Medline Industries, Inc. v. nkwetta daniel
Claim Number: FA2005001894985
Complainant is Medline Industries, Inc. (“Complainant”), represented by Kristine A. Bergman of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is nkwetta daniel (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlinesmask.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2020; the Forum received payment on May 5, 2020.
On May 6, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <medlinesmask.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@medlinesmask.com. Also on May 7, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <medlinesmask.com> domain name is confusingly similar to Complainant’s MEDLINE mark.
2. Respondent does not have any rights or legitimate interests in the <medlinesmask.com> domain name.
3. Respondent registered and uses the <medlinesmask.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Medline Industries, Inc., is a manufacturer and distributor of healthcare supplies in the United States. Complainant holds a registration for the MEDLINE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 894,673, registered July 14, 1970).
Respondent registered the <medlinesmask.com> domain name on April 10, 2020, and uses it to attract Internet users to its parked website.
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."
Paragraph 4(a) of the Policy requires that 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has established rights in the MEDLINE mark for the purposes of Policy ¶ 4(a)(i) based on registration of the mark with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <medlinesmask.com> domain name uses Complainant’s MEDLINE mark and adds the letter “s,” the descriptive term “mask” and the “.com” generic top-level domain (“gTLD”). These changes do not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i)”); see also LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). Accordingly, the Panel finds that Respondent’s <medlinesmask.com> domain name is confusingly similar to Complainant’s MEDLINE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <medlinesmask.com> domain name, as Respondent is not commonly known by the disputed domain name, and Complainant has not authorized, licensed, or otherwise permitted Respondent to use its MEDLINE mark. The WHOIS information for the disputed domain name lists the registrant as “nkwetta daniel.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant also argues that, given Complainant’s longstanding rights in the MEDLINE mark, there is no way Respondent could have rights or legitimate interests in the disputed domain name. Where a domain name incorporates the famous mark belonging to another entity, the Panel may find the respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a famous mark belonging to another entity). Complainant argues that there is no evidence that Respondent has ever used the MEDLINE mark apart from the infringing domain name and resolving website. The Panel agrees and finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <medlinesmask.com> domain name in bad faith, as Respondent uses the domain name to attempt to cause confusion with Complainant and attract users to its parked website. The use of a disputed domain name to divert Internet users to a parked webpage can show bad faith registration and use under Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain); see also Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Complainant argues that the inclusion of the MEDLINE mark in the domain name will divert users searching for Complainant to the disputed domain name, which has been shown to resolve to a parked webpage. The Panel agrees and finds bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant contends that Respondent registered and uses the <medlinesmask.com> domain name in bad faith because Respondent registered the disputed domain name to take advantage of the goodwill of Complainant and the global pandemic causing an unprecedented demand for personal protective equipment including masks, evidencing opportunistic bad faith. The registration of a domain name that incorporates a mark shortly following events pertaining to a mark or a complainant, in an attempt to trade off the goodwill of the mark, can show opportunistic registration in bad faith under Policy ¶ 4(a)(iii). See Atlantic Automotive Corp. v. michelle popp, FA 1787763 (Forum June 26, 2018) (finding bad faith where the respondent registered the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names in anticipation of the pending acquisition and rebranding of a car dealership, holding: “The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith.”). The Panel notes that Respondent attempts to capitalize on the increased demand for personal protective equipment due to the Covid-19 pandemic by registering a domain name including the word “masks,” along with Complainant’s MEDLINE mark. The Panel finds that this use constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant asserts that, given the renown of the MEDLINE mark and Respondent’s attempt to trade off the goodwill of Complainant, Respondent must have registered the disputed domain name with actual knowledge of Complainant’s rights in the MEDLINE mark. The Panel agrees and finds Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medlinesmask.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 3, 2020
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