Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Mayo Foundation for Education and Research, Rochester, MN, USA ("Complainant" or "Mayo Foundation") represented by Ken D. Schueler. The Respondent is Pat Briese, Rochester, MN, USA ("Respondent").

The domain name at issue is "mayoinfo.com" registered with Network Solutions.

The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

Bruce Meyerson, Earl Gustafson and Dana Haviland as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 26, 2001; the Forum received a hard copy of the Complaint on February 27, 2001.

On February 27, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "mayoinfo.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 March 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 27, 2001 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@mayoinfo.com by e-mail.

A timely response was received and determined to be complete on March 27, 2001.

On April 6, 2001, pursuant to Complainant’s and Respondent’s requests to have the dispute decided by a three member Panel, the Forum appointed Bruce Meyerson, Earl Gustafson and Dana Haviland as Panelists.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant is a charitable foundation engaged in research, education, and patient care. Among its activities are the operation of various clinics and hospitals located in Minnesota, Iowa, Wisconsin, Arizona and Florida. Complainant alleges that Respondent's use of the domain name "mayoinfo.com" for the purpose of promoting criticism of the Mayo Foundation is misleading and damaging to Complainant. Complainant contends that it has the exclusive right to use the "Mayo" name, that Respondent has no legitimate right to use the name, and its use is particularly inappropriate because the site is operated by a former Mayo employee whose employment was terminated by Mayo and who is using the site to harass and embarrass his former employer.

B. Respondent

Respondent contends that "mayoinfo.com" is a "complaint site that provides critical comment on the quality of personal and other experiences" with the Mayo Foundation. Respondent contends that he has a First Amendment right to criticize the Complainant, and that his website that uses the word "Mayo" in its domain name, could not reasonably be confused with the Mayo Foundation.

Respondent is a former employee of Complainant, hired by the Mayo Foundation in 1989 as a social worker. He was discharged in 1991 and later filed a wrongful termination suit against Complainant. A court ruling was entered in favor of Mayo Foundation, which was ultimately affirmed by the Minnesota Supreme Court in 1994. Subsequently, Respondent registered the disputed domain name which he has used to criticize the Complainant and as a forum to permit others to share information critical of the Mayo Foundation.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;

(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.

Complainant has utilized its common law marks MAYO and MAYO CLINIC for a century to distinguish the services, information, and products, which it provides. The Minnesota Supreme Court has recognized that "Mayo" is "a famous name known the world over for [the Mayo Clinic’s] developments in medical, surgical, and kindred fields for the relief of human sufferings." See Mayo Clinic v. May’s Drug and Cosmetic, Inc. 113 N.W.2d 852, 856 (Minn. 1962). Mayo Foundation has an exclusive right and a protected interest in the name "Mayo." Id.

According to Complainant, the foundation has registered numerous domain name variations containing its mark, in an attempt to protect patients and the public from web sites, not affiliated with Mayo Foundation, with confusingly similar domain names.

Respondent’s domain name, "mayoinfo.com," is almost identical and is confusingly similar to several of Complainant’s registered domain names and famous marks because the disputed domain name is primarily comprised of Complainant’s mark with a generic or descriptive term added. See 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); see also AXA China Region Limited v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

Thus, we conclude that Complainant has satisfied the first element of the three-part test that it must meet.

Respondent is using the disputed domain to disseminate information, which is a legitimate non-commercial use. See Newport News v. VCV Internet, AF-0238 (eResolution July 18, 2000) (finding that respondent has rights and legitimate interests in the domain name newportnews.com where respondent is using the domain name in connection with a bona fide use of disseminating general information about the city of Newport News); see also Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that respondent has rights in the domain name where she was using the domain name in connection with a noncommercial purpose).

Also, Respondent is using the disputed domain name for non-commercial, critical commentary, which is protected by the First Amendment. See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that the respondent has free speech rights and legitimate 1^st amendment interests in the domain name "bridgestone-firestone.net" where the respondent linked the domain name to a "complaint" website about the complainant’s products); TMP Worldwide Inc. v. Potter, D2000-0535 (WIPO Aug. 5, 2000) (use of website to criticize complainant without commercial gain or diversion of customers is permissible).

We note that Respondent makes an appeal for funds to support its efforts to expose the "hidden pitfalls in dealing with the Mayo Clinic at any level." We conclude that this fundraising activity does not change the essential purpose of the site, and does not render it commercial.

Based upon our review of the website, we accept Respondent's contention that consumers using the disputed website could not reasonably be confused or misled that Complainant operates the site. Indeed, Complainant acknowledges that Respondent offers no goods or services related to the Mayo Foundation through Respondent's website. Although the domain name is confusingly similar to Complainant's protected mark, the site itself could not reasonably be found to be confusing with other sites maintained by Complainant or with medical information provided by Complainant.

Respondent claims that the disputed domain name was registered in good faith, and asserts that its domain name was registered for a legitimate non-commercial and non-infringing purpose. We agree. See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith even though respondent’s ownership and purported use of the domain name frustrates complainant’s efforts and where the record does not indicate any purpose or intent on the part of the respondent to prevent complainant from promoting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of complainant to respondent’s site by creating a likelihood of confusion).

The Complaint is dismissed.