Medline Industries, Inc. v. domain admin
Claim Number: FA2006001901106
Complainant is Medline Industries, Inc. (“Complainant”), represented by Janet A. Marvel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is domain admin (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <curadpreppedkit.com>, registered with Dynadot, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 19, 2020; the Forum received payment on June 19, 2020.
On June 23, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <curadpreppedkit.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 June 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@curadpreppedkit.com. Also on June 25, 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 July 21, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the CURAD trademark based on its portfolio of trademark registrations including those described below and its claimed use of the mark since it acquired the CURAD line of medical products in 2007.
Complainant states that its CURAD brand was first used by its predecessor in title in 1951 for medical bandages and is now used by Complainant for a wide range of products including gloves, masks, first aid kids, alcohol prep pads, gauze, antibacterial bandages, athletic bandages, bandage scissors, cotton balls, eye patches, spray bandages, joint support braces, tapes, and wraps. Complainant asserts that as result of Complainant’s extensive sales and advertising efforts, Complainant’s CURAD mark has become famous and consumers throughout the United States and the world have come to recognize CURAD as an identifier of Complainant and its products.
Complainant alleges that the disputed domain name is confusingly similar to its CURAD trademark arguing that the disputed domain name includes the CURAD mark in its entirety.
Complainant adds that the disputed domain name entirely copies the wording of Complainant’s pending federal application for CURAD PREPPED KIT & Design, which was filed just days prior to Respondent’s registration of the disputed domain name. See Alive Hospice, Inc. v. Texas International Property Associates – NA NA, FA 1211670 (Forum Aug. 14, 2008) (finding the disputed domain name to be confusingly similar to complainant’s pending federal application, which was filed before the registration of the disputed domain name).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name asserting that Respondent is not generally known by the disputed domain name, nor has Respondent acquired any trademark or service mark rights in the name or mark and upon information and belief, Respondent has never used CURAD except in the disputed domain name and the website to which it resolves. See Chevron Intellectual Property LLC v. Fred Wallace, FA 150600 (Forum July 27, 2015) (finding that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.”).
Complainant submits that Respondent is identified as “Super Privacy Service LTD c/o Dynadot” in the registration information in the Registrar’s published WHOIS database listing for the disputed domain name. After the original complaint was filed, the Registrar revealed Respondent’s identity to be “domain admin.” See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (respondent had no rights or legitimate interests in the disputed domain name when “Privacy Service” was listed as the registrant of the disputed domain name).
In addition, Complainant asserts that Respondent lacks authorization to use Complainant’s mark because Complainant has not licensed or otherwise permitted Respondent to use the CURAD mark in connection with the disputed domain name. Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (“Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant adds that its longstanding trademark rights would prevent Respondent from acquiring such rights. See Pepsico, Inc. v. Becky a/k/a Joe Cutroni, FA 117014 (Forum Sept. 3, 2002) (“The notoriety and fame of Complainant’s PEPSI and PEPSI-COLA trademarks, due to Complainant’s popular soft drink products, creates a presumption that no one else could be commonly known by the mark or the trade name.”).
Complainant refers to a screenshot of the webpage to which the disputed domain name resolves which is exhibited in an annex to the Complaint which illustrates that Respondent is offering the disputed domain name for sale, which can also be indicative of bad faith. Complainant argues that this further indicates that Respondent does not have rights or legitimate interests in the disputed domain name. See Capital One Financial Corp. v. haimin xu, FA1812001819364 (Forum Jan. 8, 2019) (“A respondent’s offer to sell a domain name to the general public can indicate the respondent lacks rights and legitimate interests in the name per Policy ¶ 4(a)(ii).”).
Complainant alleges that the disputed domain name was registered and is being used in bad faith alleging that Respondent registered the disputed domain name long after Complainant adopted, used, and registered its CURAD mark, and long after the CURAD mark became well-known and famous. Complainant adds that Respondent had constructive notice of Complainant’s trademark rights in CURAD as a result of Complainant’s U.S. trademark registrations and pending CURAD PREPPED KIT & Design application. See Zagat Survey, LLC v. Friedmans Constr. Inc., FA 0210304 (Forum Jan. 2, 2004) (finding that respondent had constructive knowledge of complainant’s rights based on complainant’s U.S. trademark registration and that respondent’s registration of the disputed domain name, which was confusingly similar thereto, constituted bad faith).
Complainant alleges that the disputed domain name, <curadpreppedkit.com> to take advantage of Complainant’s well-known brand of healthcare products and in particular to take advantage of Complainant’s goodwill and reputation at a time of high demand for PPE during the COVID-19 pandemic.
Complainant asserts that the registration of the disputed domain name on June 8, 2020 closely followed upon Complainant’s United States trademark application to register CURAD PREPPED KIT & Design, serial number 88/947,577 for “medical supply kits containing a mask, gloves and alcohol prep pads” which was filed on June 4, 2020.
Moreover, Complainant submits that the disputed domain name resolves to a webpage offering the disputed domain name for sale, which is also indicative of bad faith. See Marvell International Ltd. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2004001893552 (Forum May 20, 2020); (finding bad faith where the respondent offered the disputed domain name for sale).
