WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Minnesota Mining and Manufacturing Company v. Mark Overbey
Case No. D2001-0727
1. The Parties
The Complainant is Minnesota Mining and Manufacturing Company, a Delaware Corporation of 2501 Hudson Road, Bldg. 220-11W, St. Paul, Minnesota 55144 USA. It is represented in this matter by Timothy M. Kenny, of Fulbright & Jaworski L.L.P., 4850 U.S. Bank Place, 601 Second Avenue South, Minneapolis, Minnesota 55402-4320, USA.
The Respondent is Mr. Mark Overbey of 751 Cooper Court East, Aurora, Il 60504, USA.
The Respondents administrative contact is the same Mr. Mark Overbey and its technical contact is Register.com, of 575 8th Avenue 11th Floor, New York, NY 10018, USA.
2. The Domain Names and Registrar
The domain names, which are the subject of this Complaint, are:
The Registrar for all of them is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").
3. Procedural History
On June 1, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Uniform Domain Name Dispute Resolution Policy implemented by ICANN ("the Rules"). A hard copy of the Complaint was received by the Center via courier on the same day.
In the Complaint, the Registrar for the disputed domain names was named as Register.com so the Center sent a Request for Registrar Verification to them on June 19, 2001, by email. They replied on the same day saying that the disputed names were not registered with them.
Accordingly the Center sent a Complaint Deficiency Notification to the Complainant which, although dated June 20, 2001, was not sent until June 22, 2001. This was acknowledged by the Complainant on June 25, 2001, and on June 26, 2001, the Complainant sent an amended Complaint to the Center by e-mail and courier designating NSI as the Registrar.
The Center had sent a Request for Registrar Verification to NSI on June 20, 2001, by email. NSI responded on June 22, 2001, and confirmed: (1) that it was the Registrar for all of the disputed domain names, (2) that the Respondent, Mr. Mark Overbey, was the current Registrant of the disputed domain names, (3) that the Respondents contact details were correct, (4) that NSIs 5 Service Agreement was in effect for all of the domain names, and (5) that the current status of all of the contested domain names was Active.
On June 29, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier and e-mail, as well as to its Technical contact.
On July 19, 2001, the Respondent submitted a Response to the Complaint
The Center sent an Acknowledgement of Receipt (Response) on July 20, 2001.
On July 25, 2001, the Center asked the Respondent to provide the names of three candidates for the three-member panel which the Complainant had requested in its Complaint. He did not respond.
On August 2, 2001, the Complainant sent to the Center by e-mail a Motion for Leave to File a Reply to the Respondents Response, and a Reply to the Respondents Response. These were acknowledged by the Center on August 3, 2001.
The Center sent a Notification of Appointment of Administrative Panel giving a Projected Decision Date of October 9, 2001, to the Respondent and the Complainant on September 25, 2001, via email. A copy was also sent to the Panel on the same date by email.
The Center sent by email a Transmission of Case File to the Panel, the Respondent and the Complainant on September 25, 2001.
4. Factual Background
Activities of the Complainant
The Complainant owns the mark and tradename 3M. The Complainant commenced use of the 3M mark and name at least as early as 1906 in connection with abrasive products. Since that time, the Complainant has continuously used the 3M mark and name in commerce in the United States. The Complainant also currently has operations in over 60 countries and sells its products in over 200 countries. Over the years, the Complainant has expanded its use of the 3M mark and presently offers over 50,000 products and services in a wide variety of fields under it. These products and services include, for example, tapes, abrasives, adhesives, fishing equipment, computer mouse pads, library security systems, home cleaning products, aftermarket automotive supplies, office supplies, medical and surgical supplies, overhead projectors, traffic control products, and pharmaceuticals. the Complainant markets all of these products and services under the 3M mark and name through its website at <www.3m.com> The Complainant registered the domain name <3m.com> in 1988.
