3M Company v. judd coe / Heat Shield USA
Claim Number: FA1408001576088
Complainant is 3M Company (“Complainant”), represented by Shelby Knutson Bruce of Fulbright & Jaworski LLP, Minnesota, USA. Respondent is judd coe / Heat Shield USA (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2014; the National Arbitration Forum received payment on August 21, 2014.
On August 21, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2014 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@3mwindowfilmdenver.com, as well as postmaster@3mwindowtintingdenver.com. Also on August 27, 2014, 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.
A timely Response was received and determined to be complete on September 16, 2014.
Both parties submitted Additional Submission, which comply with Supplemental Rule 7.
On September 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims it uses the 3M mark in connection with a wide range of products, including window tints. Complainant has registered the mark with the United States Patent and Trademark Office ("USPTO"). The <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names are confusingly similar to the 3M mark.
Respondent has no rights or legitimate interests in the <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names. Among other things, Respondent is not known by these domain names. Moreover, Respondent has used both of the <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names to promote his own business.
Further, Respondent registered the <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names with the 3M mark in mind. Respondent has acted in bad faith and is bait-and-switching consumers who falsely believe they are buying goods endorsed by Complainant. Even if some of the goods are 3M goods, Complainant does not approve of the use of these domain names.
B. Respondent
Respondent has rights in the <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names. Respondent has sold 3M goods in Denver since 1986. Respondent is only using the 3M mark to show that he sells Complainant’s 3M window tinting goods in the vicinity of Denver.
If consumers contact Respondent via the disputed domain names and decide to buy non 3M products instead, this is their right to do so. Respondent agrees to remove any language as to Respondent’s exclusive rights in advertising and promotions.
Respondent has never claimed to be affiliated with 3M.
C. Additional Submissions
Complainant has filed additional submissions.
Among other arguments, Complainant considers that Respondent has not managed to demonstrate rights or legitimate interests as a reseller. He also confirms his bad faith use and registration of the domain names by his offer to transfer the domains for a “negotiated price” instead of his out of pocket costs. In addition, the disputed websites falsely portray a relationship with 3M and do not accurately disclose the Respondent’s relationship with Complainant.
Complainant uses the 3M mark in connection with a wide range of products, including window tints. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,193,178, registered April 6, 1982).
Respondent registered the <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names on June 9, 2013, and uses them to direct towards websites offering 3M and competing products for sale.
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.
Complainant claims it uses the 3M mark in connection with a wide range of products, including window tints. Complainant has registered the mark with the United States Patent and Trademark Office ("USPTO"). The 3M mark has indeed been registered with the USPTO (e.g., Reg. No. 1,193,178, registered April 6, 1982). The Panel concludes that Respondent has valid rights in the 3M mark by way of such USPTO registrations. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims the <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names are confusingly similar to the 3M mark. The Panel finds that the addition of the geographic term “denver,” the descriptive phrases “window film” and “window tinting” corresponding to the products does not defeat the confusing similarity created by the presence of the 3M mark in these domain names. See, e.g., Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”).
In addition, adding the generic top-level domain ("gTLD") “.com” to Complainant’s mark is not sufficient to distinguish the domain names from the mark. Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel concludes that the at-issue domain names are confusingly similar to Complainant’s trademark 3M. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by either of these <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names. Respondent has not managed to demonstrate the contrary. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further claims both the <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names are being used to promote the unauthorized sale of 3M goods along with other competing products. Respondent does not deny this statement. On the contrary, Respondent confirmed in his Response that he offers competing products for sale. In addition, according to Complainant, he actively promotes competing products and falsely presents himself as an exclusive distributor of 3M decorative window films.
Therefore, Respondent’s use of these domain names is neither a Policy ¶ 4(c)(i) bona fide offering, nor Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain names. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant claims Respondent registered the <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names with the 3M mark in mind. The Panel agrees since Respondent clearly states it sells 3M products through the domain names’ websites. As such, Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant claims Respondent has acted in bad faith and is bait-and-switching consumers who falsely believe they are buying goods endorsed by Complainant. Complainant argues that even if the goods are 3M goods, Complainant does not approve of the use of these domain names. In addition, the Panel notes how Respondent uses Complainant’s marks in the <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> websites for selling products offered by Complainant’s competitors and, sometimes, products bearing the 3M trademark.
The Panel concludes that Respondent is profiting from a likelihood that Internet users will be confused as to Complainant’s association with Respondent’s unrelated business under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant satisfied the elements of ICANN 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 <3mwindowfilmdenver.com> and <3mwindowtintingdenver.com> domain names be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: September 25, 2014
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