Mayo Foundation for Medical Education and Research v. houchang li
Claim Number: FA1908001859309
Complainant is Mayo Foundation for Medical Education and Research (“Complainant”), represented by Elizabeth C. Buckingham of Dorsey & Whitney LLP, Minnesota, USA. Respondent is houchang li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mayoclinichealthsolutions.co>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2019; the Forum received payment on August 26, 2019.
On August 28, 2019, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <mayoclinichealthsolutions.co> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 August 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mayoclinichealthsolutions.co. Also on August 30, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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" 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 is a nonprofit, worldwide leader in the medical care, research and education sectors. Complainant has rights in the trademark MAYO CLINIC through its use in commerce since 1914, its registration of the mark with the United States Patent and Trademark Office (“USPTO”), the China National Intellectual Property Administration (“CNIPA”), the Japan Patent Office (“JPO”), and the trademark offices of many other countries. It also owns many other domain names that incorporate its mark such as <mayoclinichealthsystem.org> and <mayoclinic.org>. Respondent’s <mayoclinichealthsolutions.co> domain name, registered on November 30, 2018, is confusingly similar to Complainant’s mark as Respondent merely adds the generic terms “health” and “solutions” as well as adds the “.co” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <mayoclinichealthsolutions.co> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name’s resolving website to host sexual adult oriented content.
Respondent registered and used the <mayoclinichealthsolutions.co> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where it creates confusion as to source, sponsorship, affiliation or endorsement of the domain name’s resolving website. Specifically, Respondent uses the disputed domain name’s resolving website to host sexual adult oriented content. Finally, Respondent had actual and constructive knowledge of Complainant’s right in the MAYO CLINIC mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: Language of the Proceeding
Complainant notes that the language of the Registration Agreement for the disputed domain is a combination of Japanese and English. Complainant requests that this administrative proceeding proceed in the English language. Pursuant to UDRP Rule 11(a), Panels have discretion to determine the language of proceedings under the Policy. It is also established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative cost in time and money to the parties in enforcing the original language of a registrar agreement which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”)
In this case, the Panel notes that while the website of the disputed domain appears to be in the Japanese language, the registrar agreement for the domain does appear in both Japanese and English and also contains English subject headings for the Japanese language version of the agreement. Further, the Whois record for the disputed domain name lists an address in China for the Respondent, the Respondent has been the subject of prior UDRP complaints which were conducted in English and which resulted in domains being transferred to complainants[i], and the Respondent has elected not to participate in these proceedings despite having been sent notice of the case by the Forum in both the Japanese and English languages. Insisting that the Complainant undertake the cost and delay of translating its pleadings into another language would, in light of all of the circumstances of this case, seem inequitable and would not be of benefit to the Respondent.
As such, pursuant to UDRP Rule 11(a), and after considering all of the circumstances of the present case, the Panel decides that these proceedings should be in English.
Complainant claims rights in the MAYO CLINIC mark through its registration of the mark with the USPTO, the CNIPA, the JPO, and many other trademark offices and it provides copies of some of its registrations for the mark[ii]. Registration with the USPTO or the appropriate governmental agencies of other countries is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mayoclinichealthsolutions.co> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic terms “health” and “solutions” as well as adds the “.co” ccTLD. The mere addition of generic terms and a ccTLD to and otherwise recognizable mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <mayoclinichealthsolutions.co> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <mayoclinichealthsolutions.co> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. In considering this issue, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the WHOIS record for the disputed domain name identifies the Respondent as “houchang li” and no information in the record indicates that Respondent is known otherwise or that it was authorized to use Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and thus has no rights or legitimate interests in the <mayoclinichealthsolutions.co> domain name on that basis.
Next, Complainant argues that Respondent fails to use the <mayoclinichealthsolutions.co> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to host sexual adult oriented content. There exist a number of UDRP decisions which hold that a respondent’s use of a disputed domain name to display adult-oriented sexual images is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. For example, in Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 7, 2017), the Panel held that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.” It went on to find that “[h]ere, Complainant provided screenshots of Respondent’s resolving website which displays adult-oriented images. Therefore, the Panel holds that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name.” Id. No other basis for the Panel’s finding under Policy ¶ 4(c)(i) is made in the Altria Group decision. However, the Panel in the present case does not view the adult-themed nature of a website, alone, as sufficient grounds upon which to find a lack of bona fide offering of goods or services. Rather, such cases should be examined in the same manner as disputes involving industries other than adult entertainment including a full range of factors such as the use of a confusingly similar domain name, the nature of the website (commercial or otherwise), evidence of a genuine (i.e., not pretextual or exploitative) business plan utilizing the domain name, and other evidence generally pointing to a lack of indicia of cybersquatting intent. See TeamShiffrin, LLC v. Ray Leal, FA 1771643 (Forum March 27, 2018) citing WIPO Jurisprudential Overview 3.0 at par. 2.2. As such, the Panel declines to find that Respondent’s use of the disputed domain name is not bona fide solely on the basis of the sexual adult themed content to which it resolves.
