Postitpicture.com

The timeline behind postitpicture.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. Maltuzi LLC Claim Number: FA0808001219183 PARTIES Complainant is 3M Company (“Complainant”), represented by Joel D. Leviton, of Fish & Richardson P.C., P.A., Minnesota, USA. Respondent is Maltuzi LLC (“Respondent”), represented by Tracy R. Roman, of Raskin Peter Rubin & Simon LLP, California, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <postitpicture.com>, which is registered with Nameking.com, Inc. (“Nameking”) PANEL The undersigned, Mr. David H Tatham, certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 5, 2008; the Forum received a hard copy of the Complaint on August 6, 2008. On August 12, 2008, Nameking confirmed by e-mail to the Forum that the domain name <postitpicture.com> (“the disputed domain name”) was registered with it and that the Respondent was the current registrant of the name. Nameking has verified that Respondent is bound by the its 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 August 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of September 2, 2008 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@postitpicture.com by e-mail. A timely Response was received and determined to be complete on September 2, 2008. On September 5, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham, as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant develops and markets innovative products and solutions that serve a diverse field of customers throughout the world. Founded in 1902 in Northern Minnesota, it initially focused on mining for mineral deposits and manufacturing sandpaper products. Since then, it has grown to be a global innovator, with annual sales exceeding $20 billion. Complainant introduced its POST-IT brand of adhesive backed paper and stationery notes approximately thirty years ago. Since that time, it has used the POST-IT trademark in connection with a variety of products including, without limitation, note pads, printed notes, trays and dispensers for holding stationery notes, adhesive tape, cover-up tape, tape flags, computer software, easel pads and paper, bulletin boards, and other such home and office supplies. Among Complainant’s more recent product introductions has been POST-IT picture paper. As a result of Complainant’s widespread use and promotion of the POST-IT brand, and the many high quality products sold thereunder, POST-IT has become one the most well known and famous brands in the world. Complainant is the owner of the following U.S. Trademark Registrations for its POST-IT mark: Nos. 1,046,353; 1,198,694; 1,208,297; 1,284,295; 1,935,381; 2,012,212; 2,371,084; 2,372,832; 2,402,722; 2,402,723; 2,736,421; 3,168,105; and 3,176,638. Copies of these registrations were annexed to the Complaint. Complainant’s first U.S. registration for POST-IT – No. 1,046,353 – issued on August 17, 1976 and Complainant contends that is therefore now incontestable. Backed up by reference to numerous prior Decisions under the Policy, Complainant contends that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights” because – Knowing of the fame of the POST-IT trademark, and in an obvious attempt to benefit from Complainant’s launch of its POST-IT picture paper product, Respondent registered and is using the disputed domain name to attract internet users to its website to generate advertising and click-through revenue. Respondent uses the disputed domain name in connection with a website that hosts a variety of links to, and advertisements for, third parties, many of which sell stationery products and office supplies that compete with Complainant’s products. The website also includes links to sexually explicit material, which tarnishes Complainant’s famous trademark POST-IT. The sole reason why Respondent registered and is using the disputed domain name is to generate advertising revenue for itself by creating a likelihood of confusion with Complainant’s famous POST-IT trademark. Complainant owns valuable rights in the famous POST-IT trademark that long predate Respondent’s registration of the disputed domain name in 2006 and it is the owner of common law rights in the POST-IT trademark in the U.S. based on its long and continuous use of the famous brand in connection with numerous stationery and office related products dating back to the 1970’s. Complainant is also the owner of thirteen U.S. trademark registrations for its POST-IT mark, six of which have become incontestable. The disputed domain name is confusingly similar to Complainant’s famous POST-IT trademark, as it merely couples the POST-IT trademark with the generic word “picture.” Complainant annexed to the Complaint copies of pages from its website illustrating that it offers Picture Paper under the POST-IT name, and it points out that two of its federal trademark registrations, specifically cover photo paper. A domain name comprised of a trademark, the generic name of a product sold under the trademark, and a generic top-level domain is confusingly similar to the trademark. The lack of the hyphen in the <postitpicture.com> domain name does not negate the overwhelming similarity to Complainant’s POST-IT trademark. When a user clicks on the “Post It” link on Respondent’s website, the user is taken to page with links to “3m [sic] Custom Post-It Notes,” “Post-It Notes,” “Custom Post-It Notes,” “Office Supplies Usa,” and “Sticky Notes.” Because Complainant is world famous for selling POST-IT brand sticky notes, the content of Respondent’s website enhances the confusing nature of the disputed domain name. