Mayo Foundation for Medical Education and Research v Deepak Phalswal

WIPO Case No. D2024-1597

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Mayo Foundation for Medical Education and Research v. Deepak Phalswal,
Simon Rahman, Maulik Solanki, Cut Min, Arrival

Case No. D2024-1597

1. The Parties

The Complainant is Mayo Foundation for Medical Education and Research, United States of America

(“United States”), represented by Dorsey & Whitney LLP, United States.

The Respondents are Deepak Phalswal, India; Simon Rahman, Bangladesh; Maulik Solanki, India; and

Cut Min, Arrival, Indonesia.

2. The Domain Names and Registrars

The disputed domain name <mayoclinicpatient-portal.com> is registered with Cosmotown, Inc., the disputed
domain name <mayoclinicpatientportal.live> is registered with Spaceship, Inc., the disputed domain name
<mayo-clinicpatientportal.online> is registered with NameCheap, Inc., and the disputed domain name

<mayoclinicpatientportals.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (collectively the

“Registrars”, and the disputed domain names are hereinafter referred to as the “Domain Names”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2024.

On April 17, 2024, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On April 17, 18 and 20, 2024, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent (REDACTED FOR PRIVACY, Privacy service provided by Withheld for Privacy ehf / No information provided / REDACTED FOR PRIVACY, Whois Privacy Protection Foundation) and contact information in the Complaint.

The Center sent an email communication to the Complainant on April 22, 2024 with the registrant and
contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the
Complainant to either file separate complaint(s) for the Domain Names associated with different underlying
registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that
all Domain Names are under common control. The Complainant filed the first amended Complaint on
April 27, 2024.

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Between April 24 and 29, 2024, several Domain Name registrants sent email communications to the Center,
the Center sent an email regarding possible settlement. On May 6, 2024, the Complainant requested to
suspend the proceeding. On May 6, 2024, the Center confirmed that the proceeding was suspended until
June 5, 2024. On June 6, 2024, the Center dismissed the proceeding in regards to five domain names no
longer in dispute and notified the reinstitution of the proceeding regarding five domain names in dispute.

The Complainant filed the second amended Complaint on June 18, 2024.

The Center verified that the Complaint together with the first and second amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on June 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2024. On June 21, 2024, several Domain Name registrants sent email communications to the Center on to explore possible settlement. On July 1, 2024, the Complainant requested to suspend the proceeding. On the same day, the Center confirmed that the proceeding was suspended until July 31, 2024. On August 22, 2024, the Center dismissed the proceeding in regards to one domain name no longer in dispute and notified the reinstitution of the proceeding of the four Domain Names

at issue in this Decision, the Response due date was August 29, 2024. The Respondents didn’t submit any

formal Response by the due date. The Center sent commencement of panel appointment process email to
the Parties on August 30, 2024.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 4, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a wholly owned subsidiary of Mayo Clinic. Mayo Clinic is a global nonprofit medical center established in 1914. It employs today approximately 73,000 personnel comprising physicians, scientists, and allied health staff. It owns and operates Mayo Clinic Health System, which consists of 60 hospitals and clinics across Minnesota, Iowa, and Wisconsin. The Complainant maintains a significant Internet presence and has registered domain names such as <mayoclinic.org>, <mayo.edu>, and

<mayoclinic.com> that resolve to the Complainant’s website.

The Complainant has a large portfolio of trademarks, e.g. United States Registration No. 1,670,238 for
MAYO (registered on December 31, 1991); and United States Registration No. 1,614,853 for MAYO CLINIC
(registered on September 25, 1990).

The Domain Names have been registered between April 11, 2022 and July 19, 2023. The Domain Names have resolved to alleged patient portal and provides numerous pages and details regarding log-in procedure, and some of the webpages include advertisements and links to reset passwords that may not be sound.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Names are under common control for the following reasons:

- The registrant information indicates a majority of the Respondents are based in India, with the

remainder claiming addresses outside of India but still in the South Asian region.

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- The Domain Names are similar and each one incorporates the MAYO Marks in their entirety with non- distinctive, generic, or geographical terms, with the majority of the Domain Names also incorporating the

term “portal”.

- A majority of the Domain Names were registered to the same registrar or a subsidiary of the same

registrar.

- A majority of the Domain Names are associated with the same server.

- The Domain Names resolve to identical or nearly identical websites, with identical or nearly identical formatting and content.

The Complainant provides evidence of trademark registrations and points out that its trademark has been

recognized in former UDRP decisions. The Complainant’s trademark is incorporated in its entirety in all four

of the Domain Names.

