The Complainant is Medtronic, Inc., United States of America (“United States” or “US”), represented by Snell & Wilmer, LLP, United States.
The Respondent is Aytekin Yilmaz of Medo Tekstil Elektronik Al. Sat. Tic. Ltd., Turkey, represented by Christopher K. Leigh, United States.
The disputed domain name <medotronic.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2021. On June 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2021. The Response was filed with the Center July 9, 2021.
The Center appointed Nick J. Gardner, A. Justin Ourso III, and Ugur G. Yalçiner as panelists in this matter on September 14, 2021. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
There is no dispute as to the following facts.
The Complainant is incorporated in the United States and is one of the largest medical device and technology companies in the world. It has offered a wide variety of medical and health-related goods and services under the name MEDTRONIC since 1949.
The Complainant’s goods and services are advertised and sold in over 150 countries with annual revenue totaling tens of billions of US dollars. It owns over 75 manufacturing sites worldwide and has offices in the United States and other countries, employing tens of thousands of employees worldwide.
Over the past 70 years it has invested hundreds of millions of US dollars advertising goods and services branded with the mark MEDTRONIC. As a result it has acquired a goodwill and reputation in the mark.
The Complainant owns a large portfolio of trademark registrations for the term MEDTRONIC in over 100 jurisdictions worldwide – for example US registration No1038755, registered on May 4, 1976. These trademarks are collectively referred to as the MEDTRONIC trademark in this decision. These include the following trademark enforceable in Turkey – International Trademark Registrations No. 1278682,registered on September 9, 2021; No.1278683, registered on September 10, 2021; and No. 1276759, registered on September 10, 2015.
The Complainant has also continuously used the domain name <medtronic.com> for many years to link to its principal website which promotes and offers for sale its medical devices and related products.
The Respondent is a Turkish company. It sells consumer electronic related products and components (for example memory cards and disk drives). Further details as to the Respondent appear below.
The Disputed Domain Name was registered on May 2, 2018. It resolves to a website where the Respondent promotes its business (the “Respondent’s Website”) as further described below.
The Complainant’s contentions can be summarized as follows.
The Complainant says the Disputed Domain Name is confusingly similar to the MEDTRONIC trademark. It says as far as their visual impression is concerned, the Disputed Domain Name only differs in the inclusion of the letter “o” which produces term which is visually and aurally very similar to its MEDTRONIC trademark.
The Complainant says the Respondent has no rights or legitimate interests in the term “Medotronic”. The Complainant has not granted any license or authorization for the Respondent to use the MEDTRONIC trademark or any confusingly similar sign. The Respondent is not affiliated with the Complainant in any way. The Respondent does not use the Disputed Domain Name for a bona fide purpose or legitimate non-commercial purpose. Medotronic is not the Respondent’s name – that is Medo Tekstil Elektronik Al. Sat. Tic. Ltd.
The Complainant says the Disputed Domain Name resolves to a website which sells products such as memory cards, USB flash drives, connected products, and smartphones, “which are similar to the Complainant’s goods”. It says that the Respondent is attempting to trade off the goodwill in the Complainant’s MEDTRONIC trademark through its use and registration of <medotronic.com>. It says the Respondent does not refer to itself as “Medotronic” or “Medo Tronic” on its website or in advertising its services and it does not own the domain names <medoelectronic.com> or <medoelektronik.com>, both of which are materially closer to its name than is <medotronic.com>. The Complainant says that had the Respondent wanted to register a domain name in good faith, it would have registered those domains, not <medotronic.com>.
The Complainant says that the Respondent seeks to cause confusion and divert Internet traffic from the Complainant to the Respondent’s website and that it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use <medotronic.com>. It says that the Respondent registered and is using the Disputed Domain Name in bad faith and is engaged in typosquatting.
A detailed Response has been filed by the Respondent supported by a signed statement made under penalty of perjury by a Mr. Aytekin Yilmaz who is the owner of the Respondent. Documentary supporting material is also provided. The key points made by the Respondent are as follows.
The Respondent concedes that under what it describes as “the low threshold test of Policy Paragraph 4(a)” the Disputed Domain Name is confusingly similar to the Complainant’s MEDTRONIC trademark. It does however say that similarity is coincidental (see below).
