Medline Industries, Inc. v. Milen Radumilo
Claim Number: FA2106001950940
Complainant is Medline Industries, Inc. (“Complainant”), represented by Ashly Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlineintranet.com>, registered with Tucows Domains Inc..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2021; the Forum received payment on June 14, 2021.
On June 15, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <medlineintranet.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@medlineintranet.com. Also on June 16, 2021, 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 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a manufacturer and distributor of healthcare supplies. Complainant has rights in the MEDLINE trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 897,881, registered Sep. 1, 1970). Respondent’s <medlineintranet.com> domain name is identical or confusingly similar to Complainant’s MEDLINE trademark because it merely adds the descriptive term “intranet” and the “.com” generic top-level domain (“gTLD”) to the trademark.
Respondent does not have rights or legitimate interests in the <medlineintranet.com> domain name because Respondent is not commonly known by the disputed domain name and is not licensed or permitted to use Complainant’s MEDLINE trademark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to resolve to a website connected to malware schemes.
Respondent registered and uses the <medlineintranet.com> domain name in bad faith. Respondent suggests affiliation with Complainant to take advantage of the goodwill associated with Complainant’s mark. Further, Respondent uses the disputed domain name to spread malicious software.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 897,881 MEDLINE (word), registered September 1, 1970 for goods in Int. Class 25
- No. 894,673 MEDLINE (word), registered July 14, 1970 for goods in Int. Classes 24 and 27
- No. 894,684 MEDLINE (word), registered July 14, 1970 for goods in Int. Classes 5 and 10
- No. 1,810,374 MEDLINE (word), registered December 14, 1993 for goods in Int. Classes 3, 5, 10 and 16
- No. 3,778,944 MEDLINE (word), registered April 20, 2010 for services in Int. Class 44
- No. 3,311,664 MEDLINE (fig), registered October 16, 2007 for goods and services in Int. Classes 3, 5, 9, 10, 12, 16, 20, 21, 24, 25, 27 and 35
- No. 3,311,898 MEDLINE (word), registered October 16, 2007 for goods and services in Int. Classes 3, 9, 11, 12, 16, 20, 21, 22, 24, 25, 27 and 35
- No. 3,365,696 MEDLINE (word), registered January 8, 2008 for goods in Int. Classes 5 and 10
- No. 3,301,915 MEDLINE (word), registered October 2, 2007 for goods in Int. Class 24
The disputed domain name was registered on March 31, 2021.
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 Complainant claims rights in the MEDLINE trademark based upon registration with the USPTO. Registration of a trademark with a governmental authority such as the USPTO is generally sufficient to establish rights in the trademark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration with the USPTO (e.g., Reg. No. 897,881, registered Sep. 1, 1970). Thus, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <medlineintranet.com> domain name is identical or confusingly similar to Complainant’s MEDLINE trademark because merely adds the descriptive term “intranet” and the “.com” gTLD to the trademark. Per Policy ¶ 4(a)(i), minor additions such as generic/descriptive terms and a gTLD are generally insufficient to negate confusing similarity between a domain name and the trademark it incorporates. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel agrees with Complainant and finds that Respondent’s disputed domain name is at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant claims that Respondent does not have rights or legitimate interests in the <medlineintranet.com> domain name because Respondent is not commonly known by the disputed domain name and is not licensed or permitted to use Complainant’s MEDLINE trademark. 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 authorization to use a trademark constitutes further showing that a respondent lacks rights in a trademark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Milen Radumilo” as the registrant and no information suggest that Complainant has authorized Respondent to use the MEDLINE trademark in any way. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to use the <medlineintranet.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, but rather uses the domain name to resolve to a website connected to malware schemes. Use of a disputed domain name to spread malicious software to users is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see also Hilton Hotels Corp. v. Padonack, FA 1043687 (Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Complainant provides a screenshot of the webpage resolving at the disputed domain, claiming that the webpage is connected to malware schemes and other malicious downloads. The Panel agrees, and finds that Respondent does not use the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant argues that Respondent registered and uses the <medlineintranet.com> domain name in bad faith as Respondent suggests affiliation with Complainant to take advantage of the goodwill associated with Complainant’s trademark. Use of a complainant’s trademark in a domain name to capitalize on a complainant’s reputation for commercial gain evidences bad faith per Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant argues that Respondent attempts to create an association with Complainant through the use of Complainant’s MEDLINE trademark, and trades off this association for its own benefit. The Panel agrees with Complainant’s conclusion, and finds bad faith registration and use under Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent uses the <medlineintranet.com> domain name to spread malicious software in bad faith. Use of a disputed domain name to install malware onto Internet users’ computers indeed evinces bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As previously noted, Complainant provides a screenshot of the webpage resolving at the disputed domain, claiming that the webpage is connected to malware schemes and other malicious downloads. Therefore, the Panel finds bad faith registration and use under 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 <medlineintranet.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 12, 2021
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