3M Company v. DESMOND HUANG
Claim Number: FA1506001626332
Complainant is 3M Company (“Complainant”), represented by Andrea K. Shannon of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is DESMOND HUANG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <privacyfilter-3m.com>, registered with FastDomain Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2015; the Forum received payment on June 26, 2015.
On June 29, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <privacyfilter-3m.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 June 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@privacyfilter-3m.com. Also on June 30, 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 July 27, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it uses the 3M mark to identify itself as a provider of over 50,000 products and services in a wide variety of fields under the mark, including a wide range of accessories for computers and related consumer electronics such as privacy filters (screens). Complainant has registered the 3M mark in various jurisdictions, dating back to at least 1983.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s 3M mark because it incorporates the descriptive terms “privacy filter,” adds a hyphen to Complainant’s 3M mark, and inserts the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor does Respondent operate a business or other organization under the name “3M.” Further, Respondent is using the 3M mark without consent from Complainant. Respondent’s lack of rights or legitimate interests in the disputed domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the disputed domain name to divert its website customers seeking to buy Complainant’s privacy filters, and sells counterfeit 3M privacy filters to those customers. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by diverting Complainant’s consumers to Respondent’s own website in which it sells counterfeit versions of Complainant’s products. Additionally, Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Finally, Respondent had knowledge of Complainant’s rights in the 3M mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark 3M and uses it to market a wide range of products, including privacy filters (screens) for computers and mobile telephones.
Complainant’s mark is famous and its registration dates back to 1983.
The disputed domain name was registered in 2014.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name points to a web site that offers counterfeit versions of Complainant’s products.
The web site at the disputed domain name displays Complainant’s mark.
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 Panel holds that the disputed domain name is confusingly similar to Complainant’s 3M mark. The disputed domain name incorporates the descriptive term “privacy filter,” adds a hyphen to Complainant’s 3M mark, and inserts the gTLD “.com.” The term “privacy filter” refers to a category of products which attach directly over computer monitor screens, and Complainant sells privacy filters for a variety of electronic consumer devices. Prior panels have found that the addition of a descriptive term does not negate confusing similarity, and can even enhance confusion when the term relates to a complainant’s business offerings. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”)
Complainant provides evidence showing that Respondent uses the disputed domain name to resolve to a website which offers for sale counterfeit versions of Complainant’s privacy screens. The Panel holds that Respondent’s use of the disputed domain names to host websites selling counterfeit versions of Complainant’s goods is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also 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.”).
Complainant presents evidence showing that the resolving website uses Complainant’s mark in order to create the appearance that the disputed domain names are affiliated with Complainant’s business. The Panel holds that Respondent’s use of the disputed domain name in an attempt to pass itself off as associated with Complainant is further evidence that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
As previously mentioned, Complainant presents evidence showing that the disputed domain name resolves to a website that create a likelihood of confusion as to Complainant’s affiliation with the site and offers for sale counterfeit replicas of Complainant’s goods. Complainant also presents evidence showing that the web site at the disputed domain name displays Complainant’s mark in an attempt to sell counterfeit goods. The Panel holds that Respondent profits from the sale of these goods. The Panel holds that Respondent’s attempt to gain commercially from the confusion among Internet users constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also 3M Company v. xiankai zeng, FA1211001473769 (NAF Jan. 18, 2013) (finding Respondent’s use of the red 3M logo and sale of counterfeit 3M products demonstrated Respondent’s bad faith registration of 3m-privacy-filter.org).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <privacyfilter-3m.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 28, 2015
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