Medline Industries, Inc. v. Jinkon / 胡雪
Claim Number: FA2012001925299
Complainant is Medline Industries, Inc. (“Complainant”), represented by Janet A. Marvel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Jinkon / 胡雪 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medline.plus>, registered with Xiamen ChinaSource Internet Service Co., Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2020; the Forum received payment on December 16, 2020. The Complaint was received in English.
On December 21, 2020, Xiamen ChinaSource Internet Service Co., Ltd confirmed by e-mail to the Forum that the <medline.plus> domain name is registered with Xiamen ChinaSource Internet Service Co., Ltd and that Respondent is the current registrant of the name. Xiamen ChinaSource Internet Service Co., Ltd has verified that Respondent is bound by the Xiamen ChinaSource Internet Service Co., Ltd 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 December 28, 2020, the Forum served the English language Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of January 19, 2021 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@medline.plus. Also on December 28, 2020, the English and Chinese language 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 January 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making the presumptive language of the proceedings to be Chinese. That is so because of the provisions of UDRP Rule 11(a) and because Respondent entered into a registration agreement in Chinese. That would mean that the case should be recommenced with a Complaint being resubmitted in Chinese. However, the same Rule gives a discretion to the Panel to determine that the language of the proceeding should be a language other than that of the registration agreement. In exercising that discretion, the Panel must take into consideration all of the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends the proceedings should be conducted in English because the disputed domain name contains the English tradename and mark MEDLINE and the English word “plus” for the generic top level domain (“gTLD”). Additionally, Complainant contends that Respondent uses the disputed domain name to target English speakers in the United States. Furthermore, Complainant is not conversant in Chinese and translating documents would require additional time and expense.
Accordingly, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is conversant and proficient in the English language. After considering all of the circumstance of the present case, the Panel therefore finds that the proceeding should be in English and that the matter may go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, Medline Industries, Inc., manufactures and distributes healthcare supplies in the United States. Complainant has rights in the MEDLINE mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 897,881, registered on September 1, 1970). See Compl. Ex. C. Respondent’s <medline.plus> domain name is confusingly similar to Complainant’s mark because it simply adds the “.plus” gTLD to Complainant’s MEDLINE mark.
Respondent does not have rights or legitimate interests in the <medline.plus> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the MEDLINE mark.
Respondent registered and uses the <medline.plus> domain name in bad faith. Respondent offers to sell the disputed domain name. Additionally, Respondent’s registration and use of the disputed domain name constitutes opportunistic bad faith. Furthermore, Respondent has constructive knowledge of Complainant’s rights in the MEDLINE mark based on registration of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that manufactures and distributes healthcare supplies.
2. Complainant has established its trademark rights in the MEDLINE mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 897,881, registered on September 1, 1970).
3. Respondent registered the disputed domain name on December 7, 2020.
4. There are no facts showing that Respondent has a right or legitimate interest in the disputed domain name.
5. The evidence has established facts showing that Respondent registered and has used the disputed domain name in bad faith.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MEDLINE mark based on the registration of the mark with the USPTO (e.g., Reg. No. 897,881, registered on September 1, 1970). See Compl. Ex. C. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Since Complainant provides evidence of registration of the MEDLINE mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MEDLINE mark . Complainant argues that Respondent’s <medline.plus> domain name is confusingly similar to Complainant’s mark because it simply adds the “.plus” gTLD to Complainant’s MEDLINE mark. The addition of a gTLD to a mark is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”). Thus, the Panel finds that the disputed domain name is confusingly similar to the MEDLINE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MEDLINE mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on December 7, 2020;
(c) Complainant has not licensed or permitted the Respondent to use the MEDLINE mark in connection with the disputed domain name;
(d) Complainant argues that Respondent is not commonly known by the disputed domain name and that Complainant has not licensed or permitted Respondent to use the MEDLINE mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of license, permission, or authorization to use a mark constitutes a further showing that a respondent lacks rights in a mark. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information lists “Jinkon / 胡雪” as the registrant and there is no information suggesting Complainant has authorized Respondent to use the MEDLINE mark in any way. See Amend. Compl. Ex. B. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <medline.plus> domain name in bad faith because Respondent offers to sell it. Under Policy ¶ 4(b)(i), an offer to sell a disputed domain name may suggest bad faith. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot of the resolving webpage for the disputed domain name which offers the domain name for sale. See Compl. Ex. F. Therefore, as the Panel finds that Respondent intended to offer the disputed domain name for sale upon registration, the Panel finds bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent’s registration and use of the disputed domain name to capitalize on Complainant’s goodwill demonstrates bad faith. When a disputed domain name contains a famous mark and would obviously imply a connection to a complainant, bad faith may be found under Policy ¶ 4(a)(iii). See Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) (“[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”); see also Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” it’s very use by someone with no connection to these products can evidence opportunistic bad faith). Complainant contends that consumers would logically assume the disputed domain name belongs to Complainant since it is similar to other MEDLINE-formative domain names and that Respondent registered the <medline.plus> domain name to take advantage of the goodwill associated with the mark. See Compl. Ex. E. Therefore, as the Panel agrees with Complainant, it finds bad faith.
Thirdly, Complainant contends that Respondent has constructive knowledge of Complainant’s rights in the MEDLINE mark based on registration of the mark. Constructive knowledge is insufficient for a finding of bad faith; however, Panels have found actual knowledge of a complainant’s rights in a mark when the disputed domain name is identical to the mark and circumstances suggest a respondent had actual knowledge. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Therefore, as the Panel finds that Respondent had actual knowledge of Complainant’s rights in the MEDLINE mark, the Panel also finds bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medline.plus> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 25, 2021
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