Mayo Foundation for Medical Education and Research v. John Zuccarini dba Cupcake Confidential
Claim Number: FA0110000100488
Complainant is Mayo Foundation for Medical Education and Research, Rochester, MN (“Complainant”) represented by Jana L. France, of Fish & Richardson P.C. Respondent is John Zuccarini dba Cupcake Confidential, Andalusia, PA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mayodiet.com> and <mayoclinicdiet.com>, registered with CORE and Network Solutions, respectively.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 8, 2001; the Forum received a hard copy of the Complaint on October 9, 2001.
On October 9, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <mayoclinicdiet.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 10, 2001, CORE confirmed by e-mail to the Forum that the domain name <mayodiet.com> is registered with CORE and that Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On October 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 31, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org and email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 12, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant asserts that Respondent’s domain names, <mayodiet.com> and <mayoclinicdiet.com>, are confusingly similar to its famous MAYO and MAYO CLINIC marks. Also, Complainant urges, Respondent has no rights or legitimate interests in the disputed domain names. And finally, Complainant contends that Respondent registered and used the disputed domain names in bad faith.
Respondent has not submitted a Response in this matter.
In 1914, Dr. William Worrall Mayo and his two sons, William J. Mayo and Charles H. Mayo opened the first integrated medical practice under the name MAYO CLINIC. Since 1914, more than five million people have been treated at Mayo Clinic. Today, Complainant encompasses through its affiliated corporations three clinics and four hospitals in three states. More than 400,000 patients visit Complainant’s clinics and hospitals each year and the Mayo clinics and hospitals employ more than 40,000 physicians, scientists, nurses, and allied health workers. As such, the Complainant’s marks have acquired fame through the long-term use of the marks and the goods and services sold under the marks.
Mayo is the exclusive owner of thirty-two (32) federal trademark or service mark registrations for marks comprised of or containing the word “MAYO.” Of those thirty-two federal registrations, six (6) are for marks containing the term “MAYO CLINIC.”
Complainant has utilized its marks MAYO and MAYO CLINIC for a century to distinguish the services, information, and products, which it provides. The Minnesota Supreme Court has recognized that "Mayo" is "a famous name known the world over for [the Mayo Clinic’s] developments in medical, surgical, and kindred fields for the relief of human sufferings." Mayo Clinic v. May’s Drug and Cosmetic, Inc. 113 N.W.2d 852, 856 (Minn. 1962). Mayo Foundation has an exclusive right and a protected interest in the name "Mayo." See Id.
As the Whois records indicate, Respondent is the administrative contact for both of the domain names, and the registrant address listed for both the domain names is the same. In addition, Respondent “is known by multiple pseudonyms, including Cupcake Party, Country Walk, Cupcake Patrol, Cupcake City, and Cupcake Confidential.” Gamesville.com v. John Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000).
Respondent is a well known cybersquatter and has "admitted that he registered…thousands of other domain names because they are confusingly similar to others’ famous marks and personal names…in an effort to divert Internet traffic to his sites….For example, he has registered obvious misspellings of celebrities names, such as gwenythpaltrow.com, rikymartin.com, and britineyspears.com." Shields v. Zuccarini and Cupcake Patrol, 89 F. Supp.2d 634, 640 (E.D. Pa. 2000).
Respondent registered the <mayodiet.com> and <mayoclinicdiet.com> domain names on November 13, 1999 and May 22, 1999, respectively.
Respondent has used the disputed domain name as a portal to divert Internet traffic to pop-up advertisements for various goods and services. Respondent generates a profit from the advertisers who place the advertisements on his site.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established rights in the MAYO and MAYO CLINIC marks through its federal registrations as well as its extensive global advertising and use of the marks. Furthermore, Complainant has established that the <mayodiet.com> and <mayoclinicdiet.com> domain names are confusingly similar to Complainant’s MAYO and MAYO CLINIC marks, inasmuch as it contains Complainant’s famous registered marks in their entirety combined with the generic word: “diet.” The addition of a generic word to Complainant’s marks keeps the disputed domains in the realm of confusingly similar under Policy ¶ 4(a)(i). See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to Complainant’s mark).
The Panel therefore finds that Complainant made the necessary showing to prevail in this dispute under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Respondent has not come forward to demonstrate it has rights or legitimate interests in the <mayodiet.com> and <mayoclinicdiet.com> domain names. There is a presumption that a Respondent has no rights or legitimate interests with respect to a disputed domain name when that Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent is using the <mayodiet.com> and <mayoclinicdiet.com> domain names to mousetrap users into a series of commercial links that cannot be easily exited. Such a use does not constitute a bona fida offering of goods or services as provided under Policy ¶ 4(c)(i). See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names faoscwartz.com, foaschwartz.com, faoshwartz.com, and faoswartz.com where Respondent was using these domain names to link to an advertising website).
Additionally, Complainant asserts, and Respondent fails to refute, that Respondent is not known by the <mayodiet.com> and <mayoclinicdiet.com> domain names pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Finally, Respondent is using the disputed domain name to link users to a series of commercial sites that are not affiliated with the Complainant's marks; this is not a legitimate noncommercial nor fair use of the <mayodiet.com> and <mayoclinicdiet.com> domain names as set forth under Policy ¶ 4(c)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is using the <mayodiet.com> and <mayoclinicdiet.com> domain names to intentionally attract, for commercial gain, users to websites that are not affiliated with Complainant by creating a likelihood of confusion with respect to Complainant's marks and the source, sponsorship, or endorsement of these other websites. Such use is evidence of bad faith according to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.
Accordingly, it is Ordered that the <mayodiet.com> and <mayoclinicdiet.com> domain names be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 16, 2001
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