Mayo Foundation for Medical Education and Research v. Domain Future
Claim Number: FA0209000124753
PARTIES
Complainant is Mayo
Foundation for Medical Education and Research, Rochester, MN (“Complainant”). Respondent is Domain Future, Bronx,
NY (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <mayoclinicdiets.com>, registered with Enom, Inc.
PANEL
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.
Honorable Paul A. Dorf,
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on September
6, 2002; the Forum received a hard copy of the Complaint on September 9, 2002.
On September 10, 2002, Enom,
Inc. confirmed by e-mail to the Forum that the domain name <mayoclinicdiets.com>
is registered with Enom, Inc. and that Respondent is the current registrant of
the name. Enom, Inc. has verified that
Respondent is bound by the Enom, Inc. 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 September 10, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 30, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@mayoclinicdiets.com by e-mail. The Panel notes that a copy of the
Complaint with notification instructions was not mailed to Respondent due to an
incomplete mailing address.
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 October 21, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf, (Ret.) 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.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the
following assertions:
1. Respondent’s <mayoclinicdiets.com>
domain name is confusingly similar to Complainant’s MAYO family of
registered marks.
2. Respondent does not have
any rights or legitimate interests in the <mayoclinicdiets.com> domain
name.
3. Respondent registered and
used the <mayoclinicdiets.com> domain name in bad faith.
B. Respondent did not
submit a Response in this proceeding.
FINDINGS
Complainant is the
exclusive owner of 28 federal trademark and service mark registrations with the
U.S. Patent and Trademark Office (“USPTO”) reflecting its MAYO mark and
variations thereof. More specifically, Complainant holds, inter alia:
Reg. No. 1,614,853 for its MAYO CLINIC mark registered on September 25, 1990;
Reg. No. 2,527,446 for its MAYO CLINIC HEALTHQUEST mark; and, Reg. No.
1,670,238 reflecting its MAYO mark. Furthermore, Complainant asserts rights in
the MAYO CLINIC DIET MANUAL mark regarding its books on diet and nutrition.
Complainant has also registered its MAYO and MAYO CLINIC marks in 58 countries
throughout the world.
Complainant’s MAYO
family of marks represents medical and healthcare services, medical journals,
health care newsletters, and books on health topics including fitness, diets
and nutrition.
Since 1914, Complainant
has been using the MAYO CLINIC name to describe its internationally renowned
medical practice, which has “pioneered the concept of an integrated,
multi-specialty group medical practice.” Since its inception, Complainant has
treated more than five million people, representing every state in the United
States and numerous foreign countries. More than 400,000 patients visit
Complainant’s hospitals and clinics every year, and Complainant’s facilities
employ more than 40,000 physicians, scientists, nurses and allied health
workers.
Over the last 85 years,
Complainant has developed an international reputation for excellence in
healthcare, medical research and medical education. Corroborating this
statement is the Minnesota Supreme Court’s determination that Complainant’s
MAYO mark is “a famous name known the world over for [Mayo’s] developments in
medical, surgical, and kindred fields for the relief of human sufferings.” Mayo
Clinic v. Mayo’s Drugs and Cosmetics, Inc., 113N.W.2d 852, 856
(Minn. 1962).
In addition, for over 50
years Complainant has authored publications using the MAYO marks to address
healthy weight, diet and nutrition issues. Since at least as early as 1948,
Complainant has authored a diet and nutrition manual entitled, Mayo Clinic
Diet Manual: A Handbook of Dietary Practices.
Respondent registered
the <mayoclinicdiets.com> domain name on August 8, 2002. The
subject domain name currently resolves to <e-scripts-md.com>, a domain
name connected to a website that sells prescription drugs. Complainant’s
extensive investigation substantiates a finding that Respondent is actually the
notorious cybersquatter John Barry, who has made a habit of registering domain
names containing famous trademarks and using them for infringing purposes.
Respondent has been involved in at least 12 UDRP actions filed by trademark
owners, all resulting in the transfer of domain names back to the trademark
holders.
Respondent was also sued
in federal court by the Minneapolis Public Schools, which resulted in the court
granting an injunction prohibiting him from registering any additional domain
names using the plaintiff’s marks. See Special School Districts No. 1,
Minneapolis Pub. Schools v. Barry, No. 02-1778 (D. Minn. July 19, 2002).
Significantly, Complainant provides evidence that Respondent previously infringed
on the MAYO marks, as evidenced by the disputed <newmayoclinicdiet.com>
domain name that was the subject of another UDRP action filed against one of
Respondent’s numerous aliases, “Mike Flynn.” Mayo Found. v. Mike Flynn,
FA 117896 (Nat. Arb. Forum Sept. 20, 2002).
