Mayo Foundation for Medical Education and Research v. MAHOLI Vera
Claim Number: FA2112001977497
Complainant is Mayo Foundation for Medical Education and Research ("Complainant"), represented by Elizabeth C. Buckingham and Alison W. Jarzyna of Dorsey & Whitney LLP, Minnesota, USA. Respondent is MAHOLI Vera ("Respondent"), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mayoporno.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2021; the Forum received payment on December 17, 2021.
On December 20, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <mayoporno.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@mayoporno.com. Also on December 21, 2021, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
A. Complainant
Complainant's parent organization, Mayo Clinic, was established in 1914. It is a nonprofit worldwide leader in medical care, research, and education, each year serving more than a million people from all fifty states and nearly 140 countries, including Peru. Complainant owns longstanding trademark registrations for MAYO and MAYO CLINIC (both in standard character form) in the United States and Peru, among other jurisdictions, and asserts that the MAYO marks are famous.
Respondent registered the disputed domain name <mayoporno.com> in October 2020. The domain name is being used for a Spanish-language website composed of sexually explicit images and links to adult-oriented content. Complainant describes Respondent's use of the domain name as "pornosquatting," meaning use of a well-known trademark to divert customers to a pornographic website for commercial purposes. Complainant states that Respondent is not commonly known by the disputed domain name, is not a licensee or subsidiary of Complainant, and has not been authorized to use Complainant's MAYO mark.
Complainant contends on the above grounds that the disputed domain name <mayoporno.com> is confusingly similar to its MAYO mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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."
Paragraph 4(a) of the Policy requires that 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <mayoporno.com> incorporates Complainant's famous MAYO trademark, adding the generic term "porno" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Mayo Foundation for Medical Education & Research v. John Zuccarini dba Cupcake Confidential, FA 100488 (Forum Nov. 16, 2001) (recognizing fame of MAYO mark and finding <mayodiet.com> confusingly similar to MAYO); Mayo Foundation for Education & Research v. Pat Briese, FA 96765 (Forum May 7, 2001) (recognizing fame of MAYO mark and finding <mayoinfo.com> confusingly similar to MAYO); Orange Personal Communications Services Ltd. v. Petr Fomenkov, D2008-1769 (WIPO Jan. 29, 2009) (finding <orange-porno.com> confusingly similar to ORANGE); Google Technology Inc. v. Internet Hispano, S.L., FA 176533 (Forum Sept. 16, 2003) (finding <googleporno.com> confusingly similar to GOOGLE). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's famous registered mark without authorization, and it is being used for an apparently commercial website composed of sexually explicit content. Although such a website can function as a bona fide offering of goods or services, that does not appear to be the case here, and Respondent has presented no evidence to support such a claim. See Orange Personal Communications Services Ltd. v. Petr Fomenkov, supra (finding lack of rights or interests in similar circumstances); Target Brand, Inc. v. Dauren Niazov & Targetporn JSC, FA 381229 (Forum Jan. 25, 2005) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's famous registered mark and is using it for a sexually explicit and apparently commercial website. The Panel infers from the circumstances, including the fame of Complainant's mark and Respondent's failure to participate in this proceeding, that Respondent selected the domain name intending to create confusion with Complainant's mark and thereby attract visitors to Respondent's website. See Orange Personal Communications Services Ltd. v. Petr Fomenkov, supra (inferring bad faith in similar circumstances); Target Brand, Inc. v. Dauren Niazov & Targetporn JSC, supra (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mayoporno.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 17, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page