The Complainant has used the 3M mark in connection with abrasives for nearly 100 years and has used it in connection with adhesives and tapes for well over 50 years. The Complainant manufactures hundreds if not thousands of abrasives, adhesives, and tape products under the 3M mark in the U.S. and in many countries throughout the world. A printout from the Complainants website showing a general history of the company with respect to abrasives, adhesives, and tape was annexed to the Complaint. Also annexed were extracts from the Complainants Product and Service directory showing the general categories of its abrasive, adhesive and tape products which are among the Complainant's most famous, successful and well-known consumer and commercial products.
Activities of the Respondent
Not a great deal is known about the Respondent himself. He claims to have been, since June 1994, employed by an authorized 3M distributor which he does not identify - and is currently its Sales Manager. This company currently purchases a substantial dollar value per year from the Complainant. Prior to this, the Respondent also worked for, and sold 3M products for, two other authorized 3M distributors. In his capacity as Sales Manager, one of the several responsibilities assigned to the Respondent by his employer is to market and promote the sale of the thousands of the Complainants products for which, again, said employer is an authorized distributor.
The Complainants Trademarks
The Complainant owns over 300 United States federal registrations for the 3M mark and over 3,000 registrations for the 3M mark worldwide. Of the 300 U.S. registrations, 13 are for abrasive products, 16 are for adhesive products and 9 are for tapes. In particular, the Complainant annexed to the Complaint copies of the following U.S. Registrations:
No. 2,220,588, which issued January 26, 1999, for "abrasive products, namely sandpaper" (with a date of first use of at least as early as March 17, 1906).
No. 561,629, which issued on July 15, 1952, for "adhesive cements" (with a date of first use at least as early as June 1949).
No. 612,848, which issued September 27, 1955, for "masking tape, cellophane tape, acetate fiber tape, and other pressure-sensitive tapes" (with a date of first use at least as early as February 26, 1953).
The Complainant alleges that these registrations are valid, subsisting and enforceable.
In addition, the Complainant alleges that the mark 3M has been found to be famous by a U.S. federal court, and a copy of the judgement in Minnesota Mining and Manufacturing Company v. Evans, Civil File No. 99-1285 (DWF/AJB) (U.S. District Court of Minnesota) which confirms this fact was annexed to the Complaint.
5. The Parties Contentions
The Complainant contends that the disputed domain names are confusingly similar to the 3M mark and name because they incorporate the complainants distinctive mark in its entirety, thus creating sufficient similarity between the mark and each disputed domain name to render it confusingly similar.
The Complainant further contends that the Respondent:
- has no rights or legitimate interest in the disputed domain names;
- has made no demonstrable preparations to use any of the disputed domain names in connection with a bona fide offering of goods or services for, at the time the Complaint was prepared, the Respondent had no Internet sites at any of the three disputed domain names, and that every attempt to connect to these websites results in a link to Register.com;
- is not commonly known by the name 3M;
- operates no business or other organization under the 3M name; and
- is not making legitimate non-commercial or fair use of the domain names. His name is "Mark Overbey" as is confirmed by a WHOIS search that was annexed to the Complaint.
The Complainant further contends that the Respondent registered and is using the disputed domain names in bad faith. The Respondent's registration of the domain names has been made with the purpose of preventing the Complainant from reflecting the mark in corresponding domain names in order to force 3M into transfer-for-price negotiations. The Respondent is alleged to have engaged in a "pattern of such conduct" and the Complainant draws attention to two Decisions by Panels under the Policy which allegedly held that prevention of reflecting the mark of the Complainant in a domain name is evidence of bad faith, even if there is no evidence that the Respondent has engaged in a "pattern of such conduct." [Pharmacia & Upjohn Company v. Moreonline, D2000-0134 (WIPO April 19, 2000); Banco do Brasil S.A. v. Sync Technology, D2000-0727 (WIPO September 1, 2000)]. The Complainant contends that these decisions state that the passive holding of a confusingly similar domain name by a party without any legitimate interest is evidence of bad faith. In this case, the Respondent has acted more egregiously than required by the above decisions, because he engaged in a "pattern of such conduct." as is evidenced by the fact that he registered not only one confusingly similar domain name, but three and that this type of abusive registrations is referred to as vertically abusive registrations. The Complainant goes on to allege that vertically abusive registrations indicate a "pattern" of preventing the Complainant from reflecting the mark in corresponding domain names, evidencing bad faith, and draws attention to the Decision in Smoky Mountain Knife Works v. Deon Carpenter, DeCAF-230 (a,b) (eResolution July 3, 2000).
