination of confusing similarity. See
Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat.
Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is
identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety, and only deviates from it with the addition
of the Romanian country-code of “.ro.” Because top-level domains are required
of domain name registrants, their addition has been determined to be
inconsequential when conducting an identical analysis under Policy ¶
4(a)(i).”). The Panel therefore finds that Respondent’s disputed <3mespe.dental>
domain name is confusingly similar to Complainant’s marks.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take both of Complainant’s 3M and ESPE marks in their entirety, together with the top-level domain (“TLD”) “.dental” and to use them in its domain name, raising the probability that it is referring to Complainant’s trademarked dental products;
(b) Respondent has retained but has not used the domain name for a website;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant argues that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information indicates that the registrant of the disputed domain name is “Burcu Honca.” There is no other information provided to support a contention that Respondent is commonly known by the disputed domain name, as Respondent has failed to submit a Response in this proceeding. Panels have found that a Respondent is not commonly known by a disputed domain name based on WHOIS information. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel therefore finds that Respondent is not commonly known by the disputed domain name as required by Policy ¶ 4(c)(ii);
(e) Complainant argues that Respondent has never received permission to use the 3M or ESPE marks in any fashion. Panels have found that a respondent’s precipitous use of a trademark without permission from a complainant can lead to the conclusion that the respondent lacked rights or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). The Panel accordingly finds that Respondent’s lack of permission to use the marks denotes a lack of rights or legitimate interests in the disputed domain name;
(f)Complainant further argues that Respondent’s disputed <3mespe.dental> domain name is not being used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this contention, Complainant has attached Exhibit 11, which shows the disputed domain name as resolved on April 24, 2015. The Panel notes that the domain name fails to resolve to a working webpage. Panels have routinely found that failure to make an active use of a domain name that infringes on the established marks of another is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)). The Panel therefore finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that its trademark registrations for the 3M and ESPE marks existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the marks. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's marks, Respondent had actual knowledge of the marks and Complainant's rights. Thus, the Panel holds in the present case that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) and with actual knowledge, as it must have known of Complainant’s famous name and trademarks. 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."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Secondly, Complainant argues that Respondent’s failure to use the disputed domain name can evince Respondent’s bad faith according to Policy ¶ 4(a)(iii). The Panel notes Complainant’s argument above, which support this contention. See Compl., at attached Ex. 11. Previous Panels have held that the failure of a respondent to use a disputed domain name actively can be evidence of bad faith. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). The Panel therefore holds that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii).
Thirdly, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using both of Complainant’s 3M and ESPE marks, its retention since registration and Respondent’s failure to file a Response and justify the use of Complainant’s trademarks, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3mespe.dental> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 8, 2015
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