The Complainant is Medtronic, Inc., United States of America (“United States”), represented by Snell & Wilmer, LLP, United States.
The Respondent is Roohi B Rasheed, Roohi B Rasheed Rasheed, 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 confirming that the Respondent is listed as the registrant and providing the contact details. 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 June 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on June 24, 2020. The Center appointed Dennis A. Foster as the sole panelist in this matter on June 29, 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 The Complainant is a United States company that markets medical devices and technology worldwide and generates substantial revenue. The Complainant has conducted business under its MEDTRONIC trademark since 1949 and has registered that mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 1,038;755; registered on May 4, 1976), as well as with other responsible trademark authorities. The disputed domain name, - The Complainant, founded in the United States, is one of the world's largest medical device and technology companies, earning tens of billions of dollars in revenue annually from the sale of goods and services in over 150 countries. The Complainant has operated under its MEDTRONIC trademark since at least 1949. - The Complainant has registered its mark with trademark authorities throughout the world, including with the USPTO. The Complainant also conducts business through its website at the domain name - The disputed domain name is confusingly similar to the Complainant’s MEDTRONIC trademark. The addition of the generic word “group” does not create a meaningful difference, especially as the Complainant’s business is organized into four “groups”. Moreover, the addition of the generic Top-Level Domain (“gTLD”) “.com” fails to offer any distinction from the mark. - The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not associated or affiliated with the Complainant, and the Respondent has not been authorized by the Complainant to use its MEDTRONIC trademark. Furthermore, as no content is connected with the disputed domain name, there is no evidence that it is being used for any legitimate purpose. - The disputed domain name was registered and is being used in bad faith. Due to the extensive use of the MEDTRONIC mark throughout the world, there is no plausible good faith explanation for its full inclusion in the disputed domain name owned by the Respondent who is unconnected with the Complainant. The lack of content associated with the disputed domain name indicates passive holding, but that does not shield the Respondent from a finding of bad faith registration and use of the disputed domain name as stated in many prior UDRP decisions. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Per paragraphs 4(a)(i) – (iii) of the Policy, the Panel may find for the Complainant and order a transfer of the disputed domain name if the Complainant shows that: - the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and The Complainant has provided the Panel with conclusive evidence that the Complainant owns a valid USPTO trademark for the mark MEDTRONIC, and thus the Panel determines that the Complainant has satisfied the trademark ownership element required under Policy paragraph 4(a)(i). See, The Schneider Group, Inc. v. Jack Mann,WIPO Case No. D2010-0448 (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”); and The SANS Institute v. WhoisGuard,WIPO Case No. D2007-0426 (“Complainant has established rights in the SANS mark through registration with the USPTO.”). The Panel observes that the disputed domain name contains in full the MEDTRONIC trademark. The only additions are the dictionary term “group” and the gTLD “.com”. Previous UDRP panels have held consistently that the addition of a dictionary term to a well-established trademark fails to result in a consequential distinction from that mark. Lastly, per a broad consensus of UDRP opinions, the inclusion of a gTLD is not relevant in assessing confusing similarity between a disputed domain name and a trademark, see section 1.11 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Taking all these circumstances into consideration, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark. See, Benefitfocus.com, Inc. v. Oneandone Private Registration, 1&1 Internet Inc. / Maris Walter,WIPO Case No. D2020-0516 (finding As reasoned above, the Panel finds that the Complainant has established that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has set forth a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, noting that the disputed domain name is confusingly similar to the Complainant’s validly registered trademark. The Complainant contends further that the Respondent has been granted no authorization to use its mark in any manner. The burden of production is thus placed upon the Respondent to come forward with evidence apt to rebut that prima facie case. See, section 2.1 WIPO Overview 3.0. Having not filed a Response or submitted any evidence, the Respondent is reliant upon the Panel’s assessment of the overall record as to whether there are any circumstances that might serve as a rebuttal to the Complainant’s prima facie case. In making its assessment, the Panel will accept as true all reasonable contentions presented in the Complaint. See, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org,WIPO Case No. D2015-1149 (“The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true.”). The Panel accepts the Complainant’s contention that currently no use is being made of the disputed domain name. As such, the Panel believes that there is no reason to believe that the disputed domain name is being used for “a bona fide offering of goods or services”. Since the Respondent has furnished no evidence that there are any demonstrable preparations to do so, the Panel concludes that Policy paragraph 4(c)(i), which the Respondent might have cited in its favor, fails to apply. See, Sanofi v. Kelly, cti,WIPO Case No. D2016-1615 (“[...] the Respondent is not making a bona fide offering of goods and services once the disputed domain name resolves to an inactive page.”); and Leo Vegas Gaming Ltd. v. Claes Bergström,WIPO Case No. D2015-1135. As there is no reason to believe that the Respondent is commonly known by the disputed domain name the Panel concludes that Policy paragraph 4(c)(ii) is not relevant in checking for a rationale that the Respondent may have rights or legitimate interests in the disputed domain name. As noted above, the disputed domain name is not in use, and therefore the Respondent cannot claim to be making “a legitimate noncommercial or fair use” of that name. Thus, the criteria listed in Policy paragraph 4(c)(iii) also cannot be cited to support an argument that the Respondent has rights or legitimate interests in the disputed domain name. The Panel thus finds no reason to deny the Complainant’s prima facie case due to Policy paragraph 4(c) or for any other reason apparent in the record. Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith UDRP paragraph 4(b) lists four non-exclusive circumstances any one of which may prove bad faith registration and use of a disputed domain name. Due to the Respondent’s passive holding of the disputed domain name, none of those circumstances correspond neatly to this case. However, many prior UDRP panels have found that passive holding of a disputed domain name can constitute bad faith registration and use of a disputed domain name under the UDRP. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present case, the Panel further notes that the Complainant’s MEDTRONIC trademark is long held and in substantial use worldwide. See, Medtronic, Inc. v. Chris Olu,WIPO Case No. D2019-0069 ("Through decades-long global use the Complainant’s highly distinctive MEDTRONIC trademark has achieved massive recognition."). As a result, it is clear to the Panel that the Respondent had constructive, and likely actual, knowledge of the mark when registering the disputed domain name. In addition, the Panel notes the failure of the Respondent to submit a response and the implausibility of any good faith use to which the disputed domain name may be put. Given these collective circumstances, the Panel believes that a finding of bad faith registration and use of the disputed domain name is appropriate. See, Medtronic, Inc. v. David Janke,WIPO Case No. D2019-0665. Furthermore, in this case, the Panel also notes that the Complainant has provided evidence that the term “group” applies directly to its operations as it is divided into groups. This also supports the Respondent’s bad faith registration and use as the Respondent has registered the disputed domain name containing both the Complainant’s trademark and an additional term corresponding to the Complainant’s area of activity. See, section 3.2.1 WIPO Overview 3.0. Therefore, the Panel finds that the Complainant has established that the disputed domain name was registered and is being used in 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, Dennis A. Foster
- the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: July 13, 2020
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