Mayo Foundation for Medical Education and
Research v. Mike Flynn
Claim Number: FA0208000117896
PARTIES
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.
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
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 postmaster@newmayclinicdiet.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
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
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.
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 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).
DECISION
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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