Complainant is Medtronic, Inc., United States of America (“United States”), represented by Snell & Wilmer, LLP, United States.
Respondent is Contact Privacy Inc. Customer 1246934271, Canada / Edward Rifice, Medtro LLC, United States. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 13, 2020, 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 May 13, 2020. 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 May 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 8, 2020. The Center appointed Richard W. Page as the sole panelist in this matter on June 12, 2020. 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 has a federally registered trademark MEDTRONIC, United States trademark registration no. 1,038,755, registered on May 4, 1976, (the “MEDTRONIC Mark”). Complainant is an international medical device and technology company, and has offered a wide variety of goods and services, including ventilators, under the MEDRONIC Mark since as early as 1949. Complainant’s MEDTRONIC-branded goods and services are advertised and sold on a global scale. Complainant sells MEDTRONIC-branded goods and services in over 150 countries and earns tens of billions of dollars in revenues annually from these sales. Complainant owns over 75 manufacturing sites worldwide and employs tens of thousands of persons around the world. Complainant has offices in the United States and other countries. Complainant owns dozens of United States registrations for the MEDTRONIC Mark for medical devices and related goods and services many of which issued decades ago and the earliest of which was registered in 1976. In the United States Patent and Trademark Office, Complainant is the only owner of the registrations for the MEDTRONIC Mark. No third-party owns a registered mark for MEDTRONIC for any type of goods or services. Complainant also owns dozens of trademark registrations for the MEDTRONIC Mark for medical devices and related goods and services in over 100 jurisdictions throughout the world, including the United Kingdom, Canada, and China, all of which date back many decades. For decades, Complainant has owned and continuously used the domain name Complainant claims that since the onset of the global COVID-19 pandemic, Complainant has increased its production of ventilators in order to increase access to this urgently needed equipment to treat patients who have contracted the virus. Respondent registered the Disputed Domain Name on April 14, 2020. Complainant has provided evidence that the Disputed Domain Name does not resolve to an active website and has been used in connection to a fraudulent phishing scheme. 5. Parties’ Contentions A. Complainant Complainant contends that it has enforceable rights in the MEDTRONIC Mark, including numerous registrations in the United States and throughout the world. Complainant further contends that, over the last 70 years, it has invested hundreds of millions of dollars advertising and promoting the MEDTRONIC Mark, which has acquired goodwill and recognition. For generations, the public has associated the MEDTRONIC Mark exclusively with Complainant. Complainant owns common law rights around the world in the MEDTRONIC Mark. Complainant asserts that the Disputed Domain Name is identical or confusingly similar to Complainant’s MEDTRONIC Mark. The Disputed Domain Name incorporates in full the MEDTRONIC Mark. Complainant further asserts that the addition of the generic word “group” does not reduce the substantial identity between the Disputed Domain Name and the MEDTRONIC Mark. Complainant further asserts that the addition of a generic top-level domain (“gTLD”) such as “.org” to Complainant’s MEDTRONIC Mark also does not reduce the substantial identity between the MEDTRONIC Mark and the Dispute Domain Name. Complainant alleges that Respondent is actively seeking to capitalize on the worldwide COVID-19 pandemic through a fraudulent phishing scheme using the Disputed Domain Name and counterfeit invoices for ventilators and other medical equipment. Complainant further alleges that Respondent is using the Disputed Domain Name in a blatant attempt to defraud Complainant’s customers and capitalize on the global health crisis of COVID-19. Respondent registered the Disputed Domain Name on April 14, 2020, when the COVID-19 pandemic had spread throughout the world. Approximately two weeks after registering, an individual posing as Complainant’s employee sent an email using the Disputed Domain Name to Complainant’s customer, seeking payment for a purportedly outstanding invoice. When Complainant’s customer asked for a copy of the invoice, Respondent sent a counterfeit invoice that included the address of Complainant’s European Operations Center and Complainant’s registered logo. The fake invoice was for EUR 39,858.93 worth of ventilators and respirator masks, equipment that was in particularly high demand because of the global pandemic. Complainant avers that Respondent has no rights or legitimate interest in the Disputed Domain Name. There is no evidence that Respondent is known by Medtronic or Medtronic Group. There is no evidence that Respondent has used or is preparing to use the Disputed Domain Name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Disputed Domain Name. There is no content located at the website to which the Disputed Domain Name resolves. Complainant further avers that it has not authorized Respondent to register or use Complainant’s MEDTRONIC Mark. There is no affiliation, connection or association between Respondent and Complainant. Complainant argues that Respondent registered and is using the Disputed Domain Name in bad faith, including a furtherance of the fraudulent phishing scheme. Complainant further argues that it owns numerous trademark registrations throughout the world for the MEDTRONIC Mark and domains containing the word “Medtronic”, which were all registered before the Dispute Domain Name. Complainant further argues that it has had exclusive use of the MEDTRONIC Mark for 70 years, earned tens of billions of annual revenues for good and services sold under that brand, and established the brand’s reputation as among the most famous medical device brands in the world Under these circumstances, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Disputed Domain Name. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Johnson & Johnson v. Daniel Wistbacka,WIPO Case No. D2017-0709. 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 in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” A respondent is not obliged to participate in a domain name dispute proceeding, but if it fails to do so, asserted facts that are not unreasonable will be taken as true and the respondent will be subject to the inferences that flow naturally from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant contends that it has numerous registrations of the MEDTRONIC Mark. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the MEDTRONIC Mark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this presumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Respondent has not rebutted the presumption. The Panel finds that Complainant has enforceable trademark rights in the MEDTRONIC Mark. Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the MEDTRONIC Mark pursuant to paragraph 4(a)(i) of the Policy. Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also, section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Furthermore, section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as “.org” may be disregarded for purposes of assessing confusing similarity. Complainant asserts that the Disputed Domain Name incorporates in full the MEDTRONIC Mark. Complainant further asserts that the addition of the generic word “group” does not reduce the substantial identity between the Disputed Domain Name and the MEDTRONIC Mark. Complainant further asserts that the addition of the gTLD “.org” to Complainant’s MEDTRONIC Mark also does not reduce the substantial identity between the MEDTRONIC Mark and the Disputed Domain Name. Respondent has not contested these assertions. The Panel finds that the Disputed Domain Name is confusingly similar to the MEDTRONIC Mark, pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the MEDTRONIC Mark. Complainant alleges that Respondent is actively seeking to capitalize on the worldwide COVID-19 pandemic through a fraudulent phishing scheme using the Disputed Domain Name and counterfeit invoices for ventilators and other medical equipment. Respondent has failed to contest these allegations. The Panel finds that the actions of Respondent are not a bona fide offering of goods or services and are not a legitimate noncommercial or fair use of the Disputed Domain Name. Furthermore, there is no evidence that Respondent has ever been commonly known by the Disputed Domain Name. The Panel finds that Complainant has established the necessary elements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the MEDTRONIC Mark or to a competitor of complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the MEDTRONIC Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you [Respondent] 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 MEDTRONIC Mark as to the source, sponsorship, affiliation, or endorsement of your website. The four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows, supra. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. The Panel finds that Respondent has been engaged in a fraudulent phishing scheme to render false invoices to customers of Complainant. Respondent clearly registered and used the Disputed Domain Name to target Complainant’s trademark in order to solicit payment of the false invoices. Such activity constitutes bad faith per se. Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 Richard W. Page
Sole Panelist
Date: June 17, 2020
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