Complainant is Medtronic, Inc. of Minneapolis, Minnesota, United States of America (“United States” or “US”) (hereinafter “Complainant”), represented by Fredrikson & Byron, PA, United States.
Respondent is Rafael Vargas of El Paso, Texas, United States (hereinafter “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2019. On January 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 Complainant on February 1, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 6, 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 Respondent of the Complaint, and the proceedings commenced on February 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 1, 2019.
The Center appointed M. Scott Donahey as the sole panelist in this matter on March 12, 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. 4. Factual Background
Complainant, founded in 1949, is a worldwide health care provider of medical devices and medical technology. Complaint has sales in over 155 countries, over 20 billion US dollars in revenue, 80 manufacturing facilities, and 85,000 employees. Complaint, Annexes 5 and 6. Based in the United States, Complainant has been named and ranked among the most reputable, admired and innovative of companies in the world by various financial and business publications. Complaint, Annex 7. Complainant’s well-known trademark MEDTONIC has been registered in over 100 countries, including the United States, China, Iran, the Republic of Korea, Japan, the Philippines, Singapore and India. Complaint, Annexes 9 – 12, and 23 - 25. Complainant’s registrations with the United States Patent and Trademark Office date back to July 1974 (the United States Trademark Registration No. 989169 registered on July 23, 1974). Id.
Respondent registered the disputed domain name on November 5, 2018. Respondent is making no use of the disputed domain name and an Internet user who enters the domain name is taken to a page which asks whether the user intended to visit Complainant’s own web site. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical to and/or confusingly similar to Complainant’s trademark. Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name is that it has no known registrations for the MEDTRONIC mark, nor has Complainant granted any right to Respondent to use its mark in any way whatsoever, nor to manufacture or distribute any goods or services under Complainant’s mark. Finally, Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith in that Complainant provided false information which suggested that Respondent was located in Canada and Respondent registered the disputed domain name in the generic Top-Level Domain (“gTLD”) “.care”, further suggesting that the registrant of the domain name is Complainant, a provider of medical care related devices and technology. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint 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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.” A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s well-known mark MEDTRONIC, which has been registered in the gTLD “.care”. The Panel finds that the disputed domain name is identical to Complainant’s mark. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name is not being used to resolve to an active web site. Rather, the website at the disputed domain name asks whether the user intended to visit Complainant’s own website. Complainant’s mark consists of its fanciful business name which is suggestive of medicine and technology, the combined areas in which Complainant conducts its activities. In the era of new gTLDs which can be devised by and requested by the public, the selection of a gTLD that, when appended to a second level domain name, is either suggestive of or descriptive of the commercial enterprise in which the trademark holder is engaged, is further evidence of bad faith. 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 Complainant.
M. Scott Donahey
Sole Panelist
Date: March 12, 2019
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