3M Company v. B K Jeong
Claim
Number: FA0506000505494
Complainant 3M Company (“Complainant”) is
represented by Joel D. Leviton of Fish & Richardson P.C., P.A., 60 South Sixth Street, Suite 3300, Minneapolis, MN, 55402. Respondent is B K Jeong (“Respondent”) #602 105-Dong Chunggu-Jeonwon Apt.,
Siji-Dong Suseong-Gu, Daegu, 706779, KR.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <3mcuno.com>, registered with Cydentity,
Inc. d/b/a Cypack.com.
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 June 24,
2005; the National Arbitration Forum received a hard copy of the Complaint June
27, 2005. The Complaint was submitted
in both Korean and English.
On
June 27, 2005, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the
National Arbitration Forum that the domain name <3mcuno.com> is
registered with Cydentity, Inc. d/b/a Cypack.com and that Respondent is the
current registrant of the name. Cydentity,
Inc. d/b/a Cypack.com verified that Respondent is bound by the Cydentity, Inc.
d/b/a Cypack.com registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
July 7, 2005, a Korean language Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 27, 2005, by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@3mcuno.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 2, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson 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.”
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.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Korean language Complaint and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <3mcuno.com>, is confusingly similar to Complainant’s
3M mark.
2. Respondent has no rights to or legitimate
interests in the <3mcuno.com> domain name.
3. Respondent registered and used the <3mcuno.com>
domain name in bad faith.
B. Respondent failed to submit a Response in this
proceeding.
Complainant, 3M
Company, develops and markets innovative products and solutions that serve a
diverse field of customers throughout the world. Since it was founded in 1902, Complainant has become a global
company with milestones including the development of the world’s first
waterproof sandpaper in the early 1920s, the invention of masking tape in 1925,
the development of Scotch brand cellophane tape in the late 1920s, and the
development of Post-it Notes in the 1970s.
In 2004, Complainant’s sales topped $20 billion.
In 1906,
Complainant adopted a logo containing the designation of 3M CO. Since then, the 3M mark has appeared on
variety of products. Complainant also
holds nearly 300 trademark registrations for marks comprising or containing the
3M mark with the United States Patent and Trademark Office (“USPTO”) (E.g.
Reg. No. 1550833 issued August 8, 1989).
On May 12, 2005,
at 6:00AM Eastern Time, Complainant issued a press release announcing its plan
to acquire Cuno Inc., a leading designer, manufacturer and marketer of
filtration products. Later that same
day, Respondent registered the <3mcuno.com> domain name. The disputed domain name was originally
registered to H J Shin, who transferred it to Respondent after receiving the
Complaint.
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.”
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
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.”).
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.
Complainant’s
registration for its 3M mark with the USPTO is sufficient to establish a prima
facie case of rights in the mark. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”). Because Respondent failed to submit a
response, Complainant’s presumption of rights is undisputed. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.”). Thus, the Panel finds that Complainant has
established rights for purposes of Policy ¶ 4(a)(i).
Complainant
argues that the domain name that Respondent registered, <3mucno.com>,
is confusingly similar to its 3M mark.
The disputed domain name wholly incorporates the famous 3M mark and
combines it with the trademark of a company 3M intends to acquire. The Panel holds that the term “cuno” relates
to 3M’s business activities since it is the subject of an acquisition. Thus, the Panel concludes that the addition
of such a term is not sufficient to distinguish Complainant’s mark from the
disputed domain name. See Brambles
Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000)
(finding that the domain name <bramblesequipment.com> is confusingly
similar because the combination of the two words "brambles" and
"equipment" in the domain name implies that there is an association
with the complainant’s business); see also Am. Int’l Group, Inc. v. Ling Shun
Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition
of the term “assurance,” to the complainant’s AIG mark failed to sufficiently
differentiate the name from the mark under Policy ¶ 4(a)(i) because the
appended term related directly to the complainant’s business).
The Panel finds that Complainant
satisfied Policy ¶ 4(a)(i).
Complainant’s
allegation that Respondent has no rights to or legitimate interests in the <3mcuno.com>
domain name establishes a prima facie case. Consequently, the burden shifts to Respondent to produce concrete
evidence to dispute Complainant’s assertions.
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001):
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is not commonly known by the disputed domain name. In fact, Respondent’s WHOIS information
indicates that Respondent is known as “B K Jeong.” Because Respondent did not submit a response, the Panel accepts
Complainant’s allegations as true. See
Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a
substantive answer in a timely fashion, the Panel accepts as true all of the
allegations of the complaint.”). The
Panel concludes that because Respondent is not commonly known by the disputed
domain name, it has not established rights or legitimate interests under Policy
¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply).
Moreover,
Complainant argues that the content of Respondent’s website, a picture of a
computer and a link to an email address, is indicative that Respondent has no
rights to or legitimate interests in the <3mcuno.com> domain name
under Policy ¶ 4(a)(ii). Because
Respondent did not submit a response, the Panel must accept Complainant’s
descriptions as accurate and allegations as true. See Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent diverts users who are looking for Complainant’s newly merged
company to a website that is unrelated to the mark. The Panel holds that such diversion is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS
into Tech, FA 198795 (Nat. Arb. Forum Dec.
6, 2003) (“Diverting customers, who are looking for products relating to the
famous SEIKO mark, to a website unrelated to the mark is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003)
(“Respondent's use of a domain name confusingly similar to Complainant’s mark
to divert Internet users to websites unrelated to Complainant's business does
not represent 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).”). Therefore, the Panel concludes that
Respondent does not have rights to or legitimate interests in the domain name
pursuant to Policy ¶ (4)(c)(i) or (iii).
Accordingly, the
Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent
registered the <3mcuno.com> domain name with actual or
constructive knowledge of Complainant’s rights in the 3M mark. Given the worldwide prominence of
Complainant’s mark and Complainant’s 300 registrations of the mark with the
USPTO, the Panel concludes that Respondent had constructive knowledge of
Complainant’s rights. See Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive
knowledge of the complainant’s EXXON mark given the worldwide prominence of the
mark and thus the respondent registered the domain name in bad faith); see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the
mark due to the obvious connection between Complainant’s press release
regarding its acquisition of Cuno and the <3mcuno.com> domain
name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the “domain names are so obviously connected with
the Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”). The Panel holds that registration of a
confusingly similar domain name with actual or constructive knowledge of
Complainant’s rights in the mark constitutes bad faith use and registration
under Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
Moreover,
Respondent’s registration of the disputed domain name the same day that
Complainant issued the press release regarding the acquisition constitutes
opportunistic bad faith. Respondent is
capitalizing on the opportunity to register a domain name that contains the
names of both companies that are about to merge in order to confuse potential
consumers. The Panel concludes that
such registration is evidence of opportunistic bad faith and constitutes bad faith
use and registration under Policy ¶ 4(a)(iii).
See Reuters Ltd. v.
Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the
respondent demonstrated bad faith where the respondent was aware of the
complainant’s famous mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the domain
names); see also Sota v.
Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s
registration of the <seveballesterostrophy.com> domain name at the time
of the announcement of the Seve Ballesteros Trophy golf tournament “strongly
indicates an opportunistic registration”).
The Panel finds that Complainant satisfied 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 <3mcuno.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 11, 2005
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