Minnesota Mining and Manufacturing Co. v. JSO Company

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 Registrar’s 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

Complainant:

(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, 3M’s 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,

3M’s 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 D’oro

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:

- <srs-nsi.com>

- <srsnsi.com>

- <srs-networksolutions.com>

- <srs-icann.com>

- <srsicann.com>

- <snetworksolutions.com>

This information was provided through email correspondence by DomainDirect.

(DomainDirect is owned by the Registrar). Respondent’s 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 Complainant’s 3M marks which are known worldwide. It agrees with the Complainant’s

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 Complainant’s 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 Complainant’s 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 Respondent’s bad faith

at the time of registration. It would strain belief that the Respondent did

not know of the Complainant’s mark and reputation at the time of registration.

Moreover, the Respondent’s 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 Respondent’s reply indicated a wish to profit from the bad faith registration.

Also of relevance is the Respondent’s 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.

7. Decision

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 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 <3mconsul.com> be transferred to the

Complainant.

Hon. Sir Ian Barker QC

Presiding Panelist

Ross Carson

Panelist

Frank L. Politano

Panelist

Dated: July 24, 2001

More cases by this complainant

• Minnesota Mining and Manufacturing Co. v. Mark Overbey — D2001-0727 · 3mabrasives.com, 3madhesives.com, 3mtapes.com · Complaint denied · 15 Oct 2001