WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Medtronic, Inc. v. BioMedtronic, Naga Siva
Case No. D2020-2571
1. The Parties
The Complainant is Medtronic, Inc., United States of America (“United States” or “US”), represented by Snell & Wilmer, LLP, United States.
The Respondent is BioMedtronic, Naga Siva, India.
2. The Domain Name and Registrar
The disputed domain name <bio-medtronic.com> 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 October 3, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 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.
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 October 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2020. The Respondent sent to the Center an informal communication on October 31, 2020 concerning a possible settlement of the dispute.
On November 2, 2020, the Center sent the Parties a Possible Suspension of Proceedings for Settlement Purposes Communication, to which the Respondent, on November 6, 2020, reiterated its willingness to settle the dispute and the Complainant, on the same date, requested the Suspension of the Proceedings. On November 10, 2020, the Center transmitted by email to the Parties the “Notification of Suspension of the Proceedings” and the Proceedings were suspended until December 6, 2020. The Proceedings were reinstituted finalizing the suspension on December 6, 2020.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on December 28, 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, incorporated in the United States, is one of the largest medical device and technology
companies in the world. It has offered a wide variety of medical and health-related goods and services under its marks MEDTRONIC, since 1949.
The Complainant’s goods and services are advertised and sold in over 150 countries with annual revenue totaling tens of billions of US dollars. It owns over 75 manufacturing sites worldwide and has offices in the United States and other countries, employing tens of thousands of employees worldwide.
Over the past 70 years it has invested hundreds of millions of US dollars advertising goods and services branded with the mark MEDTRONIC. As a result it has acquired a goodwill and reputation in the mark.
The Complainant owns a large portfolio of trade mark registrations for MEDTRONIC in over 100 jurisdictions worldwide. Exhibited at Annex 3 to the Complaint are true copies of a number of US certificates of trade mark registration at the United States Patent and Trademark Office for MEDTRONIC; nos. 4870845 registered on December 15, 2015, 4328409 registered on April 30, 2013, and 1038755 registered on May 4, 1976. The Complainant expressly relies upon Indian trade mark registration no.112617 for MEDTRONIC registered on June 14, 1974.
The Complainant has also continuously used the domain <medtronic.com> to promote and offer for sale its medical devices and related products. Exhibited at Annex 4 is a copy of the WhoIs record for that domain name and at Annex 5 is exhibited a copy of the Complainant’s trading website.
In the absence of a Response there is no evidence adduced by the Respondent though it has confirmed in an email dated October 31, 2020 to the Center that it uses the website <bio-medtronic.com> which “is published and running”.
The disputed domain name, <bio-medtronic.com> was registered on April 14, 2019 which is after the date of registration of the Complainant’s trade marks relied upon including Indian registration no.112617.
The Panel finds the evidence adduced by the Complainant and set out above to be true and decides this Complaint on that evidence.
5. Parties’ Contentions
The Complainant submits;
i. that it owns trade mark rights in the mark MEDTRONIC which pre-date the date of registration of the disputed domain name which is confusingly similar to the mark MEDTRONIC;
ii. that on the evidence which is uncontested the Respondent has no rights or legitimate interests in the disputed domain name;
iii. that on the evidence which is uncontested the disputed domain name was registered and is being used in bad faith.
The Respondent did not formally reply to the Complainant’s contentions. In its email communication of October 31, 2020, the Respondent stated that “[t]hough the bio-medtronic.com website is published and running, we haven't done any business as of today. when we have registered our domain, we are not aware of Medtronic and our intension was not to use the brand name of Medtronic” and “[w]e are ready to settle this dispute by cancelling our domain. Please let us know how we can proceed for the same?”.
6. Discussion and Findings
A. Identical or Confusingly Similar
From the evidence set out in Section 4 above the Panel finds that the Complainant owns registered trade mark rights in the mark MEDTRONIC which predate the registration of the disputed domain name on April 14, 2019.