It is contended that the Respondent registered and is using the domain names primarily for the purpose of selling the domain names 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 names. The Complainant wrote to the Respondent in August 2000, asking him to transfer the disputed domain names. The Respondent did not respond to this letter. The Complainant wrote again in March 2001, with a similar request. The Respondent replied declining to transfer the domain names to the Complainant. The Complainant wrote again, some 12 days later stating that it would pay the Respondent $210 for the domain names, which it calculated was the cost he had incurred in registering the domain names, adding that if the Respondent did not transfer the domain names to it, then it would pursue its legal remedies. On the same day the Respondent replied, stating that he would not transfer the domain names to the Complainant, stating that he did not plan to develop the websites located at the disputed domain names, and that he believed that the value of the domain names was greater than the amount he paid, indicating that he would only sell the domain names for an amount in excess of his out-of-pocket costs. He further stated that this was a private matter to be negotiated between the Complainant and himself which, the Complainant contends, clearly indicated that he registered and is using the domain names primarily for the purpose of selling them to 3M (or the highest bidder). The Respondent has owned the domain names for over two years, and he has never developed them in any way.
B. The Response
The Respondent contends firstly that at the time of the initial registration of the disputed domain names, the current "Rules for Uniform Domain name Dispute Resolution Policy" were not in place.
He also refutes the allegation that the disputed domain names are confusingly similar to the 3M mark and name. In his own words, he says: "Complainant states that 3M presently offers over 50,000 products and services in a wide variety of fields under the 3M mark. Is this meant to imply a free lock-up of hundreds of thousands, if not millions, of domain names? If the numeral "3" and the letter "M" when used consecutively and in such order, or several other variations thereof, when incorporated into any domain name consisting of words equal to or similar to any of the 50,000 products available through this multi-billion dollar corporation would meet their definition of unacceptable and worthy of legal challenge. Simple math will conclude that at the bare minimum when the number/letter "3M" is used at the beginning, middle, or end of any domain name sporting any similar product the number of domain names that might draw their challenge exceeds 150,000. Furthermore, these domain names may be effectively locked out to the general public at virtually no expense to 3M inasmuch as it is unnecessary for them to properly register them and properly pay for them due to the fact that the mere threat of legal action by a large company, as I was the recipient of upon initial communication, is adequate to deter the majority of citizens from maintaining any such domain name that might catch the attention of said corporation. I would suggest that Complainant is aware of the effect of such intimidating language and, as a result, overtly described the possibility of a financially devastating outcome for Respondent and then went on to demand that the Respondents domain names simply be turned over to Complainant, initially, with no consideration for the actual expenses suffered by the Respondent for registration. Additionally, Complainant states that 3M registered the domain name <3m.com> in 1988. This being the case one might conclude that anyone seeking to visit the 3M web site might, especially after 13 years of marketing since the site was established, simply type out <http://www.3m.com> in order to arrive at the desired site. Finally, one might conclude that since apparently 1988 3M has been aware of the Internet and held registration to at least one domain name, they might have, through their vast resources, identified and procured any domain names necessary to effectively promote their products. In general and particularly under these circumstances."