Complainant also argues that the Respondent is not making a bona fide offering of goods and services under the disputed domain name as the content to which it resolves is of a commercial nature and it makes no mention of, and has no relationship to Complainant or its MAYO CLINIC mark. UDRP panels have found that leading consumers who are searching for a particular business, to a site where unrelated commercial services provided by others are listed, is not a bona fide use. See Homer, TLC Inc. v. Lorna Kang, FA 573872 (Forum Nov. 22, 2005) (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party website for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use....”) Here, Complainant provides a screenshot of the website that resolves from the disputed domain names and this depicts commercial, sexual adult themed content that is unauthorized by, and bears no relationship to Complainant or its mark. The Panel finds that Respondent has improperly leveraged the confusingly similar nature of the disputed domain name in an attempt at commercial gain and that such activity fails to demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Therefore, the Panel finds that Respondent fails to use the <mayoclinichealthsolutions.co> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the MAYO CLINIC mark at the time of registering the <mayoclinichealthsolutions.co> domain name. The Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent most often declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) However, actual knowledge of Complainant's rights in the MAYO CLINIC mark prior to registering the disputed domain name can adequately form a basis upon which to build a case of bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant claims that its mark is globally famous, it points to its numerous trademark registrations, and it cites the fact that Respondent uses the disputed domain name to seek commercial gain by offering sexual adult themed images with links to additional material of a similar nature. It also notes that the disputed <mayoclinichealthsolutions.co> domain name is quite similar to Complainant’s own <mayoclinichealthsystem.org> domain name. As such, the Panel finds it highly likely that Respondent did have actual knowledge of Complainant’s right in its mark when it registered the disputed domain name and that this supports a finding of bad faith under Policy ¶ 4(a)(iii).
Next, Complainant asserts that Respondent registered and uses the <mayoclinichealthsolutions.co> domain name in bad faith. Specifically, Complainant claims that Respondent attempts to attract, for commercial gain, users to the disputed domain name by creating a likelihood of confusion as to source, sponsorship, endorsement or affiliation at the disputed domain name’s website. General diversion of users to a confusingly similar domain name, particularly for commercial gain, may demonstrate bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (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); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Here, Complainant provided a screenshot of the <mayoclinichealthsolutions.co> domain name’s resolving webpage, showing a number of sexual adult themed images with links to additional content. The Panel notes that the disputed domain name incorporates the MAYO CLINIC mark in connection with a sexual adult themed website having no relation to Complainant or its business and that Respondent appears to seek commercial benefit from this diversion. Therefore, in the absence of a Response or other submission by the Respondent, the Panel finds that a preponderance of the evidence in this case supports a finding that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also argues that Respondent registered and used the <mayoclinichealthsolutions.co> domain name in bad faith, as Respondent has the disputed domain name host sexual adult themed content. Prior decisions have found that registration and use of a disputed domain name to host adult oriented content can be evidence of bad faith under Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”) Similar to its reasons noted above, this Panel declines to find bad faith based solely on the nature of the websites to which the disputed domain names resolve. In any event, bad faith has already been found for the reasons stated earlier in this decision.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mayoclinichealthsolutions.co> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 25, 2019
[i] See, e.g., LSVT Global, Inc. v. houchang li, FA 1855442 (Forum Sep. 7, 2019) (Respondent’s email was in English and “the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.”)
[ii] The Panel notes that the submitted registration certificate for Trademark Reg. No. 1,614,853 lists the Registrant as “Mayo Foundation.” Later registrations list the owner as “Mayo Foundation For Medical Education And Research”. Although the Complainant does not submit into evidence a copy of the assignment agreement for the 1,614,853 Registration, the Panel has reviewed the assignment that was recorded with the USPTO and has confirmed that the current owner of the 1,614,853 Registration is, in fact, the Complainant named in this case, Mayo Foundation For Medical Education And Research.
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