WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
3M COMPANY v. Le Tan Hoa, Personal
Case No. D2018-1942
1. The Parties
The Complainant is 3M COMPANY of Saint Paul, Minnesota, United States of America (“United States”), represented by BMVN International LLC, Viet Nam.
The Respondent is Le Tan Hoa of Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <sanpham3m.com> (the “Domain Name”) is registered with Nhan Hoa Software Company Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2018. On August 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 28, 2018, 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 of the registrant.
On September 14, 2018, the Center notified the Parties in both English and Vietnamese that the language of the registration agreement for the Domain Name is Vietnamese. On September 14, 2018, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the 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 in English and Vietnamese of the Complaint, and the proceedings commenced on September 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on November 1, 2018. 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 was founded in 1902 under the name Minnesota Mining and Manufacturing Company. It has expanded its business and reputation to a global scale. The Complainant manufactures a wide range of products from basic consumer products to sophisticated technical devices in automotive, commercial solutions, communications, consumer, design and construction, electronics, energy, health care, manufacturing, mining, oil and gas, safety and transportation industries. Today, more than 60,000 3M products are used in homes, businesses, schools, hospitals and other industries. In 2017, the Complainant reached total sales of USD 31.7 billion worldwide.
The Complainant currently owns at least 1,200 trademark registrations in more than sixty-eight countries worldwide. The dominant element in most registrations is the term "3M".
The Complainant’s first subsidiary in Viet Nam was established in 1994 as “3M Vietnam Limited”, and the Complainant is the owner of eight Vietnamese trademark registrations, e.g., registration number 4-0123074-000 registered on April 15, 2009.
The Complainant and/or its affiliates have also established an extensive portfolio of domain name registrations, including <3m.com>.
According to the Registrar, the Domain Name registration was created on July 4, 2011. At the time of filing the Complaint, the Domain Name resolved to a web page in the Vietnamese language that distributed a large number of products from other brands. At the time of drafting the decision, the Domain Name resolved to an error page.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name incorporates in its entirety the company name 3M. The word “sanpham” in the Domain Name means “product” in English. The Respondent is using the Domain Name to sell car care products, adhesive products that are identical to 3M’s business lines. The addition in the Domain Name is more likely to increase the confusion to consumers as to the association between the Domain Name and the Complainant, especially when the website under the Domain Name is intended for Vietnamese customers and offers to sell to people in Vietnam.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has no association or affiliation with the Complainant. The Respondent has not received any franchise, license or consent, express or implied, from the Complainant to use the 3M trademarks. The Respondent fails to use the Domain Name for a bona fide offering of goods. The Respondent is using the website under the Domain Name to distribute a large number of products from other brands. The Respondent fails to disclose the relationship between the Complainant and the Respondent. In the Complainant’s view, the Respondent’s use is unfair as it exploits the 3M trademarks to bait Internet users and direct them to the products of the Complainant’s competitors.
The Complainant argues that the Respondent must have been aware of the Complainant and its trademark when the Respondent registered the Domain Name. The Respondent uses the Domain Name to attract, for commercial gain, Internet users to its website by creating a false impression about the affiliation or association between the Respondent and the Complainant.
As to the language of the administrative proceeding, the Complainant points to the electronic version of the registrar’s registrant agreement in English. In addition, the Respondent’s web page at “www.sanpham3m.com” displays various content in English. The website introduces itself as “3M Super Store” on the top of the page or “Super Market – Everything you need” on the bottom of the page. The website also displays its product names and product descriptions in bilingual language. The Complainant argues that the Respondent is likely to be familiar with using English in communications. Moreover, translation of the Complaint would result in delay, and considerable and unnecessary expenses of translating documents.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Pursuant to paragraph 11 of the Rules, “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.”
Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
The Registrar has confirmed that the registration agreement is in Vietnamese. The Complainant filed the Complaint in English and requested that English be the language of the proceeding, as translating the Complaint and all supporting documents into Vietnamese would cause an unnecessary burden to the Complainant and unnecessarily delay the proceeding.
The Center has sent “dual language” case-related communications to the parties (i.e., in both English and Vietnamese). The Respondent has not responded. The Respondent has not requested a translation of the Complaint. There is content on the webpage under the Domain Name in English.
Taking into account the above, in particular that the Respondent, despite receiving case-related communication in both English and Vietnamese, has not objected to English as the language of the proceeding, the Panel proceeds in English.
B. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark 3M.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates in its entirety the company name 3M. The word "sanpham" means "product" in English. The addition of this word does not avoid a finding of confusing similarity. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired common law rights. The Respondent is using the website under the Domain Name to distribute products from other brands. The Respondent fails to disclose the relationship between the Complainant and the Respondent. The Respondent’s use is unfair as it exploits the 3M trademarks to bait Internet users and direct them to the products of the Complainant's competitors.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Domain Name incorporates the trademark 3M. The Respondent has used the website under the Domain Name to distribute products competing with the Complainant. It seems more likely than not that the Respondent knew of the Complainant and its business when he registered the Domain Name.
The Respondent’s use of the Domain Name appears to be to attract, for commercial gain, Internet users to its website by creating a false impression of affiliation or association with the Complainant. The 3M trademark has been used to bait Internet users to products of the Complainant’s competitors.
The above finding of bad faith is supported by the fact that the Respondent has failed to respond to the Complaint.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sanpham3m.com> be transferred to the Complainant.
Date: November 5, 2018