WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shenzhen Mindray Bio-Medical Electronics Co., Ltd. v. Laura E Torres

Case No. D2015-0771

1. The Parties

Complainant is Shenzhen Mindray Bio-Medical Electronics Co., Ltd. of Shenzhen, China, represented by Advance China IP Law Office, China.

Respondent is Laura E Torres of Hidalgo, Texas, United States of America (“U.S.”).

2. The Domain Name and Registrar

The disputed domain name <mindraymexico.com> is registered with DomainSite, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2015. On April 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 26, 2015.

The Center appointed Roberto Bianchi as the sole panelist in this matter on June 1, 2015. The Panel finds that it was properly constituted. 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.

4. Factual Background

Complainant, founded in 1991, is a leading provider of medical devices and solutions worldwide, and is listed on the New York Stock Exchange. Its main products relate to patient monitoring, life support, in-vitro diagnostics, and medical imaging. Complainant has established a distribution and service network with subsidiaries in 22 countries covering North and Latin America, with centers in Seattle, New Jersey, Miami, Stockholm, Shenzhen, Beijing, Nanjing, Chengdu, Shanghai and Xi’an. Complainant has developed a number of innovative medical products and owns over 1,400 patents.

Complainant owns the following trademarks:

The disputed domain name was registered on December 10, 2008.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends as follows:

The disputed domain name is confusingly similar to Complainant’s trademark MINDRAY. Given that the domain name suffix “.com” does not function as a distinguishing factor, the main part of the disputed domain name consists of “mindray” and “mexico”, “mindray” being the dominant part, which is identical to, and causes confusion with, the trademark MINDRAY. The “mexico” term, due to its inherent meaning as a generic word referring to the country Mexico, cannot effectively make a distinction.

Respondent has no rights or legitimate interests in respect of the disputed domain name. (See Complainant’s specific contentions as to rights and interests at section 6B infra).

The disputed domain name was registered and is being used in bad faith. Respondent registered and uses the disputed domain name while being aware of Complainant and its trademarks, which constitutes bad faith. As a result of continuous and extensive market operation and promotion, Complainant’s MINDRAY mark is widely known and recognized in the medical device industry. Thus, a close and exclusive relation has already been established between Complainant and its MINDRAY mark. Since on the website at the disputed domain name Respondent mainly is selling products under the trademark MINDRAY, Respondent should have known Complainant and its trademark well. Also, Respondent published and used a large amount of Complainant’s copyrighted product information and promotional pictures, in an unauthorized manner. Also, Respondent includes Complainant’s company background and development history, while touting itself as “Distribuidor Autorizado” on the “www.mindraymexico.com” homepage. Moreover, Respondent sold various kinds of products branded MINDRAY online, including anesthetic machines, multifunctional monitors, telemetry systems and surgical lights, with detailed classification and descriptions according to their functions. All these actions prove that Respondent actually knew or should have known of Complainant and its trademark. Under this circumstance, Respondent still registered and uses the disputed domain name without authorization from Complainant. These acts constitute obvious malice. Respondent’s registration and usage of the disputed domain name causes confusion with MINDRAY, the well-known trademark of Complainant, and would have a negative effect among the public, which is a sufficient evidence of bad faith registration and use of disputed domain name.

Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant. The “www.mindraymexico.com” website counterfeits Complainant’s official website to confuse Internet users, severely affecting the normal promotion of Complainant. To globally promote its medical devices products, Complainant has already built up its official website “www.mindray.com” in 1998 (Annex 28 to the Complaint). Without prior legal authorization from Complainant, however, Respondent named the website at the disputed domain name as “Mindray”, placed trademarks MINDRAY and design and MINDRAY at a noticeable position of the website, claimed that Lifetec, S.A. de C.V. is an authorized distributer of MINDRAY products, and set up specific contents listing Complainant’s product models and pictures for sale. Although the selling prices are not published, the contact email address displayed on website is [email protected], and the Spanish word “ventas” means “sales” in English. It is obvious that Respondent contacts with online consumers through this email address to sell products branded MINDRAY.

Complainant confirms that it has never authorized Respondent or Lifetec, S.A. de C.V. as its distributor in Mexico. The contact address and telephone number of Lifetec, S.A. de C.V. stated on the “www.mindraymexico.com” website are not the location of Complainant’s subsidiary company or its appointed service hotline. It is clear that there is no business dealing or commercial relation between Complainant and Respondent.

Respondent deliberately counterfeits Complainant’s official website, attempting to deceive Internet users and to make them mistakenly believe that the website at the disputed domain name is authorized by or related to Complainant to some extent. These acts of Respondent strongly affect the visits to Complainant’s official website as well as its normal promotion and sale of products. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of products and services on the website. The official website of Lifetec, S.A. de C.V. displayed on the website at the disputed domain name, is designed to promote nutrition and healthcare products of other brands which are in competition with Complainant. The purpose of the aforesaid acts of Respondent is to expand its own influence by exploiting the reputation of Complainant and its trademarks, to induce Internet users to visit competitors’ website or others commercial links, and to obtain improper commercial benefits, which has severely damaged the normal business operation of Complainant and obviously constitutes malice.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under the Policy, paragraph 4(a), a complainant must make out its case that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

By submitting printouts of registration certificates from various jurisdictions Complainant has proved that is has trademark rights in the MINDRAY trademark and service mark. See section 4 supra.

