Westmore · UDRP DecisionMedtronic.asia
The Panel ordered transfer of medtronic.asia. It found the domain identical or confusingly similar to the Complainant's registered MEDTRONIC mark, found no evidence of Respondent rights or legitimate interests, and concluded that the Respondent registered and used the domain in bad faith by approaching the Complainant immediately after registration to offer the domain for sale. The Panel inferred that the domain was registered primarily for sale to the Complainant for consideration exceeding the Respondent's documented out-of-pocket costs under Policy paragraph 4(b)(i).
The timeline behind medtronic.asia
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind medtronic.asia — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates a direct-sale-solicitation fact pattern involving an exact match to a coined trademark. The Panel treated the combination of the distinctive mark, immediate approach to the trademark owner, brand-focused sales language, inactivity, and absence of a rebuttal as sufficient to establish all three UDRP elements, including bad faith under paragraph 4(b)(i).
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Medtronic, Inc. v. Nitish Ghuse Case No. D2018-2387 1. The Parties The Complainant is Medtronic, Inc. of Minneapolis, Minnesota, United States of America (“United States”), represented by Fredrikson & Byron, P.A., United States. The Respondent is Nitish Ghuse of Mumbai, India. 2. The Domain Name and Registrar The disputed domain name <medtronic.asia> 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 18, 2018. On October 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2018, 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 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2018. The Center appointed Steven A. Maier as the sole panelist in this matter on November 23, 2018. 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 is supplier of medical devices. It is the owner of over 500 trademark registrations comprising or including the mark MEDTRONIC in territories throughout the world, including for example, India trademark number 854922 for the combined mark MEDTRONIC, registered on May 6, 1999 in Class 10. The disputed domain name was registered on September 18, 2018. The disputed domain name has resolved to an inactive web page stating “Sorry! This site is not currently available.” There is evidence that the Respondent emailed the Complainant soon after the registration of the disputed domain name offering to sell the disputed domain name to the Complainant. There is no evidence that any other use has been made of the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant submits that it is the world’s largest medical device and technology company with revenue in excess of USD 20 billion per annum. It refers to its portfolio of trademark registrations referred to above and states that it has used the mark MEDTRONIC since 1949. The Complainant exhibits extensive evidence relating to the reputation of its mark MEDTRONIC including numerous international awards and rankings. The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark MEDTRONIC. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that the Respondent has no trademark rights in the mark MEDTRONIC, has not commonly been known by that name and has made no preparations to use the disputed domain name in connection with any bona fide offering of goods or services. The Complainant submits that, on the contrary, the Respondent registered the disputed domain name in order to take advantage of the reputation of the Complainant’s MEDTRONIC trademark and to extort money from the Complainant. The Complainant submits that the disputed domain name was registered and is being used in bad faith. It states that the mark MEDTRONIC is a unique, invented and non-descriptive term and that the Respondent can only have registered the disputed domain name in order to take unfair advantage of that trademark. It also submits evidence that the Respondent emailed the Complainant at around the same time as it registered the disputed domain name stating: “We have the domain Medtronic.asia and we are offering it for sale. This domain can be useful for your business as .asia is extension of Asia. Owning this domain can protect your brand as well as fetch you even more traffic. Also it seems you own all other extensions, this domain can be a great support to your other extensions. Let us know if you are interested in acquiring this domain.” The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the 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. Even in a case where no Response has been filed, the Complainant must still establish each of the three elements set out above. A. Identical or Confusingly Similar The Complainant has demonstrated that it is the owner of an extensive portfolio of trademark registrations for the mark MEDTRONIC. The disputed domain name is identical to the Complainant’s trademark but for the generic Top-Level Domain (“gTLD”) “.asia”, which is typically to be disregarded for the purposes of comparison. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has failed to participate in these proceedings and has neither provided an explanation for its choice of the disputed domain name nor advanced any submissions concerning any rights or legitimate interests that it may claim to have in the disputed domain name. The Panel having no other evidence of any such rights or legitimate interests on the part of the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel accepts the Complainant’s evidence that mark MEDTRONIC is a coined or invented term, which has no meaning in commerce other than to refer to the Complainant. In the circumstances, the Panel finds that the disputed domain name is inherently misleading and constitutes an impersonation of the Complainant. Furthermore, it is clear from the evidence that the Respondent approached the Complainant immediately after registering the disputed domain name with a view to selling the disputed domain name to the Complainant on commercial terms. The Panel infers in all the circumstances that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy). The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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, <medtronic.asia>, be transferred to the Complainant. Steven A. Maier Sole Panelist Date: November 29, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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