|Complainant||Minnesota Mining and Manufacturing Company (3M)|
|Panelist||Donahey, M. Scott (Presiding), Methvin, Gaynell, Perritt, Jr., Henry|
|Date of Decision||19.07.2001|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Minnesota Mining and Manufacturing Company v. Belowcost
Case No. D2001-0420
1. The Parties
1.1 The Complainant is Minnesota Mining and Manufacturing Company, a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business in 3M Center, Saint Paul, Minnesota, United States of America.
1.2 The Respondent is Belowcost, a corporation giving an address at 5105 E. Los Angeles Ave., Simi Valley, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <3mk-mart.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 24, 2001, and the signed original together with four copies was received on March 26, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated March 27, 2001.
3.2 On March 29, 2001, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrars Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On March 30, 2001, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a three-person Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on April 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of April 22, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIs confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On April 25, 2001, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On April 25, 2001, the WIPO Center received an email from Respondent, effectively advising the WIPO Center that the Respondent did not intend to contest the matter.
3.8 On June 27, 2001, in view of the Complainant's designation of a three person Panel, the WIPO Center appointed Gaynell C. Methvin, Dean Henry H. Perritt Jr., and M. Scott Donahey to serve as Panelists, with M. Scott Donahey to act as Presiding Panelist.
4. Factual Background
4.1 Complainant began using the trademark 3M as early as 1906 in connection with abrasive products and has continuously used such mark. Currently, Complainant uses the 3M mark in connection with 50,000 products and services, including polyethylene protective tape. Complainant markets many of these products at its web site to which its <3m.com> domain name resolves.
4.2 3M owns over 3,000 registrations worldwide for the 3M mark. One representative registration with the United States Patent Office ("USPTO") is attached to the Complaint as Annex B. The exemplar registration issued on May 7, 1991.
4.3 The United States District Court for the District of Minnesota has held that the 3M mark is a famous mark for purposes of federal trademark law. Complaint, Annex C. This opinion was issued on August 18, 1998.
4.4 On June 2, 1999, Respondent registered the domain name <3mk-mart.com>.
4.5 Respondent is not a licensee of Complainant and is not otherwise authorized to use any of Complainant's trademarks.
4.6 Respondent is a direct competitor of Complainant and has used the domain name at issue to resolve to a web site that offers polyethylene protective tape and other medical products, products which Complainant has marketed under the 3M mark for more than 12 years. Complaint, Annexes B and E.
4.7 Counsel for Complainant sent an email to Respondent at the address given in Whois, demanding that Respondent cease its use of the domain name.
4.8 Respondent refused, saying that the 3mk stood for the initial "m" which was the first initial in the names of the three of the partners that own Belowcost and the "k" being the first initial of the fourth partner.
5. Parties Contentions
5.1 Complainant contends that Respondent has registered a domain name which is confusingly similar to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) 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; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 The Panel believes that the domain name at issue <3mk-mart.com> is confusingly similar to the famous trademark in which the Complainant has rights. Where the trademarks of two separate companies are combined in a domain name, there is still a likelihood of confusion between either mark and the domain name. The Hain Food Group and Celestial Seasonings, Inc. v. MIC ICANN Case No. FA94729. Moreover, where the online user is likely to be confused as to the affiliation or sponsorship of the web site, there is a confusing similarity between the domain name and the mark. The Pep Boys Manny, Moe and Jack of California v. E-Commerce Today, Ltd., ICANN Case No. AF-0145. In the present case the user is likely to believe that the web site is affiliated with 3M and with K-Mart.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. In such a case, Complainant has met its burden on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, ICANN Case No. D2000-0007; Ronson plc v. Unimetal Sanayai ve Tic.A.S., ICANN Case No. D2000-0011; Document Technologies, Inc. v. International Electronic Communications, Inc., ICANN Case No. D2000-0270.
6.6 Paragraph 4(b)(iv) of the Policy provides in pertinent part: "[T]he following circumstances . . . shall be evidence of the registration and use of a domain name in bad faith . . . by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site . . .by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
6.7 Complainant has cited two Panel decisions in which the use of a domain name which is confusingly similar or identical to a trademark or service mark, where the domain name resolves or links to the site of a competitor to be bad faith registration and use, by attracting for commercial gain users to a web site by creating a likelihood of confusion as to sponsorship or affiliation. NetGrocer, Inc. v. Harry Taliliana, ICANN Case No. FA93768; The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, ICANN Case No. D2000-0474.
6.8 Other Panel decisions have reached similar results. Fibrocap, Inc. v. Vanseo International Ltd., ICANN Case No. AF-0184 (competitive goods of same type as those of complainant offered on web site to which the domain name at issue resolved); Tata Sons Ltd. v. The Advanced Information Technology Association, ICANN Case No. D2000-0049 (use of Complainant's well-known mark in domain name induced users to believe that Respondent had some connection or affiliation with Complainant).
6.9 Complainant requests a transfer of the mark and the Panel grants that request, but with a proviso. Any use of the mark by Complainant may well violate trademark rights of a third party, i.e. K-Mart. The Panel's order of transfer is not intended to sanction use of the mark by Complainant or to indicate any preference between Complainant and the third-party as to the use of the domain name at issue.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's 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 <3mk-mart.com> be transferred to the Complainant.
M. Scott Donahey
Gaynell C. Methvin
Dean Henry H. Perritt Jr.
Dated: July 12, 2001