|Kläger||Minnesota Mining and Manufacturing Company (3M)|
|Beklagter||Jon L. R.|
|Entscheider||Politano, Frank L., Ricketson, Staniforth (Presiding), Singh, Maninder|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Minnesota Mining & Manufacturing v JonLR
Case No. D2001-0428
1. The Parties
The Complainant is Minnesota Mining and Manufacturing Company ("3M"), a Delaware Corporation, Registered Office at 3M Innovative Properties Company, 2501 Hudson Road, Bldg 220-11W, St Paul, Minnesota 55144, USA.
The Respondent is Mr. JonLR, 148 Hebron St., Remelville Subd., Noveleta, Cavite 4105, Philippines.
2. The Domain Name and Registrar
The Respondent is the registrant of the disputed domain name: <3mcare.com>. The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
The Complaint in this case was filed by e-mail on March 26, 2001 and in hardcopy on March 26, 2001, with the WIPO Arbitration and Mediation Center (the "Center"). This was done pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy"), and in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
According to its Formal Requirements Compliance Checklist, the Center has found that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules.
On March 27, 2001, the Center transmitted a request to Network Solutions, the relevant Registrar, to verify the details of the registration, and on March 28, 2001, Network Solutions informed the Center of the following:
- That it was the Registrar of the domain name registration,
- That Mr. JonLR, is the current registrant of the <3mcare.com> domain name registration,
- that the UDRP applied to this domain name.
- The current status of the domain name was ACTIVE.
On March 30, 2001, the Respondent was notified of the Complaint filed by the Complainant and opportunity was granted as per the Rules for filing of a Response. This was done by e-mail. The Administrative Panel finds that the Center has satisfied its notification obligations under Rule 2(b).
The Center did not receive any response from the Respondent, and on April 20, 2001, the Center notified to the respondent of its default in complying with the deadline indicated in the notification of complaint and for the commencement of the administrative proceedings.
On May 17, 2001, the Center appointed an Administrative Panel consisting of three members viz., Dr. Staniforth Ricketson, Presiding Panelist, Mr. Frank L. Politano and Mr. Maninder Singh. This was notified to the Complainant and the Respondent.
The language of the administrative proceedings is English.
4. Factual Background
4.1 The Complainant in this administrative proceeding is Minnesota Mining and Manufacturing Company ("3M"), a Delaware Corporation, Registered Office at 3M Innovative Properties Company, 2501 Hudson Road, Bldg. 220-11W, St Paul, Minnesota, USA 55144. According to the Complaint (para 12),the Complainant is the proprietor of the trade mark "3M" which it has used since as early as 1906 in relation to abrasive products. Since that time, the Complainant has continuously used this mark and name in commerce in the United States. It presently offers over 50,000 products and services in a wide variety of fields under the "3M" mark. These include healthcare products, tape, fishing equipment, computer mouse pads, library security systems, home cleaning products, aftermarket automotive supplies, office supplies, surgical supplies, overhead projectors, traffic control products, and asthma medication. These products and services are also marketed through its website at www.3m.com which has been in operation since 1998.
4.2 According to the Complaint (para 12(b)), the Complainant now owns over 300 United States federal registrations for the complainant mark and over 3,000 registrations for the complainant mark worldwide. A copy of a representative registration (US Reg No 2,220,588), issued January 26, 1999, for "abrasive products, namely sandpaper" has been appended at Tab B, with the note that this has a date of first use of March 17, 1906. It is asserted that this registration is valid, subsisting and enforceable, and the Complainant has offered to provide additional registrations if the Panelists so request.
4.3 According to the WHOIS database operated by Network Solutions (Complaint, Tab A), the Respondent is the registrant of the domain name <3mcare.com>, the registration having been made on December 25, 1999 with an expiry date of December 25, 2001.
4.4 The remedy sought by the Complainant in this proceeding is the transfer to it of the domain name.
5. Parties Contentions
A. The Complainant
The Complainant alleges that each of the three of the elements required under paragraph 4(a) of the Policy is made out:
- The domain name <3mcare.com> is confusingly similar to the Complainant's mark and name 3M. In support of this contention, the Complainant refers to prior decisions where WIPO panels have found that, when a domain name incorporates a distinctive mark in its entirety, this creates sufficient similarity between the mark and the domain name to render it confusingly similar. See, for example, Eauto, LLC v Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc D2000-0047 (March 24, 2000).