The Respondent contends that his employer (whom he does not name) has, since March 1999, employed a web designer for, and invested substantial sums of money into, its company website. Prior to this, the Respondent developed and personally established a website for his employer, which was last updated in March 1999. Prior to this date, and since, active links to vendor websites, including the Complainant, have been established. The Respondents original intent was to create and forward traffic through the 3 domain names in question, inasmuch as these domain names were representative of actual products that he had sold for years and now currently sell, to the latter of these two web sites. Upon being made aware that a more functional and professional web site was under development the Respondent determined to wait until such site was operational and then forward traffic to the new and improved site in order to provide for a better and more responsive customer service. This website only recently attained functionality, in September 2000, since when it has been used as a means to conduct business transactions for the Respondents employer. The Respondent was first contacted by the Complainant in August of 2000, and he was therefore quite concerned about the consequences of any change to the status quo. As a consequence he postponed forwarding from the domain names in question until such time as the current dispute could be resolved. A substantial number of products listed on this website for sale to end user companies are purchased by said distributor from the Complainant and are then sold to end user companies in keeping with the traditional practice of industrial distribution. If a link could be established from each of the disputed domain names to this website, it could be considered reasonably likely that the Respondents employer, as an authorized 3M distributor, might be given the opportunity to more completely assist end user companies in identifying and procuring various products manufactured by the Complainant and sold exclusively through authorized distribution such as that provided by the company for which Respondent works.
Also, in his first reply to the Complainant, the Respondent listed eight instances of similar domain names, which appeared to be in use by others for similar or less noble causes and that seemed to have been allowed to continue to operate without interference from Complainant. The Respondent suggests that these sites and their use might set a fair precedent as to what is considered to be acceptable use by Complainant. They are:
The Respondent contends that the allegations made by the Complainant in regard to "bad faith" are groundless and do not meet any burden of proof. Furthermore the Respondent entirely refutes the Complainants allegation that "Respondents registration of the domain names has been made with the purpose of preventing the Complainant from reflecting the mark in corresponding domain names-in order to force 3M into transfer-for-price negotiations and Respondent has engaged in a "pattern of such conduct." The Respondent contends that the Complainant has failed to demonstrate not only that the Respondent has registered the domain names with the intent to "prevent the Complainant from reflecting the mark", but also has failed to demonstrate that the Complainant has indeed been prevented from reflecting the mark. The 3M mark is clearly reflected in the domain name <3m.com>.
The Respondent contends that the Complainants further allegation that "Respondent also registered and is using the domain names primarily for the purpose of selling the domain names to Complainant or any other willing buyer" is not the case and that the Complainant is unable to demonstrate such. Additionally, it appears that precedent has been set wherein the Complainant rests passively before similar such use of the number "3" and the letter "M" elsewhere. The Complainant has failed to demonstrate not only that the Respondent attempted to enter into "transfer-for-price" negotiations with the Complainant, but also, that the Respondent even intended to do so. Indeed, the Complainant, perhaps with intent to entrap, unilaterally attempted to initiate transfer-for-price negotiations with an offer to compensate, yet only partially, for the actual cost of registration. The Respondent, having declined to participate in such negotiation, declined the offer.
The Respondent contends that he has not engaged in what the Complainant has described as a "pattern of such conduct". He registered these domain names within a 24 hour period of time and has demonstrated no aspect of conduct "in bad faith". In fact, the only other domain name ever registered by the Respondent is <kickerssc.com>, which was registered, on behalf of his sons soccer club and has not been met with similar allegation.
The Respondent points out that the Complainant wrote that it would pay him $210 for the domain names, which was the cost incurred in registering the domain names. In fact the Respondent had spent a total of $315 for registration of the domain names in question ($70 per domain name for the first two years and then $35 per domain name for the third year).