Complainant adds that consumers would logically expect that Complainant owns <curadpreppedkit.com>, just as Complainant owns many other curad-formative domain names, including <curad.com>, <curad.net>, <curad.biz>, <curad.info>, <curad.name>, and <curad.us>. See Meow Media Inc. v. John Basil a/k/a American Software Factory Corp., Inc., FA0205000113280 (Forum Aug. 20, 2002) (ordering transfer of <persiankitty.us> : “[T]he use of the domain name at issue by the Respondent would certainly cause confusion among internet users as to the source or sponsorship of the website, as Complainant currently holds registrations for the majority of the available generic top-level domains, more specifically, ‘.com,’ ‘.net,’ ‘.info,’ and ‘.biz.’”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer and distributor of healthcare supplies, including personal protection equipment “PPE”, on which it uses the CURAD mark. Complainant has adduced evidence of its ownership of the following portfolio of United States trademark registrations for the CURAD mark including:
· United States federal trademark registration CURAD, registration number 3,460,619, registered on the Principal Register on July 8, 2008 for goods in international class 5;
· United States federal trademark registration CURAD, registration number 3,375,644, registered on the Principal Register on January 29, 2008 for goods in international class 5;
· United States federal trademark registration CURAD, registration number 3,738,149, registered on the Principal Register on January 12, 2010 for goods in international classes 10, 21 and 28;
· United States federal trademark registration CURAD, registration number 3,990,305, registered on the Principal Register on July 5, 2011 for goods in international class 10;
· United States federal trademark registration CURAD, registration number 3,935,578, registered on the Principal Register on March 22, 2011 for goods in international class 5;
· United States federal trademark registration CURAD, registration number 4,679,837, registered on the Principal Register on January 27, 2015 for goods international class 10;
· United States federal trademark registration CURAD, registration number 4,609,834, registered on the Principal Register on September 23, 2014 for goods in international class 10;
· United States federal trademark registration CURAD, registration number 4,634,327, registered on the Principal Register on November 4, 2014 for goods in international class 5;
· United States federal trademark registration CURAD & Design. registration number 5,546,199, registered on the Principal Register on August 21, 2018 for goods in international classes 5 and 10; and
· United States federal trademark registration CURAD & Design. registration number 5,503,319, registered on the Principal Register on June 26, 2018 for goods in international classes 5 and 10.
Complainant also owns a number of Internet domain names that incorporate the CURAD mark including <curad.com> since 2007 and also owns <curadusa.com> and <curad.net>, which were registered in 2000 and 2004, respectively.
The disputed domain name, <curadpreppedkit.com>, was registered on June 8, 2020 and resolves to a webpage on which it is advertised for sale for $990.00.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name. The identity of Respondent, who the Registrar has confirmed is the registrant of the disputed domain name, is concealed on the Registrar’s published WhoIs as Respondent has availed of a proxy service.
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”).
Complainant has adduced uncontested convincing evidence of its rights in the CURAD trademark established by its ownership of its portfolio of United States trademark registrations described above and the goodwill accrued by the use of the mark by Complainant and its predecessor in title on medical products since 1951.
The disputed domain name <curadpreppedkit.com> is composed of Complainant’s trademark “curad” in combination with the elements “prepped” and “kit” in addition to the generic Top Level Domain (gTLD) extension <.com>.
Of relevance in this case is that the letters “PPE” which have become a widely recognized and used commonplace acronym for personal protection equipment is to be found within the element “prepped”. The element “prepped” is indicative of something being prepared. Both “PPE” and “prepped” as well as the word “kit” are descriptive and generic.
Complainant’s trademark is therefore the dominant and only distinctive element of the disputed domain name.
For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
Having considered and compared the disputed domain name and Complainant’s mark, this Panel finds that the disputed domain name is confusingly similar to the trademark CURAD in which Complainant has rights. This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name asserting that Respondent is not generally known by the disputed domain name; that Respondent is identified as “Super Privacy Service LTD c/o Dynadot” in the registration information in the Registrar’s published WHOIS database listing for the disputed domain name; that after the original complaint was filed, the Registrar revealed Respondent’s identity to be “domain admin.”; that Respondent has not acquired any trademark or service mark rights in the CURAD name or mark; that upon information and belief, Respondent has never used CURAD except in the disputed domain name and the website to which it resolves; that Respondent is not authorized to use Complainant’s mark because Complainant has not licensed or otherwise permitted Respondent to use the CURAD mark in connection with the disputed domain name; that the screenshot of the webpage to which the disputed domain name resolves which is exhibited in an annex to the Complaint illustrates that Respondent is offering the disputed domain name for sale.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name <curadpreppedkit.com> was registered on June 8, 2020, long after Complainant adopted, used, and registered its CURAD mark.
It is implausible that the registrant was unaware of Complainant’s distinctive, long established CURAD trademark, which is the dominant and only distinctive element of the disputed domain name when the disputed domain name was chosen and filed.
This Panel finds that on the balance of probabilities the disputed domain name was registered in order to take predatory advantage of Complainant’s reputation and goodwill in the CURAD mark and brand.
Complainant has adduced a screenshot of the webpage to which the disputed domain name resolves which shows that the disputed domain name is on offer for sale to the public for $990.00.
There is no evidence or circumstances on record indicating that the disputed domain name was registered or acquired for any reason other than for the primary purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the CURAD mark or to a competitor of Complainant, or to another third party with no rights or legitimate interests in the disputed domain name or the CURAD mark, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. On the balance of probabilities Respondent is taking predatory advantage of Complainant’s mark in the disputed domain name with the intent to make a profit in bad faith.
For completeness, this Panel notes that Complainant has also asserted, but has not adduced any evidence to show, that it recently applied on June 4, 2020, to register the trademark CURAD PREPPED KIT & Design serial number 88/947,577 with the United States Patent and Trademark Office for “medical supply kits containing a mask, gloves and alcohol prep pads”.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith as Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <curadpreppedkit.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 21, 2020
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