WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Medtronic, Inc. v. JH Kang

Case No. DCO2020-0040

1. The Parties

Complainant is Medtronic, Inc., United States of America (“United States”), represented by Snell & Wilmer, LLP, United States.

Respondent is JH Kang, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <medtronics.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed 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 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 Complainant on August 11, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 11, 2020.

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 Respondent of the Complaint, and the proceedings commenced on August 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 4, 2020.

The Center appointed David Perkins as the sole panelist in this matter on September 18, 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

4.A. Complainant

4.A.1 Complainant is one of the largest medical device and technology companies worldwide and has offered a wide variety of medical and health related goods and services under the MEDTRONIC trade mark since 1949.

4.A.2 Complainant sells its MEDTRONIC branded goods and services in over 150 countries worldwide and generates tens of billions of dollars annually from such sales. Complainant has over 75 manufacturing sites worldwide employing tens of thousands of people.

4.A.3 The Amended Complaint states that over the past 70 years Complainant has invested hundreds of millions of dollars advertising and promoting its MEDTRONIC branded goods and services.

4.A.4 Complainant states that it has trade mark registrations for the MEDTRONIC mark in over 100 jurisdictions worldwide and exhibits certificates for the following registrations in the United States and the Republic of Korea, the latter being Respondent’s country of residence.

* First used in commerce April 30, 1999.

** First used in commerce January 1, 2005.

4.A.5 Complainant is the owner of the <medtronic.com> domain name which was registered on June 7, 1990 and which resolves to its website, a printout of which is annexed to the Amended Complaint.

4.A.6 Complainant is also the owner of the <medtronics.com> domain name, which was registered on October 24, 1998 and redirects to the <medtronic.com> website.

4.B Respondent

4.B.1 In the absence of a Response, what is known of Respondent is contained in the Amended Complaint and the related Annexes.

4.B.2 The disputed domain name was registered on February 26, 2020.

4.B.3 The disputed domain name resolves to a website with links to, inter alia, “Medtronic Diabetes” and “Medtronic Insulin Pump”. The disputed domain name is offered for sale, the printout stating “Buy this domain.”

5. Parties’ Contentions

5.A Complainant

Identical or Confusingly Similar

5.A.1 Complainant asserts rights to the MEDTRONIC trade mark, examples of which are summarised in paragraph 4.A.4 above.

5.A.2 Complainant points to the fact that the disputed domain name is identical to its well-known MEDTRONIC trade mark but for the addition of the letter “s”. Citing cases under the Policy, Complainant says that where a disputed domain name incorporates a complainant’s trade mark in its entirety, as is the case with the disputed domain name, such constitutes confusing similarity.

5.A.3 Citing cases under the Policy, Complainant further asserts that the minor misspelling of the disputed domain name constitutes typosquatting, which is an indication of bad faith under the Policy addressed below in relation to its case under paragraph 4(a)(iii) of the Policy. Typosquatting is a form of cybersquatting that targets Internet users incorrectly inputting a website address into a browser.

Rights or Legitimate Interests

5.A.4 Complainant’s case is that Respondent cannot demonstrate any of the circumstances evidencing rights or legitimate interests under paragraph 4(c) of the Policy.

5.A.5 First, Complainant has neither licensed nor otherwise authorised use by Respondent of its MEDTRONIC trade mark.

5.A.6 Second, Complainant says there is no evidence of use or demonstrable preparations to use by Respondent of the disputed domain name in connection with a bona fide offering of goods or services prior to being put on notice of this dispute, or at all: paragraph 4(c)(i) of the Policy.

5.A.7 Third, the use being made of the disputed domain name noted in paragraph 4.B.3 above, which involves pay-per-click links using the MEDTRONIC name and mark for goods of the same type as offered by Complainant – for example, insulin pumps and oxygen tanks – is neither a legitimate noncommercial nor fair use of the disputed domain name. Rather it is intended to misleadingly divert customers for commercial gain by creating a false impression of association with Complainant: paragraph 4(c)(iii) of the Policy. In this respect, Complainant cites decisions under the Policy where using a disputed domain name incorporating a complainant’s trade mark to host sponsored links associated with complainant’s area of business cannot be a bona fide offering of goods or services such as to amount to establishing rights or legitimate interests in the disputed domain name.

5.A.8 Fourth, where a disputed domain name is being used in bad faith, as Complainant asserts that it is in this case, Respondent cannot demonstrates rights to or legitimate interests in that domain name.

Registered and Used in Bad Faith

5.A.9 Complainant’s case is that, given the widespread and well-known status of the MEDTRONIC trade mark, registration of the disputed domain name incorporating that mark in its entirety can hardly be a coincidence and invites a holding of registration and use in bad faith. Quoting from the UDRP decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Complainant asserts that “[I]t is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use” the disputed domain name.

5.A.10 Given the confusing similarity of the disputed domain name to the MEDTRONIC mark, citing cases under the UDRP, Complainant further asserts that registration and use of the disputed domain name constitutes typosquatting and, as such, is obvious evidence of bad faith registration: see, paragraph 5.A.3 above. The addition of plural “s” is, Complainant says, a common mistake made by Internet users. Hence, Complainant owns the domain name <medtronics.com> – see, paragraph 4.A.6 above – which redirects to its website at <medtronic.com>.

5.A.11 Additionally, citing section 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Complainant points to the website to which the disputed domain name resolves displaying pay-per-click links to its competitors – as to which, see paragraphs 4.B.3 and 5.A.7 – which it says constitutes bad faith use pursuant to paragraph 4(b)(iv) of the Policy.

5.B Respondent

As noted above, no Response has been submitted by Respondent.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the disputed domain name in bad faith.

6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

A. Identical or Confusingly Similar

6.5 From the particulars of the MEDTRONIC trade marks summarised in paragraph 4.A.4 above, clearly Complainant has rights in that mark, which is a well-known mark for the classes of goods and services provided by Complainant.

6.6 Since the disputed domain name incorporates the MEDTRONIC mark in its entirety, it is confusingly similar to that mark.

6.7 Accordingly, Complainant meets the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.8 From Complainant’s case summarised in paragraphs 5.A.4 to 5.A.8 above and Respondent’s default, it is clear that Respondent could not demonstrate any of the circumstances set out in paragraph 4(c) of the Policy as evidencing rights or legitimate interests in the disputed domain name.

6.9 Accordingly, Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.10 Given the worldwide presence of Complainant and its MEDTRONIC trade mark registrations in the Republic of Korea – Respondent’s country of residence – it is inconceivable that the disputed domain name was registered other than in bad faith. Accordingly, Complainant’s case summarised in paragraphs 5.A.9 and 5.A.10 is well made out.

6.11 Further, the facts presented in the Amended Complaint support a finding that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on such website or location.

6.12 Furthermore, the Panel notes that the apparent typosquatting of the Complainant’s mark – as summarized in paragraph 5.A.3 – constitutes further evidence of bad faith. See section 3.2.1 of the WIPO Overview 3.0.

6.13 Consequently, the Amended Complaint satisfies the requirement of paragraph 4(a)(iii) 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 <medtronics.co> be transferred to Complainant.

David Perkins
Sole Panelist
Date: October 2, 2020