In its complaint, the Complainant quoted from a letter written by the Respondent "I view the utility of these domain names to be of significantly greater value than the dollar amount that I have invested in them" and then goes on to infer from this that this demonstrates that Respondent is "clearly indicating that he registered and is using the domain names primarily for the purpose of selling them to 3M (or the highest bidder)." The Respondent contends that the Complainants inference from such statement is both inaccurate and not supported factually. Furthermore, the Complainant is the only party that initiated or took part in attempting to negotiate a transfer-for-price situation and has failed to demonstrate that the disputed domain names have ever been intended to be, or actually been, made available for sale to Complainant or any third party for compensation or otherwise.
The Complainant further quoted from the Respondents correspondence that the Respondent views this matter "as a private matter best left to the parties involved to reasonably conclude outside the scope of the courts". Inasmuch as it is likely universally understandable that an ordinary citizen of limited financial means would be inclined to seek to avoid the substantial expense of legally defending himself in a court of law in the face of the vast financial resources available to a multi-billion dollar corporation the Respondent contends that this statement should stand on its own merit. The Respondent contends that Complainant has failed to clearly define the relevance of this statement to the matter at hand, and contends that, if anything, this quoted statement reflects a justifiable fear on the part of the Respondent that he may be forced into a protracted and expensive litigation process.
The Respondent contends that when the Complainant states that "Respondent did not state that he plans to develop the websites", the Complainant failed to ask whether or not Respondent planned to develop the websites and as a result did not respond to a question that was not asked. Furthermore, the Respondent contends that it is not his responsibility to inform Complainant of any such intent.
Again, the Respondent contends that the Complainant has made a faulty inference when it states that "Rather, he stated that he believes that the value of the domain names is greater than the amount that he paid, indicating that he would only sell the domain names for an amount in excess of his out-of-pocket costs." Clearly the Complainant has failed to demonstrate any intention, attempt, or willingness on the part of the Respondent to participate in any form of sale or negotiation of sale of the domain names in question. Additionally, in the same communication from which the Complainant paraphrases above, the Respondent states "Had I, prior to having registered these domain names, been of the impression that their utility to me were only of a value equal to my dollar expenditure to register them, I would not have wasted my time or money to do so." The Respondent contends that this statement, while describing the same basic business judgement used by most consumers, helps to put into proper context the paraphrased statement from which the Complainant draws faulty conclusion.
C. Complainants Response
The Complainant filed a "Response" (effectively a reply brief) to the Respondents Response which the Panel, in its discretion, has decided to take into consideration. While there is no provision in the Rules specifically authorizing the filing of reply briefs, the Panel may, in its discretion, choose what materials to accept for consideration. Where, as here, a timely, appropriate, useful, and responsive brief is filed by a Complainant clarifying issues raised in the Response, it seems appropriate to consider it (and any timely and reasonable response thereto - of which there was none here).
In its reply brief, the Complainant affirms that the inferences drawn in its Complaint were appropriate and reasonable based on the correspondence with the Respondent. For example, the Complainant alleged that the Respondent had made no demonstrable preparations to use the domain names at issue in connection with a bona fide offering of goods or services. Besides the fact that Respondent had no Internet sites at the disputed domain names when the Complaint was prepared, the Respondent stated in his March 20, 2001 email to the Complainants counsel, "I have not used the domain names for commercial purposes." Moreover, Respondent has alleged that he (and others) made demonstrable preparations to use the domain names at issue, but the Respondent has failed to submit any documentary evidence to the Panel to support his allegation in that regard.
The Respondent states that he is employed by an authorized 3M distributor as a sales manager and that his employer has assigned him the task of marketing and promoting thousands of 3M products. The Respondent thereby implies that he acted in his capacity as sales manager and on behalf of his employer when he registered the domain names at issue and allegedly made demonstrable preparations to use them. First, the Respondent failed to submit any documentary evidence to the Panel in support of his assertion that he is employed by an authorized 3M distributor or that he has been acting on behalf of his employer. Second, the Respondents correspondence with the Complainants counsel shows that he was speaking in his individual capacity and seeking remuneration for himself as an individual. For example, all of his correspondence is expressed in the first person singular. Thirdly, the Respondent has not submitted any evidence to the Panel to prove that he is affiliated with an authorized 3M distributor, nor has he provided the name of the alleged distributor or any other information that can be verified by the Panel or 3M.
