The Complainant is Medtronic, Inc. of Minneapolis, Minnesota, United States of America (“United States”), represented by Fredrikson & Byron, PA, United States.
The Respondent is Chris Olu of Abuja, Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2019. On January 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 18, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 23, 2019.
The Center verified that the Complaint together with the amended 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 January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2019.
The Center appointed Zoltán Takács as the sole panelist in this matter on February 27, 2019. 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement. 4. Factual Background
The Complainant is one of the largest medical device and technology companies in the world and has sales in over 155 countries, USD 20.3 billion in revenue, USD 97.8 million in charitable contributions, 80 manufacturing facilities and 85,000 employees.
Since its foundation in 1949, the Complainant has operated under its globally recognized family of MEDTRONIC trademarks.
The Complainant owns more than 500 registrations in over 100 countries for the mark MEDTRONIC, among others the United States Trademark Registration No. 1833626 registered on May 3, 1994 for goods of Class 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
The disputed domain name was registered on November 26, 2018 and has since been inactive. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its MEDTRONIC trademark since its reproduces it in its entirety and the applicable “.icu” generic Top-Level Domain (“gTLD”) should not be taken into account in assessing confusing similarity.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. Taking into account the distinctiveness and global reputation of the Complainant’s MEDTRONIC trademark it is inconceivable that the Respondent chose the disputed domain name without being aware of the connection it would make with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been accepted by many UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced suitable evidence on having registered rights in the trademark MEDTRONIC, and for the purpose of this proceeding, the Panel finds that the Complainant’s United States Trademark Registration No. 1833626 for the mark MEDTRONIC satisfies the requirement of having trademark rights.
Having determined that the Complainant has trademark rights in the MEDTRONIC mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the MEDTRONIC trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The disputed domain name contains the Complainant’s MEDTRONIC trademark in its entirety. The only other element in the disputed domain name is the gTLD “.icu”.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain name is identical to the MEDTRONIC trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark MEDTRONIC for more than 60 years.
The Complainant has never authorized the Respondent to use its MEDTRONIC trademark in any way, and the Complainant’s prior rights in the MEDTRONIC trademark long precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Panel does not find the Respondent’s use of the disputed domain name to be bona fide within the meaning of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Although it is unclear why the Respondent initially registered the disputed domain name, it is implausible to presume that the Respondent choose to adopt the Complainant’s MEDTRONIC mark in the disputed domain name for any other reason than to deliberately create a false impression of an association with the Complainant and target its business.
The disputed domain name has been inactive. However, according to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding.
Factors that have been considered relevant in applying this doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence or actual or contemplated good faith-use, (iii) the respondent’s concealing its identity, and (i) the implausibility of any good faith use to which the domain name may be put.
Through decades-long global use the Complainant’s highly distinctive MEDTRONIC trademark has achieved massive recognition. Given the absence of any conceivable good faith use it’s only the Respondent who could have provided plausible, or as a matter of fact any explanation for registering the disputed domain name, but has failed to do so. In view of the Panel it is reasonable to expect that a good faith individual responds to allegations of cybersquatting and the Respondent’s such failure is further indication of presence of bad faith.
For all the above reasons the Panel finds that paragraph 4(a)(iii) of the Policy is 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 be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Date: March 11, 2019
Full & Egal Universal Law Academy