DISCUSSION
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 Respondent is identical or confusingly similar to a trademark or
service mark in which Complainant has rights; and
(2) 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.
Complainant has
established rights in the MAYO CLINIC mark by successfully pursuing
registration with the USPTO and subsequent continuous use in connection with
its medical ventures.
Respondent’s <mayoclinicdiets.com>
domain name is confusingly similar to Complainant’s MAYO CLINIC mark, and
also infringes on numerous variations of said trademark. Respondent’s domain
name incorporates Complainant’s famous mark in its entirety, while deviating by
the addition of the word “diets.” Complainant’s evidence establishes its
interest and connection with the word “diet,” and in fact, Complainant
publishes a manual dedicated to the issues related to dieting. Respondent’s
inclusion of a generic word in the second-level domain that describes
Complainant’s MAYO CLINIC mark and related services fails to distinguish the
domain name; thus, Respondent’s domain name succumbs to a confusingly similar
analysis. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Marriott Int’l v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark).
Accordingly, the Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s evidence
and corresponding assertions have been unanswered and uncontested. Respondent’s
failure to respond indicates that it lacks rights and legitimate interests in
the <mayoclinicdiets.com> domain name. Furthermore, Respondent has
not successfully rebutted Complainant’s prima facie case, therefore, all
reasonable inferences made by Complainant will be accepted as true. See Talk
City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”); see also
Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that
Respondent has no rights or legitimate interest in the domain name because
Respondent never submitted a Response nor provided the Panel with evidence to
suggest otherwise).
Uncontested
circumstances indicate that Respondent’s <mayoclinicdiets.com> domain
name resolves to a commercial website located at <e-scripts-md.com>.
Presumably, Respondent is compensated for his participation in this infringing
activity. Complainant’s Submission indicates that Respondent has habitually
involved himself in similar infringing activities where confusingly similar
domain names direct unsuspecting Internet users to commercial websites, such as
<e-scripts-md.com>. Using another’s famous mark, and the reputation and
goodwill that inevitably accompanies it, in order to opportunistically benefit
from a diversionary use fails to demonstrate rights or legitimate interests in
the domain name under Policy ¶¶ 4(c)(i) or (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); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO
Oct. 3, 2000) (finding no rights in the domain name where Respondent has an
intention to divert consumers of Complainant’s products to Respondent’s site by
using Complainant’s mark).
There is no evidence
before the Panel that would suggest a legitimate connection exists between
Respondent and the <mayoclinicdiets.com> domain name pursuant to
Policy ¶ 4(c)(ii). In fact, Complainant’s Submission reveals that Respondent is
actually known by a number of aliases, such as John Barry and Mike Flynn. As
implied, the fame of Complainant’s mark and the record that accompanies
Respondent create a presumption that Respondent is not commonly known by a
domain name that incorporates the MAYO CLINIC mark. 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb.
Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly
known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET
mark because of Complainant’s well-established use of the mark).
Accordingly, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Evidence indicates that
Respondent had previous knowledge of Complainant’s rights in the MAYO CLINIC
mark prior to Respondent seeking registration of the subject domain name. Not
only is Complainant’s mark represented on the Principal Register of the USPTO,
but Respondent was involved in a previous domain name dispute with Complainant
over a similar domain name (<newmayoclinicdiet.com>) and has shown a
propensity for registering infringing domain names that incorporate famous
marks. Mayo Found. v. Mike Flynn, supra. Therefore, it is evident
that Respondent registered the <mayoclinicdiets.com> domain name
in bad faith under 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 Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001)
("Given the uniqueness and the extreme international popularity of the
[ODIE] mark, the Respondent knew or should have known that registering the
domain name in question would infringe upon the Complainant's goodwill").
Respondent’s
bad faith use is demonstrated by the diversionary use of the domain name for
commercial profit. Respondent redirects Internet users searching for
information on Complainant’s diet services to its commercial website; thus,
Respondent inevitably solicits sales from a percentage of diverted users.
Respondent’s attempt to monetarily benefit from a perceived affiliation with
Complainant’s famous MAYO family of marks represents bad faith use pursuant to
Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668
(Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered
and used an infringing domain name to attract users to a website sponsored by
Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284
(Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed
Internet users seeking Complainant’s site to its own website for commercial
gain).
The Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements under ICANN Policy, the Panel concludes that
relief shall be hereby GRANTED.
Accordingly,
it is Ordered that the <mayoclinicdiets.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable
Paul A. Dorf, (Ret.)Panelist
Dated: November 6, 2002
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