|Kläger||Minnesota Mining and Manufacturing Co.|
|Entscheider||Barker, Sir Ian (Presiding), Carson, Ross, Politano, Frank L.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Minnesota Mining and Manufacturing Company v. JSO Company
Case No. D2001-0736
1. The Parties
The Complainant is Minnesota Mining and Manufacturing Company, a Delaware corporation with its principal place of business at St Paul, Minnesota, U.S.A. The Complainant is represented by Fulbright & Jaworski LLP, Attorneys, of Minneapolis, Minnesota, U.S.A.
The Respondent is JSO Company of Toronto, Ontario, Canada. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is <3mconsul.com>. The domain name is registered with Tucows.com Inc., of Toronto, Ontario, Canada ("the Registrar").
3. Procedural History
The Complaint submitted by Minnesota Mining and Manufacturing Company was received on June 2, 2001, (electronic version) and June 4, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On June 8, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with the Registrar.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrars WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") is in effect.
- Indicate the current status of the domain name.
By email dated June 8, 2001, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration <3mconsul.com>.
- The Respondent is shown as the "current registrant" of the domain name.
- The administrative technical and billing contact is Ki Kim at the same address as the Respondent.
- The UDRP applies to the registration.
- The domain name registration <3mconsul.com> is currently on hold.
- The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
- The advice from the Registrar that the domain name in question is still on hold indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
- Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on June 11, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
- The Complainant elected to have its Complaint resolved by a three-person panel; it has duly paid the amount required of it to the WIPO Center.
- The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
- No response was received by the WIPO Center from the Respondent within the prescribed time. A Notice of Respondent Default was issued on July 2, 2001. On July 4, 2001, the Respondent sent an informal communication to WIPO Center disagreeing with the Complaint. The Panel has considered this document: it adds little to the matters for consideration.
- WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It invited Mr. Ross Carson of Ogilvy Renault, Ottawa, Ontario, Canada, and Mr. Frank L. Politano of AT&T Corp, Basking Ridge, N.J., U.S.A., to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.
- All Panelists duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
- On July 17, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by July 30, 2001.
- The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
(a) The Complainant owns the mark and trade name "3M". It commenced use of the 3M mark and name at least as early as 1906 and, since then, has continuously used the 3M mark and name in commerce in the United States. The Complainant currently has operations in more than 60 countries and sells its products in over 200 countries. Over the years, it has expanded its use of the 3M mark and presently offers over 50,000 products and services in a wide variety of fields under the 3M mark. These products and services 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. It markets all of these products and services under the 3M mark and name through its website at <www.3m.com>. It registered the domain name <3m.com> in 1998.
(b) The Complainant owns over 300 United States federal registrations for the 3M mark and over 3,000 registrations for the 3M mark worldwide.
(c) The Complainant has given the Respondent no right or license to use the mark "3M".
5. Parties Contentions
(a) The domain name <3mconsul.com> is confusingly similar to the 3M mark and name. WIPO panels have found that, when a domain name incorporates a distinctive mark in its entirety, that creates sufficient similarity between the mark and the domain name to render the domain name confusingly similar. See Eauto, L.L.C. v Triple S. Auto Parts d/b/a/ Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000) (finding that the domain name <eautolamps.com> is confusingly similar to the mark EAUTO).
(b) Respondent has no rights or legitimate interest in the domain name <3mconsul.com>.
(1) Respondent has made no demonstrable preparations to use the domain name <3mconsul.com> in connection with a bona fide offering of goods or services. At the time the Complaint was prepared, Respondent had no internet site at the domain name <3mconsul.com>. A search for <3m.consul.com>, gives a message stating: "The requested URL could not be retrieved. While trying to retrieve the URL: http:worldonlinenews.net/indexj.html the following error was encountered: Unable to determine IP address from host name for worldonlinenews.net." This message suggests that Respondent intends to use the 3M mark and name to draw searchers to another website owned by him.
(2) Respondent is not commonly known by the name 3M, rather, according to the information contained in the WHOIS database, Respondent is known as JSO Company. Respondent operates no business or other organization under this name.
(3) Respondent is not making a legitimate non-commercial or fair use of the domain name.
(c) Respondent registered and is using the domain name <3mconsul.com> in bad faith. Respondent registered and is using the domain name primarily for the purpose of selling the domain name to 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. On November 6, 2000, 3Ms attorney sent a "cease and desist" letter to Respondent, asking Respondent to transfer the domain name <3mconsul.com> to 3M. On November 11, 2000, Respondent (through Mr. Kim) responded to this letter, stating that he would not transfer the domain name to 3M. On March 14, 2001, Respondent sent an email directly to the webmaster at 3M, offering to sell the name to 3M for a "reasonable price". On March 27, 2001, 3Ms attorney sent a follow-up letter to Respondent, offering to reimburse Respondent $70 for the domain name registration fee. On March 31, 2000, Respondent responded to this e-mail, stating that he was not interested.
(d) It is clear that Respondent was not going to transfer the domain name to 3M unless he received consideration in excess of his out-of-pocket costs. The actions of Respondent demonstrate bad faith registration and use of the <3mconsul.com> domain name. His offer to sell the domain name is the type of action found to constitute bad faith registration and use by WIPO panels. See Stella Doro Biscuit Co., Inc. v The Patron Group, Inc., WIPO Case No. D2000-0012 (February 17, 2000); Nabisco Brands Company v The Patron Group, Inc., WIPO Case No. D2000-0032 (February 23, 2000).
(e) Respondent has engaged in a pattern of registering domain names primarily for the purpose of selling the domain names for profit. He has registered and owns at least the following domain names that relate to the trademarks of large, well-known companies and organizations:
This information was provided through email correspondence by DomainDirect. (DomainDirect is owned by the Registrar). Respondents registration of domain names that correspond to the trademarks of well-known companies and organizations provides evidence of his bad faith registration and use.
The Respondent has not filed any submissions, other than the brief informal and uninformative document referred to earlier.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
In the view of the Panel, the disputed domain name is confusingly similar to the Complainants 3M marks which are known worldwide. It agrees with the Complainants submission that, where a domain name incorporates a distinctive mark in its entirety, sufficient confusion is established. The addition of the suffix consul does little to avoid any confusion. The Panel respectfully agrees with the discussion of this point in Minnesota Mining and Manufacturing Company v Jon LR (WIPO Case No. D2001-0428). The learned Panelists there referred to other WIPO decisions to similar effect.
The Respondent has no rights to use the Complainants mark. Nor is there any evidence which would justify considerations of any of the matters in Paragraph 4(c) of the Policy, which provide instances of how a Respondent can demonstrate legitimate rights or interests in a domain name.
As to the third criterion, the evidence referred to in the Complainants submission shows that the Respondent is attempting to sell the name to the Complainant at a profit. The worldwide fame of the 3M mark indicates Respondents bad faith at the time of registration. It would strain belief that the Respondent did not know of the Complainants mark and reputation at the time of registration.
Moreover, the Respondents failure to develop the website is a further indication of continuing bad faith use. A reasoned reply to a "cease and desist" letter can often help a Respondent show that it comes within the criteria of paragraph 4(c) of the Policy and can also help to show good faith. However, the Respondents reply indicated a wish to profit from the bad faith registration. Also of relevance is the Respondents registration of other domain names which incorporate the names and/or marks of well-known companies.
Accordingly for the reasons stated, the Panel finds the Complaint proved.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondents domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <3mconsul.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Frank L. Politano
Dated: July 24, 2001