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because – Respondent does not use it in connection with a bona fide offering of goods or services. Respondent is not making a noncommercial fair use of the name. Respondent has never been known as or referred to as “Postit Picture” or any variant thereof, as is confirmed by the WHOIS record for the disputed domain name, a copy of which was annexed to the Complaint, and which identifies Maltuzi LLC as the registrant and administrative contact. Respondent’s use of the disputed domain name to attract Internet users to its commercial website that is laden with revenue-generating advertisements and links, and its use of a domain name containing another party’s trademark to operate a portal website that generates advertising and click-through revenue, is not a bona fide offering of goods or services, or a noncommercial fair use of the domain name. The web page at the disputed domain name includes links to adult-oriented material such as “Milf Personals: Moms Looking For Toyboy Dates” and “Married But Looking: These Local Wives Like to Play Around.” Complainant contends that links to adult-oriented material is evidence that Respondent lacks rights and legitimate interests in the disputed domain name as Respondent will know, having featured as a respondent in Parke-Bell Ltd. v. Maltuzi LLC, FA 1082265 (Nat. Arb. Forum Nov.r 7, 2007) where it was found that Maltuzi had no rights or legitimate interest because it had posted adult-oriented material to the website that resolves from the disputed domain name. Complainant contends that Respondent is acting in bad faith because - · Using a domain name comprised of another’s mark for the purpose of providing links to third party commercial websites constitutes bad faith and in this case, Respondent uses a domain name comprised of the famous and incontestably registered POST-IT trademark to attract Internet users to website for commercial gain. Once Internet users have reached Respondent’s websites, they are directed to commercial websites that sell, among other things, products that compete with Complainant’s products. Respondent has acted and is acting in bad faith by capitalizing on the likelihood of confusion it is causing by using Complainant’s POST-IT mark in the disputed domain name. Registering multiple domain names containing the trademarks of others is strong evidence of bad faith registration and use and Respondent has a pattern of registering domain names containing the marks of others as evidenced by Complainant’s reference to four cases in which Respondent featured as the respondent. As described above, the website at the disputed domain name redirects users to websites featuring adult-oriented products and services. This is further evidence of Respondent’s bad faith. Respondent is located in California and, as Complainant has sold its POST-IT brand products in the United States for approximately three decades, Respondent must have been aware of the name.The renown of POST-IT brand products, and the fact that Respondent uses the disputed domain name to host sponsored links for office supplies and stationery products, plainly demonstrates that Respondent was well aware of the famous POST-IT trademark prior to registering the disputed domain name. Indeed, certain sponsored links that appear on Respondent’s websites refer to Complainant specifically and Respondent’s knowledge of its rights in the famous POST-IT trademark serves as further evidence of Respondent’s bad faith registration and use of the disputed domain name. B. Respondent Upon learning of this matter and in an effort to resolve this matter expeditiously, Respondent attempted to contact Complainant and its representative at various times to offer a voluntary transfer of the domain name at issue. Neither Complainant nor its representative responded to these communications. Therefore, without admitting fault or liability and without responding substantively to the allegations raised by Complainant, and in order to expedite this matter so that the Panel’s time and resources are not otherwise wasted on this undisputed matter, Respondent stipulates that it is willing to voluntarily transfer the disputed domain name to Complainant. Respondent further requests that the transfer be ordered without findings of fact or conclusions as to paragraph 4(a) of the Policy other than that the disputed domain name be transferred. Respondent contends that in numerous prior UDRP decisions, panels have consistently ruled that when a complaint has been filed and the respondent consents to the transfer of the domain name, it is inappropriate to issue any decision other than simply ordering the transfer of the domain name. Such panels consistently hold that it would be improper to issue any findings of fact in such cases, and Respondent quotes from three such Decisions and refers to twenty more. FINDINGS Complainant is the owner of a number of registrations in the U.S. for the trademark POST-IT. It has used this name extensively for nearly 30 years and, as a result the mark has become extremely well-known, if not famous. Respondent has stated that it is willing for the disputed domain name to be transferred to Complainant. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Respondent does not contest any of Complainant’s allegations regarding the disputed domain name, and indeed has indicated that it will consent to a judgment in favour of Complainant for the transfer of the disputed domain name. In similar circumstances, Panels in several earlier Decisions have foregone the traditional UDRP analysis and ordered the immediate transfer of the domain names. This Panel was involved in just such a case – LF, LLC v. All Granite FA 992052 (Nat. Arb. Forum June 12, 2007). However there have been numerous similar findings, such as in Boehringer Ingelheim International GmbH v. Modern Ltd. – Cayman Web Development, FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the Respondent stipulated to the transfer); Cartoon Network LP, LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006) in which the Panel stated:“[T]his Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course”; and Diners Club Int’l Ltd. v Nokta Internet Techs., FA 720824 (Nat. Arb. Forum Aug. 2, 2006) where the Panel held: “Indeed, it would be unwise to make any other findings [other than the transfer] in case the same issues were to arise in later proceedings. Accordingly, the Panel will not make any findings of fact or compliance or otherwise, but will make the only order that is appropriate in the circumstances, which is an order for the transfer of the domain name to Complainant.” In this case, the Panel sees no reason why it should depart from the course adopted in all of the above Decisions, or why it should deny the requests of both Complainant and Respondent. DECISION Having established that Complainant’s request for a transfer of the disputed domain name is not contested by Respondent, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <postitpicture.com> domain name be TRANSFERRED from Respondent to Complainant. David H Tatham, Panelist Dated: September 19, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

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