It says that the Respondent was originally formed on May 28, 1997 under the name Medo Tekstil Alim Satim Ticaret Ltd. (without the word “Elektronik”) by Turkish father and son, Mehmet Yilmazipek and Doğan Yilmazipek, who were members of a family which has been involved in the textile industry in Turkey since the 1930s. Moreover, the Respondent asserts that in 1997 the company was set up in the Free Zone of Ataturk airport in Istanbul, Turkey, which had been created the year earlier in 1996. It says that the term “Medo” in Medo Tekstil Alim. Satim Ticaret. Ltd. was derived from the combination of the first two letters of the Yilmazipek father and son names: Mehmet and Dogan Yilmazipek. From 1998 until 2002, Mr. Yilmaz co-owned a company locating in Luxembourg selling electronic goods. In 2005 owing to local corporation presence requirements Mr. Yilmaz purchased the company with a view to moving it into his line of business – electronics. The word “Elektronik” was added to the name of the existing company to signal Mr. Yilmaz’s activities in the electronics business and since August 11, 2005, the company’s name has been Medo Tekstil Elektronik Alim. Satim Ticaret Ltd.
The Respondent says that since its inception it has colloquially and commonly been referred to simply by the trade name “Medo”.
From 2005 through 2018, the Respondent’s primary commercial activity was selling wireless calling systems to Turkish businesses and it had no international sales. In 2018, it decided to expand to the international market by starting to sell consumer electronic products and in 2018 it garnered sales (to Amazon) of EURO 475,355.24 in its first year. As part of this international expansion, it needed to have a website and Mr. Yilmaz selected the Disputed Domain Name for this purpose. He says it had the appeal of being short; incorporating the trade name “medo” and evoking electronics. He says the company’s first choice, <medo.com>, was not available, and the company felt that <medoelectronic.com> was unappealing as being too long; nor were other choices appealing.
The Respondent says that since 2018, the Disputed Domain Name has been “interwoven into every component of the company’s business” and the Respondent, since that time, has continuously used the Disputed Domain Name linked to its website for marketing and selling consumer electronic goods. It also uses it for its email addresses.
The Respondent says that at the time of the registration of the Disputed Domain Name, it was completely unaware of the company Medtronic, its business, its <medtronic.com> domain name and its website. The first time the Respondent became aware of Complainant, its business, its <medtronic.com> domain name and its website was when Mr. Yilmaz received Medtronic’s Complaint on June 11, 2021. It says that even if “medotronic” can be considered to be a misspelling of “medtronic”, it was not, and has never been, an intentional misspelling.
It says it has never sought to divert the Complainant’s customers nor to its knowledge, has any such customer ever been diverted.
It says its website has never sought to intercept and siphon off traffic from any destination, and to its knowledge that has never happened.
It says it has never had any of its customers ever mention “Medtronic” in any context nor has it ever had any contact of any nature with the Complainant.
It says it has never sought at any time to transfer the Disputed Domain Name to anyone nor has it ever sought at any time to sell it to anyone, and it has never been for sale or for rent.
It says it has never sought to use, nor used, the Disputed Domain Name to tarnish the Complainant, its trademarks or domain name, and, to its knowledge, it never in fact tarnished the Complainant, its trademarks or domain name. It denies that it is attempting to trade off the alleged goodwill in the Complainant’s trademarks or that it registered and is using the Disputed Domain Name in bad faith or that it is engaged in typosquatting.
The Respondent denies it sells goods that are related to the Complainant’s goods. It says the goods of the respective companies are not related: the Respondent sells wireless calling systems, and, since 2018, consumer electronic products (mostly memory cards); as far as the Respondent has been able to discern since first learning of the Complainant on June 11, 2021, the Complainant is “strictly a B2B medical device and services company”.
The Respondent say it has never “parked” pages; has never used pay-per-click links; has never used “medtronic” as a keyword for the “www.medotronic.com” website, or otherwise; and has never sought to compete with or capitalize, and has never competed with or capitalized upon, the reputation and goodwill of the Complainant, its MEDTRONIC trademark or its domain name. It has never sought to take advantage (unfair or otherwise) of, or otherwise abuse, the MEDTRONIC trademark. It has never used a privacy or proxy registration service for the Disputed Domain Name and has never sought to mislead Internet users (and, to its knowledge, nor has any Internet user ever been misled) by the Disputed Domain Name or the Respondent’s website.
In conclusion, the Respondent says that all times, it has acted entirely in good faith concerning the Disputed Domain Name.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that each of the following apply:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered or is being used in bad faith.
