WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Medtronic, Inc. v. gotdomains4sale.com
Case No. D2001-1033
1. The Parties
Complainant is Medtronic, Inc. ("Medtronic"), 7000 Central Avenue N.E., Minneapolis, MN 55433, U.S.A.
Respondent is gotdomains4sale.com, P.O. Box 14225, Scottsdale, AZ 85267-4225, U.S.A. Respondentís administrative and billing contact is Chris Nerstheimer.
2. Domain Name and Registrar
The domain name in issue is: <medtronixs.com> (the "Domain Name").
The registrar is DomainPeople, Inc. (the "Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received Medtronicís Complaint by e-mail on August 15, 2001, and in hard copy on August 17, 2001. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Complainant made the required payment to the Center.
On August 20, 2001, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On August 27, 2001, the Registrar transmitted via e-mail to the Center its response, confirming that (1) a copy of the Complaint was sent to it by Complainant as required by Supplemental Rule 4(b); (2) the Domain Name was registered through it; (3) Respondent is the current registrant of the Domain Name; (4) the Organization and Administrative Contact for the Domain Name is as stated above; (5) the Policy applies to the Domain Name; and (6) the Domain Name is active.
On August 28, 2001, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via e-mail with copy by courier (FedEx) to Respondent, copying the Complainant, ICANN, and the Registrar. The Center advised that Respondentís Response was due by September 17, 2001, pointed out that the Response should be in accordance with the Rules and the Supplemental Rules, and described the consequences of a default if the Response was not sent by the due date. The Center also noted that the Complainant had elected for a single panelist to decide this matter.
The requirements of Rule 2(a) having been satisfied, the formal date of the commencement of this administrative proceeding, pursuant to Rule 4(c), is August 28, 2001.
On September 18, 2001, Respondent having provided no response, the Center sent Respondent a Notification of Default.
On September 25, 2001, Respondent sent the Center an e-mail stating that he had not renewed the Domain Name when it "came up for renewal" and that he had "no interest in keeping this Domain Name." The same day, the Center forwarded that information to Complainant and asked Complainant how it wished to proceed. On September 27, 2001, Complainant responded that it would investigate the matter and respond to the Centerís inquiry thereafter. On October 2, 2001, Complainant advised the Center of the results of its investigation, namely that, notwithstanding Respondentís e-mailed statement, it appeared that the Domain Name had in fact been renewed, although not necessarily by Respondent. It is possible, for example, that the Registrar or some third party renewed the Domain Name, either automatically, or in the erroneous belief that Respondent did wish to maintain the Domain Name, or because of the pendency of these proceedings. Accordingly, Complainant requested that these proceedings continue.
On October 16, 2001, the Center advised the parties, in accordance with Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist in this case. Pursuant to Rule 15(b), the Center further informed the parties that, absent exceptional circumstances, the Panel would forward a decision to the Center by October 30, 2001.
4. Factual Background; Partiesí Contentions
When parties to a proceeding under the Policy reach a settlement (which could include an agreement to transfer a domain name), they are permitted to put their agreement into effect under Paragraph 17(a) of the Rules, thereby mooting and terminating the arbitration proceeding. In this case, however, that has not occurred. Perhaps it was not entirely clear to Complainant that a transfer was within the control of, or would be effectuated by, Respondent, who asserts that he did not re-register the Domain Name, despite the fact that the Registrarís records indicate that the Domain Name was renewed in Respondentís name. Complainant prudently chose to proceed with this arbitration proceeding to ensure that a clear and enforceable resolution would be reached.
a. The Trademark
The Complaint is based on Complainantís ownership of rights to the mark MEDTRONIC, which Complainant has used in connection with numerous products and services, principally in the medical device field, for over half a century.
Medtronic owns numerous U.S. and foreign trademark registrations and pending applications for the MEDTRONIC mark, either alone, in combination with other terms or designs, or in stylized form. Among these, Medtronic holds fourteen U.S. registrations featuring the MEDTRONIC mark, as well as nineteen pending applications. Many of Medtronicís U.S. registrations have achieved incontestable status. Medtronic has provided evidence, in the form of copies of trademark registrations, of these facts.
b. Jurisdictional Basis
The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide the dispute.
In Paragraph 10 of its Complaint, Complainant avers that each of the three requirements of Paragraph 4(a) of the Policy have been satisfied.
c. The Complaint
Complainant asserts as follows:
- It has superior trademark rights to the MEDTRONIC mark.
- The Domain Name, <medtronixs.com>, is confusingly similar to the MEDTRONIC mark in that it is a misspelling of that mark, with the addition of the common plural signifier "s."