- That the Respondent has no rights or legitimate interest in the domain name <3mcare.com> in particular that it is not using the domain name, or making any demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services, that it is not known by the name 3m, and is not making a legitimate non-commercial or fair use of the domain name.
- That the Respondent registered and is using the domain name <3mcare.com> in bad faith, in particular that it registered and is using the domain name primarily for the purpose of selling the domain name to the Complainant or to any other willing buyer for valuable consideration in excess of the out-of-pocket costs directly related to the registration and use of the domain name. In addition, it is alleged that the Respondent has engaged in a pattern of registering well known company names as domain names primarily for the purpose of selling them, and further that evidence of registration and use in bad faith is to be inferred from the passive holding of the domain name, without any intention of using it.
As noted above, the Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panels attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following requirements:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and
(ii) That the Respondent has no legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
These matters are considered in turn below.
6.2 Rights in trade or service marks to which the domain name is identical or confusingly similar:
It is clear from the record that the two principal elements of paragraph 4(a)(i) have been satisfied in the present case.
First, the Complainant has indicated that it has extensive trade mark registrations for "3M", both in the United States of America and elsewhere, and has annexed one representative sample (at Tab B). In the absence of any challenge by the Respondent, it is unnecessary for the Panel to request the Complainant to furnish any further evidence of its trade mark registrations.
Secondly, the Panel is of the view that the domain name <3mcare.com> is confusingly similar to the trade and service mark of the complainant, ie "3M". The trade mark is clearly incorporated in the domain name, appearing at the start, and the addition of the suffix "care" does little, if anything, to avoid the possibility of confusion. In this regard, it is relevant to note decisions where WIPO panels have found that, when a domain name incorporates a distinctive mark in its entirety, this creates sufficient similarity between the mark and the domain name to render it confusingly similar. In particular, the Complainant has relied upon an earlier WIPO Panel Decision, namely, Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc. - D2000-0047 (WIPO March 24, 2000). In that proceeding, it was found that the domain name <eautolamps.com> was confusingly similar to the mark EAUTO.
However, it is also useful to refer here to certain other Panel decisions, namely:
(a) Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No D2000-1409: In this case, it was held that user of various other prefixes and suffixes with the trade mark SONY, such as sonyacademy.com, sonycampus.com, sonycollege.com, worldsony.com, sunsony.com, dreamsony.com, etc, would not entitle the respondent in that case to continue with the disputed domain names registrations and an order was made for their transfer to the Complainant.
(b) Dell Computer Corporation v Alex and Birgitta Ewaldsson, WIPO Case No D2000-1087: In this case, the Complainant, known for its computers, challenged various domain name registrations of the Respondent containing the word Dell, such as, deldrivers.com, dellit.com etc. The Panel, after consideration of the facts directed the transfer of 122 domain names to the complainant.
(c) Carrefour SA v Multigestiones Puertonorte S.L., WIPO Case No D2000-0837: In this case, the Complainant was carrying on the business of retail sales through its super market outlets in more than 30 countries under the trade mark CARREFOUR and had trade mark registrations in numerous jurisdictions. The Respondent had the following domain name registrations: carrefour-group.com, carrefourgroup.com and newcarrefourgroup.com. The Panel directed the transfer of these three domain name registrations of the respondent to the Complainant.
(d) Indya.com Portal Pvt Ltd v Akram Ali, VM Hardware, Case No D2000-1489: The Panel in this case held that there was no doubt that the trade mark <indya.com> of the Complainant and the impugned domain names, ie <indyanews.com>, <indyanews.net> and <indyanews.org> of the Respondent were identical and confusingly similar.
(e) Sony Corporation v Park Kwangsoo, Case No D2001-0167: In this case, the Panel held that the domain name registered by the Respondent, namely, <newsony.com> was virtually identical and confusingly similar to the trade mark of the Complainant "SONY ".
