National Arbitration Forum

 

DECISION

 

3M Company v. Innovation Interactive

Claim Number: FA0612000873252

 

PARTIES

Complainant is 3M Company (“Complainant”), represented by Joel D. Leviton, of Fish & Richardson P.C., 60 South Sixth Street, Minneapolis, MN 55402.  Respondent is Innovation Interactive (“Respondent”), represented by Maria A. Savio, of Gottlieb, Rackman & Reisman, P.C., 270 Madison Avenue, New York, NY.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <3mscotchlitereflectivetape.com>, <3mpressuresensitivetape.com>, <3mreflectivetape.com>, <3msealant.com>, <3msealants.com>, <postitnoteholder.com> and <scotchtapedispenser.com>, registered with Go Daddy Software, Inc.

 

PANEL

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.

 

David P. Miranda, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2006.

 

On December 20, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <3mscotchlitereflectivetape.com>, <3mpressuresensitivetape.com>, <3mreflectivetape.com>, <3msealant.com>, <3msealants.com>, <postitnoteholder.com> and <scotchtapedispenser.com> domain names are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 December 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2007 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@3mscotchlitereflectivetape.com, postmaster@3mpressuresensitivetape.com, postmaster@3mreflectivetape.com, postmaster@3msealant.com, postmaster@3msealants.com, postmaster@postitnoteholder.com and postmaster@scotchtapedispenser.com by e-mail.

 

A timely Response was received and determined to be complete on January 9, 2007.

 

On January 15, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant 3M Company of St. Paul, Minnesota (“Complainant”) is the owner of federally registered trademarks to the following:  3M, SCOTCH, SCOTCHLITE, and POST-IT.  Complainant uses the marks in connection with thousands of different products, including, but not limited to, sealants, tapes, office supplies, and adhesive products.  Founded in 1902, the company’s sales in 2005 exceeded $21 billion dollars.  Complainant contends that Respondent Innovation Interactive (“Respondent”) domain names are identical or confusingly similar to Complainant’s marks.  Complainant further contends that Respondent has no rights or legitimate interests in the domain names in that Respondent does not use the domain names in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the domain names, and Respondent has never been known as, or referred to as any of the names incorporated in the domain names.  Complainant contends that Respondent registered and is using the domain names in bad faith by attempting to attract internet users to advertisements to its websites for commercial gain; using the domain names to advertise adult oriented websites; has a pattern of registering domain names based upon the trademark of others; and had knowledge of Complainant’s rights prior to registering the domain names.

 

B. Respondent

 

Respondent does not contest any of the Complainant’s allegations, and consents to the transfer of the domains to the Complainant.

 

FINDINGS

Respondent has submitted a Response in which it consents to the transfer of the disputed domain name registrations to Complainant.  Respondent does not contest any of Complainant’s allegations regarding the disputed domain names and has admitted that it does not have any interest in retaining the disputed domain name registrations.  The Panel finds that the Complainant has met its burden under the UDRP analysis and orders the immediate transfer of the domain names.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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 has established all elements of the UDRP claim.  Respondent does not dispute any of the allegations, and consents to the transfer of the domain names in question.  Where the Respondent has agreed to comply with Complainant’s request to transfer the domain names, the panel may order the transfer of the disputed domain names.  See The Royal Bank of Scot. Group plc v. rbspayments, FA 728805 (Nat. Arb. Forum July 7, 2006) (transferring the <rbspayments.com> domain name where the respondent agreed to the transfer and did not contest any of the complainant’s allegations); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); Disney Enters. Inc. v. Morales, FA475191 (Nat. Arb. Forum June 24, 2005).

 

DECISION

Having established a proper case for transfer under the ICANN Policy, the Panel concludes that the relief shall be GRANTED.

 

Accordingly, it is Ordered that the <3mscotchlitereflectivetape.com>, <3mpressuresensitivetape.com>, <3mreflectivetape.com>, <3msealant.com>, <3msealants.com>, <postitnoteholder.com> and <scotchtapedispenser.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

David P. Miranda, Esq., Panelist
Dated: January 29, 2007

 

 

 

National Arbitration Forum