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ADMINISTRATIVE PANEL DECISION 3M Company v. Li Lian Dou Case No. D2015-1661

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ADMINISTRATIVE PANEL DECISION 3M Company v. Li Lian Dou Case No. D2015-1661
ARBITRATION
AND
MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
3M Company v. Li Lian Dou
Case No. D2015-1661
1. The Parties
The Complainant is 3M Company of St Paul, Minnesota, United States of America, represented by
Norton Rose Fulbright LLP, United States of America.
The Respondent is Li Lian Dou of Shanwei, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <3mprivacyfilters.net> is registered with HiChina Zhicheng Technology Ltd.
(the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on
September 18, 2015. On September 21, 2015, the Center transmitted by email to the Registrar a request for
registrar verification in connection with the disputed domain name. On September 22, 2015, the Registrar
transmitted by email to the Center its verification response confirming that the Respondent is listed as the
registrant and providing the contact details.
On September 24, 2015, the Center sent an email communication to the parties in both Chinese and English
regarding the language of the proceeding. On September 26, 2015, the Complainant confirmed its request
that English be the language of the proceeding. On September 28, 2015, the Center received a reply from
the Respondent which is not substantive to the present proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on October 1, 2015. In accordance with the Rules,
paragraph 5, the due date for Response was October 21, 2015. The Respondent did not submit any
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response. Accordingly, the Center notified the Respondent’s default on October 22, 2015. (The Respondent
in response to an email regarding the language of proceedings did send an email on September 28. 2015 in
Chinese which translates into English “We did not make any complaint, please withdraw.”)
The Center appointed Douglas Clark as the sole panelist in this matter on October 29, 2015. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.
4. Factual Background
The Complainant is an American corporation that makes a large range of products including accessories for
computers and related consumer electronics. The Complainant is the registered proprietor of the trademark
3M in various countries in numerous classes. These include registration nos. 7088304 and 6564211 in
China covering “computers and their external equipment”. The Complainant is also the registrant of the
domain name <3mprivacyfilters.com>.
The disputed domain name <3mprivacyfilters.net> was registered on September 9, 2015.
The Respondent is an individual based in China. The Respondent has previously registered similar domain
names such as <3m-privacyfilter.com> and <3mprivacyfilter.org>.
5. Parties’ Contentions
A. Complainant
Identical or confusingly similar
The Complainant argues that the disputed domain name <3mprivacyfilters.net> is made entirely up of the
registered trademark 3M and the generic description “privacyfilters” to which generic Top-Level Domain
(“gTLD”) “.net” has been added. It is therefore confusingly similar to the Complainant’s registered
trademark 3M. It is also, other than the gTLD, identical to the Complainant’s domain name
<3mprivacyfilters.com>.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the
Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained
any trademark registrations for 3M. The Complainant also alleges that the Respondent diverts customers to
its website where counterfeit 3M privacy filters and similar products manufactured by the Complainant’s
competitors are sold. Moreover, the use of the Complainant’s 3M logo creates the false impression that the
Complainant is operating the website or is affiliated with it. Further, the Respondent has been the
Respondent in numerous other UDRP cases involving variants of “3mprivacyfilters”. In all cases, the transfer
of the domain name has been ordered.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the
Respondent knew of the Complainant’s rights in the 3M trademark and registered the disputed domain name
to attract business to its website. The Complainant provided print outs to show that the website to which the
disputed domain name resolved to was at the time the Complaint was filed used to sell privacy filters.
Further, the Respondent’s serial registration of domain name incorporating 3M is evidence of bad faith.
As such, the Complainant alleged registration and use of the disputed domain name in bad faith.
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B. Respondent
The Respondent did not reply to the Complainant’s contentions. As noted above, in its email communication
of September 28, 2015, the Respondent replied in Chinese translated as: “We did not make any complaint,
please withdraw”.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language
of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority
of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding to be English on grounds that included that the
Respondent’s website under the disputed domain name was written in English; the registration agreements
in other UDRP cases against the Respondent had been in English and at least seven other UDRP cases
against the Respondent had proceeded in English.
The Center made a preliminary determination to:
1)
accept the Complaint as filed in English;
2)
accept a Response in either English or Chinese;
3)
appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel. The fact that the website
under the disputed domain name is written in English is a relevant factor. The Respondent is seeking to
attract business in English.
The Respondent did not respond to the Center’s preliminary determination. The panel decided in
Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to
respond to a preliminary determination by the Center as to the language of the proceeding “should, in
general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the
Complaint”.
Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the
Complainant. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only
formal pleading before the Panel is in English, the Panel will render its decision in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name <3mprivacyfilters.net> is made up of the registered trademark 3M, the generic
term “privacyfilters” and the gTLD “.net”. The disputed domain name is confusingly similar to the registered
trademark 3M. Moreover, the disputed domain name is identical (other than the gTLD) to the Complainant’s
domain name <3mprivacyfilters.com>.
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The first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition
(“WIPO Overview 2.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in
the often impossible task of proving a negative, requiring information that is often primarily within the
knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the
respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of
production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating
rights or legitimate interests in the domain name. If the respondent fails to come forward with such
appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii)
of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests
in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how
a respondent can prove its rights or legitimate interests, are present in this case.
The second part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel has no hesitation in finding that the disputed domain name <3mprivacyfilters.net> was registered
in bad faith and is being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is
using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users
to your web site or other on-line location, 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.”
The evidence filed by the Complainant shows that the website under the disputed domain name was clearly
being used to sell products similar to the Complainant’s. The Complainant has further alleged that the
Respondent sells privacy filters and other products not manufactured by the Complainant, such as iPhone
screen protectors. Additionally, the Respondent has serially registered domain names incorporating the
trademark 3M and been ordered to transfer the domain names in UDRP proceedings. There can be no
doubt that the disputed domain name <3mprivacyfilters.net> was registered and is being used in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain name, <3mprivacyfilters.net>, be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: November 6, 2015
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