3M Company v. Kabir S Rawat
Claim Number: FA1704001725052
Complainant is 3M Company (“Complainant”), represented by Andrea Shannon of Norton Rose Fulbright US LLP, Texas, USA. Respondent is Kabir S Rawat (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nexcare.org>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 3, 2017; the Forum received payment on April 3, 2017.
On April 4, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nexcare.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 April 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 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@nexcare.org. Also on April 10, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
1. Respondent’s <nexcare.org> domain name is confusingly similar to Complainant’s NEXCARE mark.
2. Respondent does not have any rights or legitimate interests in the <nexcare.org> domain name.
3. Respondent registered and uses the <nexcare.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a registration for its NEXCARE mark with the United States Patent and Trademark Office (“USPTO”) registrations (Registration No. 2,423,613, registered Jan. 23, 2001).
Respondent registered the <nexcare.org> domain name on March 14, 2017, and uses it to resolve to a parking page, and to offer the domain name 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.
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(f), 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 (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.”).
The Panel finds that Complainant has demonstrated rights in the NEXCARE mark pursuant to Policy ¶ 4(a)(i) through its USPTO registration. See AOL LLC v. Interrante, FA 681239 (Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Respondent’s <nexcare.org> domain name incorporates the NEXCARE mark and merely adds “.org.” This addition does not distinguish the disputed domain name from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, the Panel finds that Respondent’s <nexcare.org> domain name is confusingly similar to Complainant’s NEXCARE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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 argues that Respondent has no rights or legitimate interests in the <nexcare.org> domain name, and is not commonly known by the domain name. Complainant asserts that it has not given Respondent authorization to register the <nexcare.org> domain name. Where no response is on record, the WHOIS information is looked to in making rulings on Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The WHOIS information for the disputed domain name merely lists “Kabir S Rawat” as the registrant. Thus, the Panel finds no evidence that Respondent is commonly known by the <nexcare.org> domain name.
Complainant next argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name because the domain name resolves to a parking page. The featuring of competing or unrelated hyperlinks at the website resolving from a disputed domain name may demonstrate a respondent’s lack of rights and legitimate interests. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel notes that some of Respondent’s links are related to Complainant and its mark, such as “3M Medica” and “Nexcare First Aid,” and that others are unrelated. Accordingly, the Panel finds that Complainant has met its prima facie burden and has established that Respondent lacks rights and legitimate interests in the disputed domain name.
The Panel notes that the disputed domain name’s resolving page also includes a general offer for sale, which provides additional evidence that Respondent lacks rights and legitimate interests. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s general offer for sale of the <nexcare.org> domain name indicates Policy ¶ 4(b)(i) bad faith. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”) Since Respondent has made the offer, “BUY THIS DOMAIN The owner of nexcare.org is offering it for sale for an asking price of 2500 USD!,” the Panel finds that this is in excess of out-of-pocket costs and constitutes bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent has a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). The Panel notes that Respondent was ordered to transfer its domain name in Cantor Fiztergerald Securities v. Kabir S. Rawat, D2013-1257 (WIPO Aug. 30 2013). A history of bad faith findings against a respondent may impute a pattern of bad faith. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). The Panel agrees that this case is part of a pattern of bad faith registrations by Respondent and finds bad faith under Policy ¶ 4(b)(ii).
Last, Complainant argues that Respondent’s use of the disputed domain name for competing and unrelated parking links demonstrates bad faith under Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent presumably collects click-through fees from the links, which constitutes bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds 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 <nexcare.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 9, 2017
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