Regardless of whether the Respondent is employed by an authorized 3M distributor, he has not been authorized by the Complainant to register domain names that are comprised of or include a mark owned by it.
Even if the Respondent had registered the domain names with the intent of using them on behalf of his employer, the Complainant does not, as a matter of policy, permit its authorized distributors to register and use domain names that include or comprise its trademarks.
The Respondent has cited "eight instances" in which domain names similar to the domain names at issue are being used by others and argues that such uses set a precedent as to what is considered acceptable by the Complainant. In fact the Respondents "eight instances" comprise eight domain names used by two companies. The Complainant does not consider these companies use of the domain names to be "acceptable," and has already taken action to obtain the domain names from these two companies.
Similarly, the Respondents argument that he should be able to register and use the domain names at issue because third parties have registered domain names that begin with the mark 3M is also unavailing. The Complainant has an active policing program in place to stop the use of such domain names. Where registrants have refused to transfer such domain names, or failed to respond after repeated attempts by the Complainant, it has sued such registrants in federal courts or filed Complaints under the Policy.
6. Discussion and Findings
The Panel now proceeds to consider this matter in light of the complaint, the response, the reply, the Policy, the Rules, and applicable authority, which in the Panels view, given that this dispute involves a domain name registered in the United States and given that both parties appear to be U.S.-based, shall include applicable principles of U.S. trademark law.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to Complainants trademark in issue here; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances of acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, would demonstrate respondents rights or legitimate interests to the Domain Name for purposes of Paragraph 4(a)(ii) above.
a. Complainants Proof
(i) Domain Name Identical or Confusingly Similar to Trademark
Complainant has proven that it is the owner of valuable trademark rights in the strong and distinctive mark 3M, going back many decades. With some 300 federal registrations for the mark, and court finding that the mark is "famous," it would be difficult to cite a stronger and better protected trademark than Complainants.
Respondents three domain names associate the 3M mark with three generic terms - tapes, abrasives, and adhesives which are three of the categories of goods that Complainant provides (and has long provided) under and in connection with its trademark. Complainant is well known as a provider of these three categories of goods, and indeed these categories of goods are specifically set forth in Complainants federal registrations for its 3M mark, going back half a century.
It is well established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are many examples of UDRP cases holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus a generic term (whether or not it is relevant to the Complainant's business, as it is here). See, e.g., D2001-0590; D2001-0274; D2001-0185; D2001-0028.
This Panel finds the Domain Names at issue to be confusingly similar to Complainants trademark. Considering Respondents admission that his purpose in registering the domain name was to use it in connection with his companys distribution of 3M products, it can hardly be disputed that the domain names were chosen with the specific intent of suggesting to consumers an association or affiliation with Complainant. In sum, there is a likelihood of confusion between the domain names and Complainants 3M mark.
Respondents contention that 3M does not have a "lock" on all terms containing the letters "3" and "M" is beside the point. Complainant does not claim ownership of all terms that use these two alphanumeric characters. However, use of the mark "3M" at the beginning of a domain name, followed by a generic term for products closely associated with the 3M company, is unquestionably likely to suggest that the 3M company is the source of the products to which the domain name refers.
Complainant has therefore established the first element.
(ii) Whether Respondent Has Rights Or Legitimate Interest In the Domain Name
No evidence of record establishes any rights of Respondent in the Domain Names. While he contends that he is an employee of a distributor of 3M products, Respondent has offered no evidence establishing that this is so. He has not identified the distributor. He has not established his authority or role on the distributor's behalf.
