The Complainant is Medtronic, Inc., United States of America, represented by Snell & Wilmer, LLP, United States of America.
The Respondent is Registration Private, Domains by Proxy, LLC, United States of America / Name Redacted.1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2021. On July 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2021, 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 the Complainant on July 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On August 5, 2021, the Complainant sent an email communication to the Center requesting an extension to submit an amended Complaint. The Center granted the Complainant extension. The Complainant filed an amended Complaint on August 17, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on August 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on September 29, 2021. 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 BackgroundThe Complainant is an international medical device and technology company. The Complainant sells MEDTRONIC branded products in 150 countries. The Complainant owns over 75 manufacturing facilities and employs tens of thousands of persons around the world.
The Complainant has used the mark MEDTRONIC (the “Mark”) since 1949 in connection with offering a wide variety of goods and services. The Complainant has registered the Mark, and dozens of formatives thereof, for a variety of classification categories with the United States Patent and Trademark Office, including but not limited to:
- United States Patent and Trademark Registration No. 1,038,755 on May 4, 1976
- United States Patent and Trademark Registration No. 4,870,845 on December 15, 2015
- United States Patent and Trademark Registration No. 4,328,409 on April 30, 2013
The Complainant has utilized the Internet domain
The Respondent registered the disputed domain name on May 26, 2021.
5. Parties’ Contentions A. ComplainantThe Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed by joining the term “careers” as a suffix to the Complainant’s Mark, separated from the Mark by a hyphen. The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant asserts that the Respondent registered and used the disputed domain name in bad faith to phish personally identifying information from unsuspecting Internet users seeking employment with the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed 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 disputed domain name; and,
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed entirely of the Complainant’s Mark with the addition of the term “careers” separated from the Mark by a hyphen. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the Mark is a clearly recognizable within the disputed domain name notwithstanding the addition of the term. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7; Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard, Maryellen Dillard,WIPO Case No. D2021-0609; see also WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); Regeneron Pharmaceuticals, Inc. v. Registration Private, Domains by Proxy, LLC / Regeneron Careers,WIPO Case No. D2017-0013.
The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden,WIPO Case No. D2016-1759; International Business Machines Corporation v. Sledge, Inc. / Frank Sledge,WIPO Case No. D2014-0581.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. The Respondent is not affiliated with the Complainant in any way and does not have any business relationship with the Complainant. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name.
The Complainant has thus established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name which prominently incorporates the Mark in its entirety carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. Lastly, the use of the disputed domain name in connection with a fraudulent phishing scheme is further evidence that the Respondent does not have any legitimate rights or interests in the disputed domain name. Groupe Lactalis v. John Kleedofer / Privacy Protection Services INC d/b/a PrivacyProtect.org,WIPO Case No. D2014-0133.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds the disputed domain name was registered and is being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. The Mark is not a common or descriptive term. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s Mark when registering the disputed domain name. Even if one were to accept the unbelievable proposition that the Respondent was unaware of the Mark, willful blindness is no excuse and does not avoid a finding of bad faith registration and use. (Instagram LLC v. Contact Privacy Inc. / Sercan Lider,WIPO Case No. D2019-0419).
Noting the composition of the disputed domain name, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH,WIPO Case No. D2021-0109; Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl,WIPO Case No. D2016-1335.
It furthers appears on the evidence presented that the Respondent is using the disputed domain name as part of a phishing scheme to obtain personally identifying information from Internet users who believe they are seeking employment with the Complainant. The Annexes to the Complaint suggest that the disputed domain name has been utilized in connection with postings on Internet job boards and in emails. The use of a disputed domain name to impersonate a complainant to deceive Internet users is paradigmatic bad faith registration and use. Teva Pharmaceutical Industries Limited v. Registration Private, Domains By Proxy, LCC / Name Redacted,WIPO Case No. D2021-0820.
The current passive holding of the disputed domain name does not absolve the Respondent of bad faith registration and use, and, in fact, under the circumstances of this case is further evidence of bad faith registration and use. See WIPO Overview 3.0, section 3.3. Medtronic, Inv. V. Roohi B Rasheed, Roohi B Rasheed,WIPO Case No. D2020-1161.
The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
William F. Hamilton
Sole Panelist
Date: October 11, 2021
1 The Respondent appears to have used the name of an employee of the Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.