DECISION

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.

Identical and/or Confusingly Similar

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.

Rights or Legitimate Interests

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.

Registration and Use in Bad Faith

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, [2002] USCA9 115; 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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