The Panel takes into account that the disputed domain name incorporates the mark MEDTRONIC without alteration and in its entirety. The Complainant submits that the Respondent has simply added the term “bio” to the mark MEDTRONIC and that on established precedent this constitutes confusing similarity. The Panel agrees with that submission.
The Panel finds in accordance with established precedent that the addition of the generic Top-Level Domain (“gTLD”) “.com” is not relevant to establishing confusing similarity. In particular, the previous panel decision in Carrefour v ParkKyeongSook, WIPO Case No. D2014-1425, which also concerned the prefix “bio”, decided that the domain name <biocarrefour.com> was confusingly similar to the mark CARREFOUR.
Accordingly the Panel finds that the Complainant has rights in the trade mark MEDTRONIC and that the disputed domain name is confusingly similar to the mark within paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.
In particular, there is no evidence that the Respondent is commonly known by Medtronic, Biomedtronic Systems, Biomedtronic, or any other similar name. Although the Respondent used the name “BioMedtronic” to register the disputed domain name the Complainant submits that this was done in bad faith. It is well established that bad-faith use does not establish rights or legitimate interests in the disputed domain name.
The Panel also notes that the emails from the Respondent to the Center dated October 31, 2020 and November 6, 2020 are sent by [...]@gmail.com rather than by an entity using the name “Medtronic” or any similar variation.
The Complainant also submits that because the mark MEDTRONIC was created by the Complainant and is not descriptive of the Complainant’s goods or services it is inherently distinctive and is therefore not a name that the Respondent “would legitimately choose unless seeking to create an impression of an association with the Complainant”. Taking into account the fact there is no evidence that the Respondent has used or is preparing to use the disputed domain name in connection with a bona fide offering of goods or services this is further evidence of the Respondent having no legitimate interest in the disputed domain name.
The Complainant exhibits at Annex 6 to the Complaint a copy of a printout of the Respondent’s website accessed by the disputed domain name which promotes and offers for sale medical devices, including ventilators and ECGs, refurbished medical devices and medical equipment accessories, all of which are similar to the Complainant’s products. The Complainant submits that is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use. The Complainant also confirms that it has not authorized the Respondent to register or use the mark MEDTRONIC.
The Panel accepts these submissions which are supported by the evidence and by previous precedent cited by the Complainant.
The Panel therefore finds that the Respondent lacks rights or legitimate interests in the domain name within paragraph 4(a)(iii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant relies on the evidence that it owns over 100 trade mark registrations for MEDTRONIC throughout the world including India which predate by many years the registration of the disputed domain name as well as the evidence of its world-wide promotion and sales of medical devices under the mark MEDTRONIC. On the basis of this evidence it submits that the mark MEDTRONIC has become “among the most valuable and well-known medical device brands in the world” so that it is “not plausible to conceive of a plausible circumstance in which the Respondent would have been unaware of (these facts).”
On the evidence the Panel agrees with this submission and finds that this supports a finding that the Respondent was aware of the Complainant and its mark MEDTRONIC and that the disputed domain name was registered in bad faith.
The Complainant further submits that through the Respondent’s use of the disputed domain name which is confusingly similar to the mark MEDTRONIC it is seeking to cause confusion and divert Internet traffic from the Complainant to the Respondents “knock-off” website selling similar or related goods to those sold by the Complainant under its mark MEDTRONIC. The Panel finds that this is further evidence of the Respondent’s knowledge and targeting of the Complainant and its mark MEDTRONIC.
The Panel takes into account the evidence of the Respondent’s website discussed in Section 6(B) above which supports this submission and finds that the Respondent is using the disputed domain name in bad faith.
The Panel finds that the Respondent has registered and used the disputed domain name
<bio-medtronic.com> in bad faith within paragraph 4(b)(iv) of the Policy.
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, <bio-medtronic.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: January 11, 2021