Complainant contends that a distributor would not, in any event, be permitted to register a domain name containing a famous trademark belonging to the producer of the products that the distributor sells. This is an interesting question that this Panel need not reach, at least for purposes of this second element of the case, inasmuch as there is simply no evidence before us establishing that which Respondent contends. First of all, there is no evidence that Respondent is employed by a 3M distributor, or sells 3M products such as tapes, adhesives, or abrasives. Second, even if his bare assertion is true, there is no evidence that his registration of the domain names in question was made on behalf of his employer. As Complainant correctly points out, the correspondence between Complainant and Respondent suggests that Respondent was acting on his own behalf when registering the domain names, and when discussing the issue of whether they would be transferred to Complainant.
Even if Respondent is right in suggesting that a distributor is entitled to register and use a domain name to truthfully identify the source of the products it distributes and to suggest an affiliation with that supplier, the employees of a distributor do not acquire that right independently of the distributorship for whom they work (or purport to work). See, e.g., State Farm Mutual Insurance Co. v. Reger, NAF Case. No. FA95651 (November 14, 2000) (rejecting argument for legitimate interest where a State Farm employee registered <statefarmclaims.com>); Weekley Homes v. Wilsher Co., NAF Case. No. FA95331 (September 2, 2000) (ordering transfer of <davidweekley.com> from a Respondent who registered the name while an employee of Complainant corporation).
In sum, the Panel concludes that, on the evidence provided to it, Respondent has not established that he has any rights in the Domain Name.
(iii) Registration and Use in Bad Faith
Complainants third hurdle is to establish that Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The first is acquisition of the domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . or to a competitor of that complainant, for valuable consideration in excess of [registrants] documented out-of-pocket costs directly related to the domain name."
Complainant contends that this type of bad faith exists. Its evidence is that it offered Respondent $210 for the Domain Names (his original cost in registering them), and he rejected the offer and stated that they had a higher value.
Complainants theory is flawed in several respects. First of all, Complainant failed to offer Respondent the amount of his costs "directly related to the domain name," since he spent $315 on the registrations when renewal costs are taken into consideration. Secondly, it was Complainant who solicited Respondent to sell the domain names, not the other way around. Thirdly, Respondent did not in any event offer to sell them he simply pointed out the self-evident reality that he would not have bothered to waste his time registering the Domain Names if he did not believe that the value to him of doing so exceeded the registration cost. That was not a demand for a large, or indeed for any, sum of money; it was simply an explanation of why the $210 offer was rejected.
In sum, the Panel finds that Complainant has failed to establish bad faith under Paragraph 4(b)(i).
The second illustration of bad faith in the Policy occurs when the registrant registers a domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name, particularly when Respondent has engaged in a pattern of such conduct. Respondent has engaged in what might arguably be deemed a "pattern," inasmuch as he registered three domain names all containing the mark 3M and all accompanying that mark with a generic term for a product that 3M is known to make and sell. Less clear is whether Respondents purpose in registering the domain names was to prevent 3M from reflecting the mark in a corresponding domain name. He gives a plausible reason for his registration of the Domain Names (to use them in connection with the sale or distribution of 3M products). Indeed, considering that 3M registered and uses the domain name <3m.com>, the Panel does not find that it has been deprived of its ability to register or use the mark as a domain name. Paragraph 4(b)(ii) therefore does not apply.
The third illustration of bad faith is registration "primarily for the purpose of disrupting the business of a competitor." Again, there is little evidence suggesting any effort by Respondent to disrupt 3Ms business. If he indeed works for a distributor of 3M products, he would appear to be engaged in furthering 3Ms business, not disrupting it. In any event, there is no evidence that he is a "competitor" of 3Ms. Moreover, he does not use the domain names for any purpose; they are currently (and since registration have been) inactive.