The Complainant has rights in the MEDTRONIC trademark. The Respondent has conceded that for the purpose of the Policy the Disputed Domain Name is confusingly similar to that trademark and the Panel so finds. The Panel would have reached this conclusion in any event.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent says that 4(c)(i) above applies. The filed evidence establishes that the Respondent has been using the Disputed Domain Name since 2018 in connection with its business which is significantly before the Complainant brought the present complaint. Clearly in these circumstances paragraph 4(c)(i) is potentially applicable. The only issue then is as to the meaning of “bona fide”. It seems to the Panel that paragraph cannot simply apply if a business exists which has deliberately adopted another person’s trademark as its name, otherwise the Policy would be inapplicable to all such cases, which is clearly not its intention. The words “bona fide” must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the “bona fide” requirement is not met.
Is this such a case? The Panel considers the evidence establishes it is not. The origins of the term “medo” as part of the Respondent’s name are described above and supported by documentary evidence – it had nothing to do with the Complainant (nor was there any conceivable reason why a Turkish textile company would wish to link itself to the Complainant). The relevant question then is whether when Mr. Yilmaz took over the company and changed its business and in doing so selected the Disputed Domain Name did he include the addition of “tronic” to the existing “medo” part of the name as a deliberate attempt to form some sort of linkage to the Complainant? He says he did not (see above). Apart from the matters relied upon by the Respondent (see above) the Panel takes into account the following further factors (derived from Panelist Yalçiner’s knowledge of Turkish law and language). Turkish law prohibits use of non-Turkish words in company names. The word “elektronik” is the Turkish translation of the English word “electronic”. The name of the Respondent is “Medo Tekstil Elektronik Al Sat Tic Ltd”. The abbreviated words “Al” and “Sat” and Tic are short for “Alim” and “Satim” and “Ticaret” which mean in English respectively “Buying” and “Selling” and “Trade”. Accordingly, the English translation of the Respondents name is “Medo Textile Electronic Buying Selling Trade Ltd.”. In these circumstances, it seems to the Panel that the addition of “tronic” to the existing businesses “medo” term, to evoke an electronics connection, as opposed to the Turkish variant “tronik” – or in longer form “elektronik” – is entirely credible for a business seeking to portray itself as an international seller of electronic products.
Accordingly, the Panel considers that the evidence advanced by the Respondent appears to be credible and provides a clear explanation as to how the Respondent chose a domain name which it turns out is coincidentally similar to the Complainant’s trademark. The Panel also thinks the Complainant’s case as to the Respondent deliberately causing confusion, seeking to divert customers, typosquatting and so forth to be misconceived. Contrary to what the Complainant says the Panel does not think the Respondent sells similar goods. The Complaint is clearly a very successful business in the field of medical devices. The Respondent is a seller of consumer electronic devices such as memory cards. It seems fanciful to imagine any persons interested in the Complainant’s goods and services who found themselves by mistake at the Respondent’s Website would suddenly decide to do business with the Respondent rather than the Complainant. They would simply realize they were at the wrong place and correct their mistake. The Panel also notes that although the Complainant is clearly a very large and successful business (and the Panel would accept it must be well known in the field of medical electronic devices) the evidence does not support a finding that it would necessarily be universally known to persons outside that field. In these circumstances, and especially noting the above-described facts surrounding the naming of the Respondent’s company, the Panel accepts Mr. Yilmaz’s declaration that he had never heard of the Complainant prior to receiving the Complaint.
The Panel therefore concludes that on balance, so far as the Policy is concerned, the Complainant has not discharged its burden of establishing that the Respondent lacks rights or a legitimate interest in the Disputed Domain Name.
In the light of the Panel’s finding above as to legitimate interests, the Panel does not need to address this issue. It would however say that if the Respondent registered the Disputed Domain Name independently of any knowledge of the Complainant, and because of wishing to associate the existing (independently derived) “medo” part of its name with the term “tronic” as a common English way of expressing a connection with electronics – which by all appearances is its business, then that registration cannot have been in bad faith. Further there is no evidence before the Panel of any use by the Respondent which could be said to be in bad faith – the Respondent is in a different line of business and there is no plausible basis on the record before the Panel on which it could be said to be seeking to divert customers from the Complainant to the Respondent or otherwise profiting from the undoubted similarity between the Disputed Domain Name and the Complainant’s trademark.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Presiding Panelist
A. Justin Ourso III
Panelist
Ugur G. Yalçiner
Panelist
Date: September 28, 2021