The Panel notes that the disputed domain name consists of the dominant element “mindray”, i.e. the MINDRAY mark, to which the geographic and generic term “mexico”, and the generic Top-Level Domain (“gTLD”) “.com” are added. Previous UDRP panels have found that the mere addition of geographical terms is inapt to distinguish the domain name in issue from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9 (“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.”) It is also well established that the addition in a domain name of a gTLD to a mark typically does nothing to distinguish the domain name from the mark.

The Panel concludes that the first element of the Policy has been met.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no trademark right in respect of the disputed domain name, and that Respondent is not a licensee of Complainant, nor has it ever been authorized by Complainant to use the trademark MINDRAY or to register it as a domain name. Complainant adds that Respondent is not in possession of any business name concerning “Mindray”, and that Respondent’s personal name is “Laura E Torres”, which differs in pronunciation and spelling from Complainant’s trademark MINDRAY. Complainant further states that Respondent has no other rights or interests in the disputed domain name based on reselling products with MINDRAY mark on its website. Without authorization expressed by a trademark holder, the act of reselling does not directly generate any right for the seller to use a trademark registered as domain name. Respondent has not been well-known in the public or successfully obtained legitimate rights and interests in the disputed domain name either.

Complainant also contends that on the website at the disputed domain name Respondent offers goods and services for commercial gain rather than with a bona fide intent because Respondent touts itself as “Distribuidor Autorizado” (authorized distributor in English) to sell products under the MINDRAY mark misleadingly to divert consumers and to tarnish the MINDRAY trademark. Also, Respondent does not precisely reveal its relation to Complainant. Thus Respondent cannot plead legitimate rights and interests in the disputed domain name on the ground of a bona fide offering.

In the Panel’s opinion these contentions, together with the available evidence, amount to a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. As shown on Respondent’s website at the disputed domain name during a visit conducted by the Panel on June 11, 2015, the initial page of the website contains text in Spanish in which Respondent, under the legends “MINDRAY” and “Lifetec Distribuidor Autorizado”, and by using the pronoun “We”, directly impersonates Complainant in sentences like the following:

“During the last 18 years we have become the main developer, manufacturer and marketer of medical appliances in the world.” and,

“In order to guarantee the users of our equipment a perfect functioning we have appointed as an Authorized Distributor for Mexico Lifetec, S.A. de C.V. Lázaro Cárdenas 214 - 2º Piso Col. Residencial San Agustín 66260 San Pedro Garza Garcia NL Tel xxxxx Fax xxxxxxxwww.lifetec.com.mx We consider that the experience of Lifetec adds post-sale value to the quality of our products”.

In the Panel’s opinion this statement reveals Respondent’s lack of rights or legitimate interests in the disputed domain name. In fact Respondent not only fails to accurately disclose its relationship with Complaint (or lack of it), but it also claims that Lifetec S.A. de C.V. has been appointed an authorized distributor in Mexico by Complainant, which does not appear to be true. In fact, on the “www.mindraymexico.com” website Respondent indicates Lifetec S.A. de C.V. as a distributor for Complainant, whose website, as stated on the website at the disputed domain name, is “www.lifetec.com.mx”. The Panel found during a visit to the latter website conducted on June 11, 2015 that Lifetec presents itself as a distributor for numerous international manufacturers other than Complainant. This means that Respondent does not sell only MINDRAY products, as required by the consensus view of UDRP panels regarding the rights of resellers, but instead is using Complainant’s mark to direct Internet users presumably looking for Complainant or at least for an official representative or distributor for Complainant in Mexico, to another website, “www.lifetec.com.mx”, where medical equipment manufactured by competitors of Complainant is being offered. See Paragraph 2.3 of the WIPO Overview 2.0 (“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark. However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>).”)

It is a consensus view that a complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests, and that once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See WIPO Overview 2.0, paragraph 2.1.

The Panel notes that Respondent failed to submit any allegation or evidence that might allow the Panel to infer anything in favor of Respondent.

In conclusion, the Panel finds that Complainant has made out its case that Respondent lacks any rights or interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant has shown that it registered the mark MINDRAY in various jurisdictions before the disputed domain name was registered. Two of these trademark registrations were made in the United States, the country of residence of Respondent, while other three were made in Mexico, the country where Lifetec S.A. de C.V operates (see section 4 supra). Complainant has also shown, that Respondent is using Complainant’s logo and copyrighted texts on the “www.mindraymexico.com” website, and that Respondent is impersonating Complainant and is presenting itself as an authorized distributor for Complainant in Mexico.

In the Panel’s opinion, these circumstances clearly indicate that Respondent knew of Complainant and its MINDRAY marks, and that it targeted both at the time of the registration of the disputed domain name. See Vifor (International) Ltd. v. Glenn Freeman, WIPO Case No. D2014-2065 (“The fact of impersonation shows that Respondent knew of Complainant’s trademark when registering the disputed domain name.”) In other words, the registration of the disputed domain name was in bad faith.

Also, it has been shown that Respondent is using the disputed domain name to direct Internet users presumably looking for Complainant or at least for an official representative or distributor for Complainant in Mexico, to another website, “www.lifetec.com.mx”, where medical equipment manufactured by competitors of Complainant is being offered. This shows that by using the disputed domain name Respondent intentionally attempted to attract, for commercial gain, Internet users to its website (“www.mindraymexico.com”) or other on-line location (the “www.lifetec.com.mx” website), by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location, which is a circumstance evidencing registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).

In addition, it has been shown that on the website at the disputed domain name Respondent is impersonating Complainant, which is a further indication of bad faith. See Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260 (“The adoption and use of a domain name for the purposes of such impersonation does not provide a right or legitimate interest under the Policy. It also involves registration and use in bad faith.)”

The Panel concludes that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mindraymexico.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: June 12, 2015