While the Panel is troubled by Respondents failure to disclose evidence confirming his alleged activity as, or for, a distributor of 3M products, the fact remains that the burden of establishing bad faith is on Complainant, and Complainant has not disproved Respondents contention, which appears to the Panel to be at least superficially plausible, that he is the sales manager for a 3M distributor and that his intent was to use the Domain Names in connection with that business. Nor has Complainant shown that Respondent engages in any competition with Complainant. Indeed, in view of the fact that Respondent does not currently use, and has not ever used, the Domain Names in any manner, it would be difficult for Complainant, even if it showed Respondents contention about being the sales manager of a 3M products distributor to be false, to make the necessary showing of bad-faith registration and use. Complainant could at most show "passive holding" of the domain names.
To be sure, passive holding can in appropriate circumstances be found to constitute "bad faith." See, e.g., Telstra Corp. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO February 18, 2000). But Respondent has provided a plausible explanation for his delay in establishing a web site that uses the disputed Domain Names, namely the fact (at least assuming Respondents contention to be true he offers no evidence for it) that the web site in connection with which his employer intended to use the Domain Names was not created until September 2000, and Complainant first contacted Respondent in connection with the present dispute in August 2000, thereby leaving Respondent with an understandable concern that any alteration of his use of the Domain Names prior to a resolution of this dispute could be misinterpreted or used against him. Respondent does not appear to be represented by counsel or to have any particular expertise in trademark law, and such a concern, in light of Complainants correspondence, does not seem implausible, regardless of whether it is in fact justified as a matter of trademark law or ICANN policy.
Respondents contention is that he or his employer intended to associate the Domain Names with a web site used in connection with the legitimate distribution of 3M products. Assuming that to be true, it is possible that Respondent may well have a "nominative fair use" defense to Complainants claims. Several panels have held that the truthful, nominative use of a trademark in connection with the sale of the goods or services that are properly identified by that trademark does not constitute bad faith under the Policy. See Adaptive Molecular Technologies, Inc. v. Woodward, D2000-0006 (WIPO February 28, 2000); Giddings & Lewis LLC v. McKean, D2000-1150 (WIPO March 14, 2001); Nicholas v. Magidson Fine Art, Inc., D2000-0673 (WIPO September 27, 2000); Kendall v. Meyer, D2000-0868 (WIPO October 26, 2000); The Kittinger Company, Inc. v. Kittinger Collector, AF-0107a,b (eRes May 8, 2000). Nominative fair use is a well-established doctrine under U.S. trademark law as well. See, e.g., The New Kids On The Block v. News America Publishing Inc., 971 F.2d 302 (9th Cir. 1991).
Actual use by Respondent of the Domain Names in a manner likely to cause improper confusion or otherwise in violation of one or more of the provisions of Paragraph 4(b) could well result in a different conclusion. So far, however, he has not used the Domain Names at all.
Accordingly, the Panel concludes that Complainant has not met its burden of proving bad faith under Paragraph 4(b)(iii).
The legal analysis of nominative fair use is far from straightforward, and this Panel does not wish to imply that, in a court of law, and upon a thorough examination of the facts, Respondent would necessarily prevail. Respondent has, we feel compelled once again to note, avoided disclosing potentially significant information, and the Policy does not provide for a discovery process to unearth further details. Meanwhile, however, the burden rests on Complainant. That is the nature of this proceeding.
The fourth illustration, use of the domain name in an effort to attract, for commercial gain, Internet users to a competing web site, also does not appear to be applicable here, there being no active web site located at the Domain Name. Moreover, Respondents stated intent with respect to the Domain Names is not competition with Complainant but rather distribution of its products. Paragraph 4(b)(iv) does not apply.
In sum, the Panel concludes that Complainant has failed to establish that Respondent has registered and used the Domain Name in bad faith.
In light of the findings and analysis by the Panel, the Panel decides that no transfer of the Domain Names will be ordered at this time.
Gaynell C. Methvin
David H. Tatham
Michael A. Albert
Dated: October 15, 2001