WIPO Domain Name Decision DNL2018-0061 for medtronics.nl
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Medtronic Trading NL B.V. v. Malkhaz Kapanadze Case No. DNL2018-0061 1. The Parties
Complainant is Medtronic Trading NL B.V. of Heerlen, the Netherlands, represented by CMS Derks Star Busmann, the Netherlands.
Respondent is Malkhaz Kapanadze of Tbilisi, Georgia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through Gransy s.r.o. d/b/a/ . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2018. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On October 1, 2018, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 8, 2018, providing the registrant and contact information disclosed by SIDN, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on October 9, 2018. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 12, 2018. In accordance with the Regulations, article 7.1, the due date for Response was November 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 6, 2018.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on December 4, 2018. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Complainant is associated with the Medtronic group of companies and operates as a subsidiary of Medtronic plc. Medtronic plc, previously Medtronic, Inc., moved its legal registration from the United States of America (“USA”) to Ireland by means of a corporate tax inversion executed in 2015, and as a result converted to an Irish public limited company. Medtronic and its affiliated companies are among the largest in the world in medical technology, services and solutions. Medtronic operates in more than 160 countries. In the Netherlands, Complainant employs over 2,000 employees in four facilities, including the European Operations Center for Distribution and Shared Services in Heerlen (Complainant’s business), the Bakken Research Center in Maastricht, the Cardiac Surgery manufacturing facility in Kerkrade, and the Dutch sales office in Eindhoven.
Complainant has produced evidence that its subsidiary Medtronic plc is the owner of trademark registrations for:
- the word mark MEDTRONIC, filed in the Benelux on March 30, 1971, with registration number 0020275, for goods in class 10;
- the word mark MEDTRONIC, registered in the European Union (“EU”) on May 11, 1998, with number 000156406, for goods in classes 5, 9, and 10;
- the word mark MEDTRONIC, registered in the EU on February 22, 2006, with number 004326658, for goods and services in classes 5, 9, 10, 16, 37, 41, 42 and 44; and
- the International device mark MEDTRONIC, registered on February 15, 2013, with registration number 1154475, designating inter alia the EU, for services in class 41;
(together: the “Trademark”). The evidence submitted by Complainant establishes that the Trademark is well known and has acquired distinctiveness.
According to the evidence produced by Complainant, Medtronic Inc. further holds the domain name .
Complainant has submitted evidence that it has established trade name rights to the trade name Medtronic Trading NL and Medtronic in the Netherlands.
The Domain Name was registered on May 3, 2016.
The Panel accessed the Domain Name on December 5, 2018, which resolved to a pay-per-click (“PPC”) parking page advertising scheme showing hyperlinks referencing “Medtronics Insulin Pump” and “Medtronic Diabetes”, as also evidenced by Complainant. 5. Parties’ Contentions A. Complainant
Complainant bases the Complaint on its rights in the Trademark and the trade name Medtronic.
Complainant notes that the Domain Name contains the name MEDTRONIC, which is identical to the Trademark and to the trade name of Complainant. As a result, the Trademark is incorporated in its entirety in the Domain Name.
Complainant further contends that the term MEDTRONIC as such carries no meaning in English or Dutch and that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the similarity between the Trademark and the Domain Name.
Complainant asserts that the Domain Name is confusingly similar to the well-known Trademark and trade name of Complainant. The mere addition of the character “s” as a suffix to the Domain Name is insufficient to differentiate the Domain Name from the Trademark and trade name of Complainant. The incorporation of the Trademark and trade name of Complainant in its entirety is, in the opinion of Complainant, sufficient to establish confusing similarity between the Domain Name and the Trademark and trade name of Complainant.
Complainant argues that Respondent, who is unknown to Complainant, has no rights or legitimate interest in the Domain Name since Respondent is not sponsored by or affiliated in any way with Complainant nor has Respondent been given any permission to use the Trademarks in any manner or is Respondent commonly known by the Domain Name.
Complainant submits that Respondent is using the Domain name in bad faith, more specific to redirect Internet users to a website that contains various hyperlinks to a variety of third-party websites that are unrelated to Complainant, the Trademark or Complainant’s goods and/or services. Complainant submit