6.3 No legitimate interest of Respondent
The Complainant has contended that the respondent has made no demonstrable preparations to use the impugned domain name. The Respondent had no internet site at the domain name <3mcare.com> and every attempt of the Complainant to connect to this website resulted in a link to the domain name auction site, <greatdomains.com>. It is also contended by the Complainant that the Respondent is not known by the name "3M" and that it operates no business or other organisation under this name. In addition, the Respondent is not making any legitimate, non-commercial or fair use of the domain name. In view of these facts as stated by the Complainant, and in the absence of any response from the Respondent, the Panel has no hesitation in accepting that this element of paragraph 4(a) is satisfied.
6.4 Registration and use in bad faith
The Complainant contends that the Respondent has registered the impugned domain name not for any bona fide use but primarily for the purpose of selling it to the Complainant or to any other willing buyer for valuable consideration in excess of the out of pocket cost directly related to the registration and use of the domain name. Such a course of conduct is specifically referred to in paragraph 4(b)(i) as an instance of registration or acquisition of a domain name in bad faith.
In the present case, there does not seem to have been a direct approach or offer made specifically to the Complainant to sell the domain name in question (the Respondent here failed to respond to a cease and desist letter from the Complainant: see Tab G). On the other hand, there is evidence of a general willingness on the part of the Complainant to sell the domain name. In fact, the Whois information provided by the registrant (at Tab A) clearly states : "This name is for sale by JonLR". In addition, the Respondent has offered the domain name for sale on a website dedicated to the sale of domain names: see http://www.greatdomains.com (Tab E). The Complainant states (at Complaint, p 6) that when one types the domain name <3mcare.com>, it automatically links to <greatdomains.com> and asks for an offer to purchase the domain name. While no price is suggested for this, it cannot be supposed that the offer is to sell only at the cost of registration and transfer. In Dollar Financial Group, Inc. v. RXW Management, FA 95108 (Nat Arb Forum, Aug 4, 2000), the Panel held that offering a domain name for sale at a domain name auction website, is evidence of registration and used in bad faith. On the facts as presented in the instant case, it is difficult to escape reaching a similar conclusion.
Relevant also to the question of bad faith is the fact that the Respondent has registered a number of other domain names that incorporate the names and trade marks of large well known companies and trade marks. These include "toyotacare.com", "fordcare.com", hpcare.com", "novellcare.com" and "ibmcare.com": see further the printout at tab j of the respondents domain name registrations as at March 23, 2001. It further appears that the Respondent has offered these names for sale on the auction website at <greatdomains.com>: see further the printout at Tab K. This evidences a pattern of registering domain names for no other apparent reason than that of selling them for profit. In similar circumstances, a WIPO Panel has held that such a pattern of conduct can constitute evidence of registration and use in bad faith: Bell-Phillip Television Productions v Make A.Aford (Tim Wenk) WIPO Case D2000-0180 (May 2, 2000).
The Complainant has also submitted that registration and use in bad faith may be inferred from the passive holding of a confusingly similar domain name by a party without any legitimate interest: see Complaint, pp 6-7. There is evidence of such passive holding here, in that the Respondent has not used the domain name in any active sense and failed to respond to the Complainant after the latter sent an initial cease and desist letter. The Complainant refers to several prior Panel decisions in which such passive conduct has been held to be evidence of bad faith registration and use: see Pharmacia & Upjohn Company v. Moreonline, D2000-0134 (WIPO April 19, 2000) and Banco do Brasil S.A. v. Sync Technology, D2000-0727 (WIPO September 1, 2000). In the present proceeding, however, the evidence goes beyond this (see above), and the Respondents bad faith is amply demonstrated by his general offer to sell the domain name on an auction site and by the evidence of a general pattern of such conduct.
The Panel, therefore, finds that the registration and use of the impugned domain name by the respondent was and continues to be done in bad faith.
The Panel finds that the Complainant has established each of the elements of paragraph 4(a) of the Policy.
The Administrative Panel accordingly directs that the registration of the domain name <3mcare.com> should be transferred to the Complainant.
Frank L. Politano
Dated: May 30, 2001