The Complainant argues that the Respondents have no rights or legitimate interests in respect of the Domain demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The Domain Names are not descriptive or geographically significant words in which the Respondents might have a claim to rights of use.

Names. The Complainant has not authorized the Respondents to use its trademarks in any way. The

The Complainant argues that the Domain Names were registered in bad faith as the Respondents clearly

had actual knowledge of the Complainant’s trademark rights at the time of registration of the Domain Names.

It is clear from the use of the Domain Names that the Respondents’ intention is to induce Internet users into

entering their usernames and passwords to obtain personal information for fraudulent purposes.

B. Respondents

The Respondents did not reply to the Complainant’s contentions. However, the Center received several

informal email communications from each of the Respondents regarding possible settlement, which did not

come to fruition.

6. Discussion and Findings

6.1. Procedural matters

The Complaint was filed in relation to nominally different domain name registrants. The Complainant argues that the domain name registrants are the same entity or under common control. The Complainant requests the consolidation of the Complaint against the multiple domain name registrants pursuant to paragraph 10(e) of the Rules.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that

the domain names are registered by the same domain name holder. In addressing the Complainant’s

request, the Panel will consider whether (i) the disputed domain names or corresponding websites are

subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO

Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”),

section 4.11.2.

As to common control, the Panel notes that the Domain Names are registered at different dates with different registrant details. The fact that the registrants are listed with address in India or other countries in the South Asian region holds by itself little weight. The Complainant has not documented its allegation that the four

Domain Names left in this case “were registered to the same registrar or a subsidiary of the same registrar”.

Even if there appears to be a connection between two of them (Namecheap, Inc. and Cosmotown, Inc.), based on the address, the Complainant has not documented any joint ownership between the registrars.

The same goes for the allegation that a “majority of the Domain Names are associated with the same

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server”. Only two of the Domian Names (<mayoclinicpatientportals.com> and <mayoclinicpatient-

portal.com>) have the server service supplied by the same company, but with different server addresses.

However, the Panel, notes that the four Domain Names have a very similar structure and has examined the

content the Domain Names resolve to. The Complaint’s allegation is that the “Domain Names resolve to

identical or nearly identical websites, with identical or nearly identical formatting and content”. The Panel has

reviewed the Complainant’s evidence and agrees that the four Domain Names resolve to similar websites

that all target the Complainant through a similar set up. The Panel concludes that the Domain Names are
probably under common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. The Respondents have been granted the right to comment on the consolidation request, but opted not to.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different domain name

registrants (hereinafter referred to as “the Respondent”) in a single proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The test for confusing similarity involves a reasoned but relatively straightforward comparison between the

Complainant’s trademark and the Domain Names. See WIPO Overview 3.0, section 1.7. The Complainant

has established that it has rights in the trademark MAYO CLINIC. Each Domain Name incorporates the

Complainant’s trademark in its entirety and thus, the Complainant’s trademarks are recognizable within the

Domain Names. The additions of “patientportal” as well as the inclusion of hyphens do not prevent a finding

of confusing similarity. See WIPO Overview 3.0, section 1.8. For the purpose of assessing under paragraph

4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a

standard registration requirement. See WIPO Overview 3.0, section 1.11.1.

Based on the available record, the Panel finds the Domain Names are confusingly similar to the trademark in which the Complainant has rights. The first element of paragraph 4(a) the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the respondent may demonstrate rights or legitimate interests in a disputed domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible

task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to
come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

See WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the

Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has not rebutted the

Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating

rights or legitimate interests in the Domain Names. There is no evidence of the Respondent’s use of, or

demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in
connection with a bona fide offering of goods or services. Moreover, the composition of the Domain Names
carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by
the Complainant. See WIPO Overview 3.0, section 2.5.1.

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Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The composition and use of the Domain Names suggest that the Respondent was aware of the Complainant and its prior rights when the Respondent registered the Domain Names. The Respondent has failed to provide any evidence of actual or contemplated good faith use of the Domain Names, and no rights or legitimate interests are evident on the record. The use of the Domain Names suggests that the

Respondent’s intention has been to induce Internet users into entering their usernames and passwords to

obtain personal information for fraudulent purposes.

For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. The third element of the Policy has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders the disputed domain names <mayoclinicpatient-portal.com>, <mayoclinicpatientportal.live>,

<mayo-clinicpatientportal.online>, and <mayoclinicpatientportals.com> transferred to the Complainant.

/Mathias Lilleengen/

Mathias Lilleengen

Sole Panelist
Date: September 10, 2024