- Respondent has no rights or legitimate claim to the Domain Name, does not use it in connection with any active website or for any other known purpose, is not commonly known by the Domain Name, and is making no non-commercial or fair use thereof.
- Respondentís purpose in registering the Domain Name was to sell it for a sum in excess of registration costs, as evidenced in part by the very name used by Respondent ("gotdomains4sale.com").
d. The Response
As noted above, the Respondent is in default pursuant to Rule 5(e), Rule 14 and Supplemental Rule 7(c) because no Response was received from Respondent by the deadline.
Respondent, moreover, did communicate thereafter with the Center, expressly disclaiming any interest in continued ownership of the Domain Name.
The Panel may make appropriate inferences, in its discretion, from a default. In this case, the choice is easy, since even Respondent appears to concede that he has no continuing interest in retaining the Domain Name. As provided by the Policy and Rules, however, the Panel will also address the merits of Complainantís case.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Name, each of the following:
(i) The Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondentís rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).
c. Complainantís Proof
(i) Domain Name Identical or Confusingly Similar to Trademark
Complainant has amply proven that it is the owner of strong, longstanding trademark rights in the mark MEDTRONIC, going back many decades.
It has further proven that the Domain Name is confusingly similar to its name and trademark MEDTRONIC, being in fact a misspelling of the plural form of that mark. The Panel notes that adding or deleting the plural "s" from a corporate name is a common mistake consumers make when referring to companies and/or their marks. Here, the Domain Name would be pronounced identically to "medtronics," the plural form of Complainantís mark. Misspelling that form by the addition of the letter "x" (which does not alter the pronunciation of the word) fails to eliminate the likelihood of resulting confusion. Accordingly ó and particularly in light of the proven strength of Complainantís trademark ó confusing similarity is established.
(ii) Whether Respondent Has Rights or Legitimate Interest in the Domain Name
Respondent does not claim any rights or legitimate interest in the Domain Name, and none appears in the record. Indeed, Respondent admits that it has no such interest. Respondent does not appear to have made any use of the Domain Name or to be known by it. Accordingly, Complainant has met the requirements of Paragraph 4(c) of the Policy, in that Respondent has no rights in the Domain Name.
(iii) Registration and Use in Bad Faith
Complainantís third hurdle is to establish that Respondent has registered and used the Domain Name in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The first is acquisition of the domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark Ö or to a competitor of that complainant, for valuable consideration in excess of [registrantís] documented out-of-pocket costs directly related to the domain name."
In this case, the Panel finds evidence of this type of bad faith. First, Respondentís name, gotdomains4sale.com, indicates its interest in selling the Domain Name for commercial gain. As previous panels have held, the fact that a Respondentís name or WHOIS information contains what can be construed as an offer to sell the domain name is strong evidence of bad faith. See Parfums Christian Dior S.A. v. QTR Corp. (WIPO Case No. D2000-0023) (finding bad faith where WHOIS information included the phrase "this domain name is for sale"); Microsoft Corp. v. Amit Mehrotra (WIPO Case No. D2000-0053) (finding that the WHOIS legend "if you want this name please contact me" was uncontested evidence of bad faith). Numerous other panels have drawn the same conclusion from similar facts. See The J. Paul Getty Trust v. Domain 4 Sale & Co. (NAF Case No. FA0007000095262); Euromarket Designs, Inc. v. Domain For Sale VMI (WIPO Case No. D2000-1195); Gruner + Jahr Printing & Publishing Co. v. Global Media Consulting (WIPO Case No. D2000-1395); Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain (WIPO Case No. D2000-1240); The Board of Governors of the University of Alberta v. Michael Katz (WIPO Case No. D2000-0378).
The strength of Complainantís trademark, and the fact that it has long been federally registered, further supports the conclusion that Respondentís registration was made with knowledge of Complainantís mark, which further supports a finding of bad faith.
Finally, some panels have found that "passive holding" of a domain name may be evidence of bad faith, particularly when other factors tending to show bad faith are present. See, e.g., Telstra Corp. Ltd. v. Nuclear Marshmallows (WIPO Case No. D2000-0003). Here, Respondent appears to have made no use of the Domain Name, a fact it does not dispute.
In sum, the Panel concludes that Complainant has met its burden to show that Respondent has registered and used the Domain Name in bad faith under Paragraph 4(b) of the Policy.
In light of the findings and analysis by the Panel, the Panel decides that Complainant has met its burden of proving: (1) the Domain Name is confusingly similar to Complainantís trademark; (2) Respondent has no rights and no legitimate interest in respect of the Domain Name; and (3) the Domain Name has been registered and is being used by Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that the Domain Name be transferred to Complainant.
Michael A. Albert
Dated: October 29, 2001