3M Company v. MetaPredict
Claim Number: FA0801001128873
Complainant is 3M Company (“Complainant”), represented by Chet
F. Garner, of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwscotchgard.com>, registered with Name Perfections, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 19, 2008 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@wwwscotchgard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <wwwscotchgard.com> domain name is confusingly similar to Complainant’s SCOTCHGARD mark.
2. Respondent does not have any rights or legitimate interests in the <wwwscotchgard.com> domain name.
3. Respondent registered and used the <wwwscotchgard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 3M Company, uses its SCOTCHGARD mark in
connection with a variety of products it produces that repel substances such as
water, dirt, grease and oil. Presently,
Complainant uses the SCOTCHGARD mark in order to market several dozen products
used to protect and clean multiple surface types. Complainant registered its SCOTCHGARD mark
with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <wwwscotchgard.com>
domain name on
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.
Complainant first registered its SCOTCHGARD mark with the
USPTO on
Respondent’s <wwwscotchgard.com>
domain name fully incorporates Complainant’s mark with a common typographical
error--the deletion of a period between “www” and the mark. In addition, the generic top-level domain
(“gTLD”) “.org” is not relevant in evaluating whether a disputed domain name is
confusingly similar to a mark.
Therefore, the Panel finds Respondent’s disputed domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb.
Forum Aug. 1, 2000) (finding that the respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to the complainant’s
registered trademark BANK OF
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. After Complainant presents a prima facie case in support of these
assertions, the burden shifts to Respondent to establish that it does have
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). The
Panel finds Complainant established a prima
facie case to support its assertions, and Respondent failed to submit a
response to the case. Therefore, the
Panel may assume Respondent does not have rights or legitimate interests in the
disputed domain name. However, the Panel
will inspect the record and determine whether Respondent has rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Respondent’s <wwwscotchgard.com> domain name resolves to a parked website. This parked website displays links to multiple third-party websites, some of which offer products similar to Complainant’s. Respondent presumably receives click-through fees for displaying these links. The Panel finds this diversionary use is not a use in connection with a bona fide offering of goods pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Lockheed Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat. Arb. Forum Jan. 23, 2008) (“Respondent’s…domain names all resolve to parked websites featuring links to third-party venture capital and financial websites that offer services in competition with Complainant, and Respondent accrues click-through fees from these links. The Panel finds that such use does not constitute either 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 also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).
In addition, the Panel finds Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the disputed domain name. There is no evidence in the record or WHOIS information indicating Respondent is commonly known by the <wwwscotchgard.com> domain name. Also, the record reflects Complainant has not given Respondent authorization to use its SCOTCHGARD mark. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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).
Furthermore, the disputed domain name merely omits the
period between “www” and Complainant’s mark, and thus constitutes a common
typing error. Pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent further lacks rights
and legitimate interests in the <wwwscotchgard.com>
domain name due to the typosquatted nature of the disputed domain
name. See Diners Club Int’l Ltd. v.
Domain Admin******It's all in the name******, FA 156839 (Nat. Arb.
Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of the complainant’s DINERS CLUB mark, was
evidence in and of itself that the respondent lacks rights or legitimate
interests in the disputed domain name); see
also National Ass’n of Prof’l Baseball
Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting . . . as a means of
redirecting consumers against their will to another site, does not qualify as a
bona fide offering of goods or services, whatever may be the goods or services
offered at that site.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <wwwscotchgard.com>
domain name resolves to a parked website that contains links to third-party
websites, some of which directly compete with Complainant’s business. The Panel finds such use constitutes
disruption and is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum
Additionally, Respondent
is using the disputed domain name to display a parked website containing
links to third-party websites some of which offer products that directly
compete with Complainant. Respondent
presumably receives click-through fees for displaying links on this parked
website. The Panel finds this is an
attempt by Respondent to profit from the goodwill associated with Complainant’s
SCOTCHGARD mark and constitutes registration and use in bad faith pursuant to
Policy ¶ 4(b)(iv).
See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain).
Finally, the
typosquatted nature of the <wwwscotchgard.com>
domain name further suggests that Respondent registered and is using the
disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3,
2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare
those individuals who forget to type the period after the ‘www’ portion of [a]
web-address,” which was evidence that the domain name was registered and used
in bad faith).
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwscotchgard.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 3, 2008
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