The Complainant is Medtronic, Inc., United States of America (“United States” or “US”), represented by Snell & Wilmer, LLP, United States.
The Respondent is Cao Wei (曹伟), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 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. On July 28, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 2, 2020, the Complainant requested that English be the language of the proceeding. The Respondent did not comment. 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 August 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2020. The Center appointed Rachel Tan as the sole panelist in this matter on September 10, 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 medical device and technology company, which has offered a variety of medical and health-related goods and services under its MEDTRONIC marks since 1949. It owns over 75 manufacturing sites worldwide and has offices in the United States and other countries, employing tens of thousands of persons around the world. The Complainant has advertised and promoted MEDTRONIC-branded goods and services over the last 70 years. It reported earnings of tens of billions of US dollars in annual revenues from sales of MEDTRONIC‑branded goods and services in over 150 countries. It has used the domain The Complainant owns a range of trade mark registrations for its MEDTRONIC mark worldwide, including registrations in the United States and China that solely incorporate the term “medtronic”, namely, United States Registration No.1,038,755 registered on May 4, 1976, in class 10; United States Registration No. 4,870,845 registered on December 15, 2015, in class 10; United States Registration No. 4,328,409 registered on April 30, 2013, in class 10; Chinese Registration No. 287996 registered on May 28, 1987, in class 10; Chinese Registration No. 287997 registered on May 28, 1987, in class 10; Chinese Registration No. 287998 registered on May 28, 1987, in class 10; Chinese Registration No. 27568335 registered on November 14, 2018, in class 10; and, Chinese Registration No. 1511188 registered on January 21, 2001, in class 10. The Respondent is Cao Wei, China. The disputed domain name was registered on February 4, 2020. At the date of this decision, the disputed domain name resolved to a webpage which is offering for sale, the disputed domain name at the cost of USD 3,699. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to its MEDTRONIC marks. The disputed domain name incorporates the Complainant’s MEDTRONIC mark in its entirety. The generic Top-Level Domain (“gTLD”) “.tech” does not reduce the virtual identity between the Complainant’s MEDTRONIC mark and the disputed domain name. The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by MEDTRONIC, or any other similar name. There is no evidence that the Respondent has used or is preparing to use the disputed domain name in connection with the bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name. The Complainant has not authorized the Respondent to register or use the Complainant’s MEDTRONIC mark, and it is not affiliated, connected, or associated with the Respondent. The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. The disputed domain name incorporates the Complainant’s MEDTRONIC mark in full and is identical to the Complainant’s MEDTRONIC mark. It is also not plausible to conceive of a circumstance in which the Respondent would have been unaware of the Complainant’s MEDTRONIC mark at the time when the Respondent registered the disputed domain name. The disputed domain name resolves to a website with the headline “Buy Medtronic.tech for USD 3,699.” and thus is using the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceeding Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions. In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding: (a) English is the most widely used in international relations and is one of the working languages of the Center; (b) The disputed domain name is formed by words in ASCII characters and it is confusingly similar to the trade marks of the Complainant which are also comprised of ASCII characters; (c) The Complainant is based in the United States and primarily conducts business in English; (d) The webpage at the disputed domain name is in English, and lists the price of the disputed domain name in US dollars. The Respondent is likely able to understand English, meaning that the use of English in this proceeding likely would not prejudice the Complainant; (e) It would be cumbersome, burdensome, and prejudicial for the Complainant, a United States corporation, to translate filings in this case into Chinese, particularly given the current circumstances of the Covid‐19 pandemic; and (f) WIPO has granted numerous requests for the language of the proceeding to be English under similar circumstances in cases involving the same registrar. It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below. (a) The Complainant is a company based in the United States. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses; (b) The Respondent’s choice of English words for the disputed domain names indicates some familiarity with the English language; (c) The webpage at the disputed domain name is in English, and lists the price of the disputed domain name in US dollars. The Respondent is hence likely able to understand English. The Panel also notes that there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and (d) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. 6.2 Substantive Issues A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the MEDTRONIC trade mark. The Panel notes the disputed domain name is comprised of the MEDTRONIC trade mark in its entirety. The positioning of the MEDTRONIC trade mark at the beginning of the disputed domain name makes it instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, it is permissible for the Panel to disregard the Top-Level Domain (“TLD”) in the disputed domain name, i.e. “.tech”. It is accepted by UDRP panels that the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”) and the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment to the first element. See sections 1.11.1 and 1.11.2 of the WIPO Overview 3.0. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In circumstances where the Complainant possesses exclusive rights to the MEDTRONIC trade mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “medtronic”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s MEDTRONIC trade mark or register the disputed domain name. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Complainant’s MEDTRONIC trade mark has been widely registered around the world. The disputed domain name was registered well after the registration of the Complainant’s MEDTRONIC trade mark. Through extensive use and advertising, the Complainant’s MEDTRONIC trade mark is known throughout the United States, as well as China where the Respondent is apparently located. Moreover, the term “medtronic” is not merely a name. Search results using the key word “medtronic” on the Baidu and Google search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the MEDTRONIC trade mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s MEDTRONIC trade mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874. Section 1.11.2 of the WIPO Overview 3.0 states that “in cases where the TLD corresponds to the complainant’s area of trade so as to signal an abusive intent to confuse Internet users, panels have found this relevant to assessment under the third element”. The Panel finds it likely that the choice of the TLD, i.e. “.tech” by the Respondent was meant to reinforce the targeting of the Complainant’s MEDTRONIC trade mark because the Complainant’s is a medical device and technology company. See ageas SA/NV v. Tri Nguy\u1ec5n,WIPO Case No. D2019-2946. Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name completely incorporates the MEDTRONIC trade mark, meaning that bad faith registration of the disputed domain name can be presumed. In addition, the Panel notes that the disputed domain name resolves to a website where the disputed domain name is being offered for sale for USD 3,699, which is in excess of the normal costs for registering and maintaining a domain name. This is evidence of bad faith use of the disputed domain name, as provided in paragraph 4(b)(i) of the Policy. See Omega Pharma Innovation & Development NV v. Kyoung S Park,WIPO Case No. D2020-0849. The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, selling of the disputed domain name for valuable consideration in excess of the Respondent’s out‑of-pocket costs directly related to the disputed domain name, and by continuing to hold the disputed domain name, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 Rachel Tan
Sole Panelist
Date: September 24, 2020
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