The Complainant is Medtronic, Inc. of Minneapolis, Minnesota, United States of America (“United States”), represented by the law firm Fredrikson & Byron, also based in Minnesota, United States.
The Respondent is David Janke of Minneapolis, Minnesota, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2019, 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 and contact information for the disputed domain name.
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 of the Complaint, and the proceedings commenced on March 29, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was April 18, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.
The Center appointed D. Brian King as the sole panelist in this matter on May 1, 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 A. The Parties
The Complainant is the United States-based subsidiary of Medtronic plc, an Irish company (Annex 6 to the Complaint). According to the Complaint, the Complainant is the world’s largest medical device and technology company, with reported revenues of USD 20.3 billion in 2018.
The Panel has no information about the activities or history of the Respondent. B. The Marks
The Complainant has used the MEDTRONIC mark in commerce in the United States since 1949, registered the trademark in the United States in 1974, and presently holds 26 United States registrations for it (Annexes 9 and 10 to the Complaint). The Complainant also owns registrations of the mark in more than 100 other jurisdictions worldwide (Annex 9 to the Complaint). Representative examples of these registrations follow:
Trademark
Country
Year of Registration
MEDTRONIC
United States
1974
MEDTRONIC
Canada
1970
MEDTRONIC
China
1987
MEDTRONIC
Germany
1975
MEDTRONIC
United Kingdom
1969 C. Domain Names
The disputed domain name (“Domain Name”) was registered on March 5, 2019. This date is later by decades than when the Complainant registered its MEDTRONIC mark in the United States. The Domain Name was inactive when last accessed by the Complainant in March 2019 (Annex 18 to the Complaint). 5. Parties’ Contentions A. Complainant
The Complainant argues that the Domain Name is identical or confusingly similar to its registered trademarks. It submits that, as the world’s largest medical device and technology company, its MEDTRONIC mark and associated branded products are famous in the United States and worldwide. The Complainant notes that Medtronic ranked 28th on the Forbes Most Reputable Companies list and was named to FORTUNE’s list of the World’s Most Admired Companies, among other accolades (Annex 7 to the Complaint). The Complainant submits that the Respondent is simply appropriating its MEDTRONIC mark and appending the Top-Level Domain (“TLD”) “.dev” to it. The Complainant argues that this does not distinguish the Domain Name from the Complainant’s mark, in particular because medical devices are prominent among the Complainant’s products, and “dev” could be misunderstood to refer to such devices.
Next, the Complainant further argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not given the Respondent any licensing rights or other permission to use its trademarks. It further submits that the Respondent is not commonly known by or associated with the Domain Name, and that the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Complainant argues that, given the fame of the MEDTRONIC brand, the Respondent must have had knowledge of the Complainant’s rights in the mark when he registered the Domain Name. Further, according to the Complainant, “Medtronic” is an invented, non-descriptive term, making it extremely difficult to envision any legitimate use of it by the Respondent.
Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. MEDTRONIC is an internationally-known trademark, the Complainant submits, and therefore the registration of a domain name incorporating the mark – in and of itself – demonstrates bad faith on the Respondent’s part. The Complainant further suggests that by registering the confusingly similar Domain Name, the Respondent prevented the Complainant from registering the same domain name and also diverted traffic from the Complainant’s existing websites, thereby disrupting the Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions despite having had the opportunity to do so. 6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.
Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above. A. Identical or Confusingly Similar
The Complainant has provided evidence demonstrating its extensive rights in the MEDTRONIC mark. In particular, the Complainant has obtained registrations of the MEDTRONIC mark in over 100 countries, including the United States (Annex 9 to the Complaint).
The Domain Name entirely incorporates the Complainant’s MEDTRONIC mark. The impression created by the dominant portion of the Domain Name is, in the Panel’s view, not affected by the addition of the TLD “.dev.” Indeed, given that the Complainant is a manufacturer of medical devices, the Respondent’s choice of the TLD registration in fact increases the potential confusion between the Domain Name and the Complainant’s trademarks and business.
Accordingly, the Panel has no difficulty in concluding that the Domain Name is confusingly similar to the Complainant’s MEDTRONIC mark. The first element of the test under paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a) of the Policy (see, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205; Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Once a prima facie showing is made, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name.
The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard. The Complainant has shown that it registered the MEDTRONIC mark in the United States, and in many other jurisdictions, decades prior to the registration of the Domain Name (Annexes 9 and 10 to the Complaint). Accordingly, when he registered the Domain Name, the Respondent was on at least constructive notice, and very likely on actual notice, of the Complainant’s rights in the MEDTRONIC mark.
The Respondent has chosen not to file a Response, and therefore the Complainant’s claims and contentions remain unchallenged. In the absence of any contrary evidence, the Panel accepts the Complainant’s representations that it has not given the Respondent permission to use its trademarks, and that there is no commercial relationship between the Respondent and the Complainant. The Panel likewise finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Name.
In these circumstances, it is difficult to imagine any legitimate right or interest that the Respondent could claim in respect of the Domain Name. Accordingly, the Panel finds that the Complaint succeeds as to the second element of the test under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element of the test under paragraph 4(a) requires that the Domain Name has been registered and is being used in bad faith.
There is in this case is no evidence of actual use of the Domain Name by the Respondent – as of the date of the Complaint, the Domain Name remained inactive. While that complicates the Complainant’s assertion that bad faith exists, it does not preclude it: previous UDRP panels have found that the registration of a domain name that is confusingly similar to a famous mark can, in itself, establish bad faith (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Georgia-Pacific Corporation v. Charlie Kalopungi, WIPO Case No. D2011-0634). The Panel has already concluded above that the Domain Name is confusingly similar to the famous MEDTRONIC mark, that the Respondent had constructive (and likely actual) knowledge of the Complainant’s rights in the mark when he registered the Domain Name, and that the Respondent has no countervailing rights in it.
Furthermore, as noted, the Respondent did not submit a Response despite having had a full opportunity to do so. From this the Panel infers that the Respondent had nothing helpful to say (from his perspective) in defense of the bad faith element (or other elements) of the Complainant’s claim.
Following the line of cases cited above, and taking into account the Respondent’s election not to respond, the Panel finds that the Complainant has sufficiently established the third element under paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
D. Brian King
Sole Panelist
Date: May 9, 2019
Full & Egal Universal Law Academy