3M Company v. Para-Flex Medical Supplies, Inc.
Claim Number: FA0611000842935
Complainant is 3M Company (“Complainant”), represented by Richard
A. Kempf, of Moore & Hansen, PLLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <littmannscope.com>, registered with Network Solutions, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2006.
On November 15, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <littmannscope.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 2006 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@littmannscope.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <littmannscope.com> domain name is confusingly similar to Complainant’s LITTMANN mark.
2. Respondent does not have any rights or legitimate interests in the <littmannscope.com> domain name.
3. Respondent registered and used the <littmannscope.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 3M Company, has continuously and extensively used the LITTMANN mark since 1942 in connection with stethoscopes for use in the medical industry.
Complainant has registered the LITTMANN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 751,809 issued June 25, 1965; Reg. No. 1,115,217 issued March 20, 1979). Complainant also holds domain name registrations containing the LITTMANN mark, including <littmann.com> (registered on August 5, 1997), <litmann.com> (registered on April 5, 2000), <littmannscopes.com> (registered on April 29, 2003), and <littmannstethoscopes.com> (registered on October 11, 2004).
Respondent’s <littmannscope.com> domain name, which it registered on October 18, 1999, resolves to a website with sponsored links to third-party websites containing content unrelated to Complainant, including links to Complainant’s competitors in the medical supply industry. When Complainant contacted Respondent in reference to the <littmannscope.com> domain name, Respondent offered to sell the disputed domain name registration to Complainant in exchange for $20,000.
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 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.”).
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.
Because Complainant has registered the LITTMANN mark with
the USPTO, the Panel finds that Complainant has sufficiently established its
rights in the mark under Policy ¶ 4(a)(i). See Thermo Electron Corp
et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding
that the complainants established rights in marks because the marks were
registered with a trademark authority); see also Reebok Int’l Ltd. v.
The <littmannscope.com> domain name contains
Complainant’s entire registered LITTMANN mark and simply adds the term “scope,”
which undoubtedly references “stethoscopes,” the main product Complainant
manufactures and sells under the LITTMANN mark.
In Parfums Christian Dior v. 1
Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000), the panel held that the
respondent’s four domain names were confusingly similar to the complainant’s
DIOR mark because each merely added a descriptive word such as “fashion” or
“cosmetics,” areas in which the complainant was highly successful. Likewise, in this case, Respondent has
failed to sufficiently distinguish the <littmannscope.com> domain
name from Complainant’s mark by the simple addition of a term describing
Complainant’s business. As a result, the
Panel finds the disputed domain name to be confusingly similar to the mark
pursuant to Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v.
Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several
domain names incorporating the complainant’s entire EXPERIAN mark and merely
adding the term “credit” were confusingly similar to the complainant’s mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or
legitimate interests in the <littmannscope.com> domain name. Complainant must first make a prima facie
case in support of its assertions, and then the burden shifts to Respondent to
prove that it does have rights or legitimate interests in the <littmannscope.com>
domain name pursuant to Policy ¶ 4(a)(ii). See 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).”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
Respondent’s failure to respond to the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See Am. Online,
Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or
legitimate interests where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the domain name under the name “Domain Administrator,” and there is no other
evidence in the record suggesting that Respondent is commonly known by the <littmannscope.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <littmannscope.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
In addition, Respondent operates a website at the <littmannscope.com>
domain name featuring sponsored links that resolve to various third-party
websites unrelated to Complainant. In Golden Bear Int’l, Inc. v.
Kangdeock-ho, FA 190644 (Nat. Arb.
Forum Oct. 17, 2003), the respondent registered the <nicklausgolf.com> domain
name, which included the complainant’s NICKLAUS mark, and used it to operate a
website displaying links to third-party websites. The panel held that the respondent’s
diversion of Internet users to websites unrelated to the complainant’s mark did
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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
After Complainant contacted Respondent concerning the <littmannscope.com>
domain name registration, Respondent asked for $20,000 in exchange for
transferring the disputed domain name registration to Complainant. Complainant submits evidence of a letter
Respondent sent to Complainant reiterating its offer to sell for $20,000, which
states that this price covers more than Respondent’s out-of-pocket registration
costs. The Panel concludes that
Respondent’s offer to sell for $20,000 amounts to bad faith registration and
use of the disputed domain name according to Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the
disputed domain name and offered to sell it to Complainant for $10,600.
This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000)
(finding bad faith where the respondent offered to sell the Domain Name to the
complainant for $10,000 when the respondent was contacted by the complainant).
In addition, Respondent’s <littmannscope.com> domain name resolves to a web page displaying links to Complainant’s competitors in the medical supply industry. In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel found that the respondent had registered and used the <euro-disney.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because it resolved to a website promoting a competing theme park. As Respondent is also redirecting Internet users interested in Complainant to competing websites and disrupting Complainant’s business, Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Moreover, by maintaining a web page at the <littmannscope.com>
domain name that features links to various third-party websites unrelated to
Complainant, including Complainant’s competitors, Respondent is attempting to
attract, for commercial gain, Internet users seeking Complainant’s products and
services under the LITTMANN mark to its own website where it can earn
click-through fees for diverting these Internet users to other websites. In BPI Comm’cns, Inc. v.
Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), the
respondent registered and was using the <billboard.tv> domain name to
operate a web page with links to entertainment and music websites. The panel found such use to constitute bad
faith, as the complainant used the BILLBOARD mark in connection with music and
entertainment services and there was “clearly a likelihood of confusion between
<billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation,
or endorsement of the web site or of a product or service on the web
site.”
The Panel concludes that Complainant has 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 <littmannscope.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyruss R. Atkinson, Jr., Panelist
Dated: December 29, 2006
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