Postitafrica.com

The timeline behind postitafrica.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION 3M Company v. Ying ter Wang Ju Le Bu Ltd. Claim Number: FA0501000397553 PARTIES Complainant is 3M Company (“Complainant”), represented by Joel D. Leviton, of Fish & Richardson P.C., P.A., 60 South Sixth Street, Suite 3300, Minneapolis, MN 55402. Respondent is Ying ter Wang Ju Le Bu Ltd. (“Respondent”), 60-262, Dong-lu-yuan, Jiao-wang-zhuang, Tongzhou, Beijing 101101, CHINA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <postitafrica.com>, registered with Go Daddy Software, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Tyrus R. Atkinson, Jr., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 7, 2005. On January 6, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <postitafrica.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On January 10, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 31, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@postitafrica.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On February 3, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <postitafrica.com> domain name is confusingly similar to Complainant’s POST-IT mark. 2. Respondent does not have any rights or legitimate interests in the <postitafrica.com> domain name. 3. Respondent registered and used the <postitafrica.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, 3M Company, develops and markets a variety of products that serve a diverse field of customers throughout the world. Complainant introduced the now famous POST-IT brand of adhesive backed paper and stationery notes approximately thirty years ago. Since that time, Complainant has used the POST-IT mark in connection with a variety of products including, without limitation, note pads, printed notes, trays for holding stationery paper, adhesive tape, cover-up tape, tape flags, computer software, easel pads and paper, bulletin boards, glue sticks and paper and cardboard sheets containing adhesive coatings. Complainant sells its POST-IT brand products on six continents in hundreds of countries worldwide. Through its subsidiaries in Egypt, Kenya, Morocco, South Africa and Zimbabwe, Complainant offers an array of products, including POST-IT brand products, to many nations within the African continent. Complainant has numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the POST-IT mark (Reg. Nos. 1,046,353 issued August 17, 1976; 1,198,694 issued June 22, 1982; 1,208,297 issued September 14, 1982). Additionally, Complainant has registered the POST-IT mark with trademark authorities throughout the world, including Respondent’s home country, China (Reg. Nos. 317768 issued June 30, 1988; 785258 issued October 21, 1995; 802744 issued December 28, 1995). Respondent registered the <postitafrica.com> domain name on October 21, 2003. Respondent’s domain name resolves to a website located at the <smutlist.com> domain name that features pornographic material as well as links and advertisements for various commercial pornographic websites. DISCUSSION Paragraph 15(a) of the Rules instructs this 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." In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has established rights in the POST-IT mark through registration with the USPTO and various trademark authorities worldwide as well as through continuous use of the mark in commerce. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark). Respondent’s <postitafrica.com> domain name is confusingly similar to Complainant’s POST-IT mark because Respondent’s domain name incorporates the mark in its entirety and merely adds the geographic term “africa.” Combining a geographic term with Complainant’s registered marks does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of Policy ¶ 4(a)(i). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to Complainant’s CMGI mark); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark . . . "the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"). Furthermore, Respondent’s addition of the generic top-level domain “.com” and the omission of the hyphen between the words in Complainant’s POST-IT mark is not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth in the Complaint as true and accurate. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts). Additionally, the Panel may interpret Respondent’s failure to respond to the Complaint as an admission that Respondent lacks rights and legitimate interests in the <postitafrica.com> domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent’s domain name is identical to Complainant’s mark and diverts Internet users to a commercial website featuring explicit and pornographic material. See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (“Misdirecting Internet traffic by utilizing Complainant’s registered mark [in order to direct Internet users to an adult-oriented website] does not equate to a bona fide offering of goods or services . . . nor is it an example of legitimate noncommercial or fair use of a domain name . . . Respondent was merely attempting to capitalize on a close similarity between its domain name and the registered mark of Complainant, presumably to gain revenue from each Internet user redirected to the pornographic website.”). Furthermore, nothing in the record establishes that Respondent is commonly known by the <postitafrica> domain name. Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s POST-IT mark. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent is capitalizing on the goodwill of the POST-IT mark by using the disputed domain name to divert Internet users to a commercial pornographic website. Since the disputed domain name contains Complainant’s mark, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting website. Therefore, Respondent’s opportunistic use of the disputed domain name represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain). Furthermore, Respondent’s tarnishing use of the <postitafrica.com> domain name to redirect Internet users to an adult-oriented website is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith). Moreover, Respondent had actual or constructive knowledge of Complainant’s rights in the POST-IT mark due to Complainant’s registration of the mark with the USPTO and with the trademark authority of Respondent’s home country as well as due to the immense international fame associated with Complainant’s mark. Thus, the Panel concludes that Respondent’s registration of the <postitafrica.com> domain name with actual or constructive knowledge of Complainant’s rights in the POST-IT mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <postitafrica.com> domain name be TRANSFERRED from Respondent to Complainant. Tyrus R. Atkinson, Jr., Panelist Dated: February 17, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.