Complainant is Medtronic Trading NL B.V. of Heerlen, the Netherlands, represented by CMS Derks Star Busmann, the Netherlands.
Respondent is Malkhaz Kapanadze of Tbilisi, Georgia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through Gransy s.r.o. d/b/a/ . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2018. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On October 1, 2018, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 8, 2018, providing the registrant and contact information disclosed by SIDN, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on October 9, 2018. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 12, 2018. In accordance with the Regulations, article 7.1, the due date for Response was November 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 6, 2018.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on December 4, 2018. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Complainant is associated with the Medtronic group of companies and operates as a subsidiary of Medtronic plc. Medtronic plc, previously Medtronic, Inc., moved its legal registration from the United States of America (“USA”) to Ireland by means of a corporate tax inversion executed in 2015, and as a result converted to an Irish public limited company. Medtronic and its affiliated companies are among the largest in the world in medical technology, services and solutions. Medtronic operates in more than 160 countries. In the Netherlands, Complainant employs over 2,000 employees in four facilities, including the European Operations Center for Distribution and Shared Services in Heerlen (Complainant’s business), the Bakken Research Center in Maastricht, the Cardiac Surgery manufacturing facility in Kerkrade, and the Dutch sales office in Eindhoven.
Complainant has produced evidence that its subsidiary Medtronic plc is the owner of trademark registrations for:
- the word mark MEDTRONIC, filed in the Benelux on March 30, 1971, with registration number 0020275, for goods in class 10;
- the word mark MEDTRONIC, registered in the European Union (“EU”) on May 11, 1998, with number 000156406, for goods in classes 5, 9, and 10;
- the word mark MEDTRONIC, registered in the EU on February 22, 2006, with number 004326658, for goods and services in classes 5, 9, 10, 16, 37, 41, 42 and 44; and
- the International device mark MEDTRONIC, registered on February 15, 2013, with registration number 1154475, designating inter alia the EU, for services in class 41;
(together: the “Trademark”). The evidence submitted by Complainant establishes that the Trademark is well known and has acquired distinctiveness.
According to the evidence produced by Complainant, Medtronic Inc. further holds the domain name .
Complainant has submitted evidence that it has established trade name rights to the trade name Medtronic Trading NL and Medtronic in the Netherlands.
The Domain Name was registered on May 3, 2016.
The Panel accessed the Domain Name on December 5, 2018, which resolved to a pay-per-click (“PPC”) parking page advertising scheme showing hyperlinks referencing “Medtronics Insulin Pump” and “Medtronic Diabetes”, as also evidenced by Complainant. 5. Parties’ Contentions A. Complainant
Complainant bases the Complaint on its rights in the Trademark and the trade name Medtronic.
Complainant notes that the Domain Name contains the name MEDTRONIC, which is identical to the Trademark and to the trade name of Complainant. As a result, the Trademark is incorporated in its entirety in the Domain Name.
Complainant further contends that the term MEDTRONIC as such carries no meaning in English or Dutch and that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the similarity between the Trademark and the Domain Name.
Complainant asserts that the Domain Name is confusingly similar to the well-known Trademark and trade name of Complainant. The mere addition of the character “s” as a suffix to the Domain Name is insufficient to differentiate the Domain Name from the Trademark and trade name of Complainant. The incorporation of the Trademark and trade name of Complainant in its entirety is, in the opinion of Complainant, sufficient to establish confusing similarity between the Domain Name and the Trademark and trade name of Complainant.
Complainant argues that Respondent, who is unknown to Complainant, has no rights or legitimate interest in the Domain Name since Respondent is not sponsored by or affiliated in any way with Complainant nor has Respondent been given any permission to use the Trademarks in any manner or is Respondent commonly known by the Domain Name.
Complainant submits that Respondent is using the Domain name in bad faith, more specific to redirect Internet users to a website that contains various hyperlinks to a variety of third-party websites that are unrelated to Complainant, the Trademark or Complainant’s goods and/or services. Complainant submits that Respondent has failed to demonstrate legitimate use of the Domain Name or preparations therefor, which evidences a lack of rights or legitimate interests in the Domain Name. According to Complainant, the use of the Domain Name does not qualify as a bona fide offering of goods or services.
Complainant asserts that the Trademark is well known and that it is thus highly likely that Respondent targeted the Trademark when it registered the Domain Name. Complainant argues that the Domain Name is so obviously connected with the well-known Trademark and products that its very use by Respondent with no connection to the products suggests opportunistic bad faith. According to Complainant, Respondent’s registration of the Domain Name is an act of typosquatting, noting also that Respondent has registered various other domain names containing misspelled well-known trademarks.
Complainant requests the transfer of the Domain Name. B. Respondent
Respondent has not replied to Complainant’s contentions. 6. Discussion and Findings
As Respondent has not filed a Response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact.
Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the Domain Name must meet three cumulative conditions:
a) the Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b) Respondent has no rights to or legitimate interests in the Domain Name; and
c) the Domain Name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows. A. Identical or Confusingly Similar
Complainant has based the Complaint on the Trademark. Complainant has submitted copies of the registrations of the Trademark demonstrating that its parent company is the holder of the Trademark. Although Complainant itself is not the owner of any trademark registrations for the mark MEDTRONIC, Complainant has established that its corporate parent, Medtronic plc, owns the Trademark with validity in the Netherlands, on which the Complaint is based.
