Mayo Foundation for Medical Education and Research v. Mike Flynn
Claim Number: FA0208000117896
Complainant is Mayo Foundation for Medical Education and Research, Rochester, MN (“Complainant”). Respondent is Mike Flynn, New York, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newmayoclinicdiet.com>, registered with Enom.
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 August 7, 2002; the Forum received a hard copy of the Complaint on August 9, 2002.
On August 9, 2002, Enom confirmed by e-mail to the Forum that the domain name <newmayoclinicdiet.com> is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 August 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 2002 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 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 September 18, 2002, 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 name be transferred from Respondent to Complainant.
The <newmayoclinicdiet.com> domain name is confusingly similar to Complainant's MAYO CLINIC mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant has used the mark MAYO CLINIC since 1914. Complainant began a pioneered concept of an integrated, multi-specialty group medical practice. Today Complainant’s family of companies includes three clinics and four hospitals in three states, a health system that encompasses clinics and hospitals in 60 communities throughout the upper Midwest, and a degree granting medical school. Complainant has treated over five million people who have come from every state in the United States, and numerous foreign countries. Complainant’s patients have included United States Presidents, foreign heads of state, and international celebrities.
Over the years, Complainant has developed an international reputation for excellence in healthcare, medical research, and medical education. Complainant is the owner of 28 trademark registrations with the United States Patent and Trademark Office that include MAYO CLINIC (Reg. No.1,614,853). Complainant is also the owner of 58 registrations in countries throughout the world. Complainant has also authored publications using the MAYO CLINIC marks concerning the subjects of nutrition, diet and healthy weight. Specifically, Complainant has authored a diet and nutrition manual called MAYO CLINIC DIET MANUAL since 1948.
Complainant has also registered numerous domain names that incorporate its MAYO CLINIC marks including <mayoclinic.org>, <mayoclinic.com> and <mayo.edu>. Complainant’s <mayoclinic.com> website is one of the most visited health sites on the Internet, with over one million visitors per month.
Respondent registered the disputed domain name on February 18, 2002. Respondent was using the <newmayoclinicdiet.com> domain name in order to divert Internet users to <e-scripts-md.com>, an online pharmacy offering online physician consultations, prescriptions, and pharmaceutical order filling. Respondent, as an affiliate of <e-scripts-md.com> receives a fee of up to 10% of the amount purchased by individuals referred to <e-scripts-md.com> by Respondent’s websites. Respondent offered to sell the disputed domain name to Complainant for $500 and $750, after receiving a cease-and-desist email from Complainant. After this correspondence Respondent rerouted the domain name to the controversial <abortionismurder.org> website, which contains graphic pictures of aborted fetuses.
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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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 that it has rights in the MAYO CLINIC mark through registration and continuous use. Respondent’s <newmayoclinicdiet.com> domain name is confusingly similar to Complainant’s MAYO CLINIC mark because it incorporates Complainant’s entire MAYO CLINIC mark and merely adds the descriptive term “new” to the beginning and “diet” to the end. The addition of generic and descriptive terms to a well-known mark does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) “confusingly similar” analysis. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent originally used the disputed domain name in order to divert Internet users to an online pharmacy. Respondent received a commission for every sale that resulted from this diversion and, therefore, benefited commercially from the Internet user confusion it created through the use of a domain name confusingly similar to Complainant’s MAYO CLINIC mark. The use of a domain name that infringes on Complainant’s mark for Respondent’s commercial gain is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Respondent is currently using the <newmayoclinicdiet.com> domain name in order to divert Internet users to the inflammatory <abortionismurder.org> website. Respondent linked the disputed domain name to this website after Complainant refused to purchase <newmayoclinicdiet.com> from Respondent for a price in excess of Respondent’s out-of-pocket costs. The website located at <abortionismurder.org> shows graphic images of aborted fetuses. Respondent’s use of a domain name incorporating Complainant’s mark, in relation to a tarnishing website in order to intimidate Complainant into purchasing the <newmayoclinicdiet.com> domain name from Respondent, is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to an “Abortion is Murder” website and subsequently asking for compensation beyond out-of-pocket costs to transfer the domain name, Respondent has not demonstrated a right or legitimate interest in the disputed domain name); see also 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).
Respondent is known to this Panel as Mike Flynn. Respondent has not come forward with any evidence to establish that it is known by any other name, or that it is commonly known as NEW MAYO CLINIC DIET or <newmayoclinicdiet.com>. Therefore, Respondent has not established that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent attempted to sell the disputed domain name to Complainant for a price of $500 and $750, a price in excess of Respondent’s out-of-pocket expenses for operating the domain name. Respondent’s behavior is evidence of bad faith use pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).
It can be inferred that Respondent had knowledge of Complainant’s rights in the MAYO CLINIC mark because Respondent originally used the <newmayoclinicdiet.com> domain name in order to attract Internet users to <e-scripts-md.com> for Respondent’s commercial gain. Furthermore, based on the fame of Complainant’s MAYO CLINIC mark it is presumed that Respondent had constructive, if not actual notice, of Complainant’s rights when it registered the disputed domain name. Registration of a domain name with knowledge that the domain name infringes on another’s mark is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Respondent is currently using the disputed domain name to divert Internet users to <abortionismurder.org>, a graphic anti-abortion website. Association of Complainant’s well-known MAYO CLINIC mark with this website will tarnish Complainant’s reputation. The use of a confusingly similar domain name in order to divert Internet users to websites with subject matter that will tarnish Complainant’s goodwill is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <newmayoclinicdiet.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 20, 2002
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