This case raises the question whether a wholly-owned subsidiary has a standing as a complainant under the Regulations when the parent holds the trademark(s). The precedent that exists indicates that it may, either under a theory of implied license (see, DigiPoll Ltd. v. Raj Kumar,WIPO Case No. D2004-0939 and BSH Home Appliances Corporation v. Michael Stanley / Michael Sipo,WIPO Case No. D2014-1433) or a more general notion based on corporate control (see, Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796 and Miele, Inc. v. Absolute Air Cleaners and Purifiers,WIPO Case No. D2000-0756. In this context the Panel notes that as the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that cases decided under both the Regulations and the UDRP are relevant to .nl proceedings (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
This Panel follows that approach and thus recognizes Complainant the mark owner’s wholly-owned subsidiary, as Complainant in this proceeding.
The Panel notes that it is established .nl case law that the ccTLD “.nl” may be disregarded in assessing confusing similarity between the relevant trademark on the one hand, and the disputed domain name on the other hand (see, Caterpillar Inc. v. H. van Zuylen Materieel,WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The fact that the Trademark and trade name are incorporated in their entirety in the Domain Name, is sufficient to establish that the Domain Name is identical or confusingly similar to the Trademark and trade name of Complainant. The addition of the final element consisting of the single character “s”, which most Internet users would read as a plural or possessive form of the Trademark, does not prevent confusing similarity. The Domain Name is textually, visually and phonetically nearly identical to the Trademark.
Moreover, there is a consensus view among panels that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at paragraph 1.9).
In light of the above, the Panel finds that the Domain Name is confusingly similar to the Trademark for purposes of the Regulations. Therefore, the first requirement of article 2.1(a) under I of the Regulations is met. B. Rights or Legitimate Interests
Article 2.1(b) of the Regulations requires Complainants to demonstrate that Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if Complainant makes out a prima facie case that Respondent has no such rights or legitimate interests and if Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
Complainant alleges that Respondent lacks rights to or legitimate interests in the Domain Name for the reasons set out in section 5.A above. The Panel finds that Complainant has fulfilled its obligation to establish prima facie that Respondent has no rights to or legitimate interests in the Domain Name. As a result of its failure to submit a Response, Respondent has not refuted Complainant’s arguments or otherwise shown rights to or legitimate interests in the Domain Name. Furthermore, no commercial relationship appears to exist between Complainant and Respondent. The Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, or that Respondent in any possible other way has rights to or legitimate interests in the Domain Name.
The Panel notes that the Domain Name is currently linked to a website containing PPC links, some relating to “insulin pump”, “diabetes”, “Medtronic”, and “Medtronics”. Respondent is not authorized to use the Trademark in any way, and using a domain name incorporating the Trademark to host sponsored links associated with Complainant’s area of business cannot constitute a bona fide offering of goods or services.
Consequently, the Panel is satisfied that Respondent has no rights or legitimate interests in Domain Name and concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith
When Respondent registered the Domain Name (in 2016) the Trademark had already been registered and widely used in connection to Complainant’s activities. The Domain Name encompasses the Trademark, with the addition of the single character “s”. Considering the apparent well-known status of the Trademark, the Panel concludes that it is very likely that Respondent was aware of the Trademark and that Respondent’s adoption of the term “medtronics” was not a mere coincidence.
Previous panels have found that the incorporation of a well-known trademark in a domain name without plausible explanation is in itself an indication of bad faith (see, Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273.
By using the Domain Name to host a PPC parking page that offers for sale related products, Respondent creates a likelihood of confusion with Complainant’s trademark and likely obtains revenue from this practice. In all the circumstances the Panel concludes that Respondent has targeted Complainant to obtain PPC revenue. This constitutes bad faith under the Regulations, see, Coöperatieve Raiffeisen-Boerenleenbank B.A. (Rabobank Nederland) v. Nguyet Dang, ND Dang,WIPO Case No. DNL2010-0074; and Scotch & Soda B.V. v. D-Max Ltd,WIPO Case No. DNL2011-0058.
The Panel also notes that Respondent has been found to have registered and/or used other domain names in bad faith in several other cases, which suggests a pattern of such conduct on his part (see: Digital Revolution BV v. Malkhaz Kapanadze, WIPO Case No. DNL2018-0051; Magazijn “De Bijenkorf” B.V. v. Malkhaz Kapanadze,WIPO Case No. DNL2017-0071 Raiffeisen Schweiz Genossenschaft v. Malkhaz Kapanadze,WIPO Case No. DCH2016-0017; and Lidl Stiftung & Co. KG v. Malkhaz Kapanadze,WIPO Case No. DCH2016-0024).
Taking into account the foregoing, the Panel finds that the Domain Name is being used in bad faith. The requirement of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations has thus been met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to Complainant.
Remco M.R. van Leeuwen
Panelist
Date: December 17, 2018
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