Abbott Diagnostics Scarborough, Inc. v. Mark Medina
Claim Number: FA2111001974594
Complainant is Abbott Diagnostics Scarborough, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Mark Medina (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <binaxnow.us>, registered with Google 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2021; the Forum received payment on November 23, 2021.
On November 23, 2021, Google LLC confirmed by e-mail to the Forum that the <binaxnow.us> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (“the Policy”).
On November 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@binaxnow.us. Also on November 24, 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 December 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Complainant contends as follows:
Complainant, Abbott Diagnostics Scarborough, Inc., is a corporation engaged in the business of healthcare, including the development of various medical products and technologies.
Complainant has rights in the BINAXNOW mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <binaxnow.us> domain name is confusingly similar to Complainant’s BINAXNOW mark, simply adding the country code top-level domain (“ccTLD”) “.us” to the mark to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <binaxnow.us> domain name. Respondent is not licensed or authorized to use Complainant’s BINAXNOW mark and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent appears to be using the domain name to resell Complainant’s products at a profit.
Respondent registered and uses the <binaxnow.us> domain in bad faith. The at-issue domain name includes Complainant’s trademark and strongly implies a connection therewith. Respondent appears to be attempting to imply affiliation with Complainant’s mark to pursue financial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BINAXNOW mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the BINAXNOW trademark.
Respondent uses the at-issue domain name pass itself off as Complainant and to address a website that purports to sell Complainant’s products without authority to do so.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the BINAXNOW mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). 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)).
Respondent’s <binaxnow.us> domain name consists of Complainant’s BINAXNOW trademark followed by the top-level domain name “.us.” Under the Policy, the slight differences between Respondent’s domain name and Complainant’s trademark do nothing to distinguish the <binaxnow.us> domain name from Complainant’s BINAXNOW mark. Therefore, the Panel concludes that Respondent’s <binaxnow.us> domain name is confusingly similar or identical to Complainant’s BINAXNOW trademark. See Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (finding the at-issue domain name domain name is identical or confusingly similar to Complainant’s mark as the domain name consists completely of such mark and merely adds the top level domain name).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
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. See Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where respondent used complainant’s mark without authorization).
The WHOIS information for <binaxnow.us> indicates that “Mark Medina” is the domain name’s registrant and there is nothing in the record that indicates that Respondent is otherwise known by the <binaxnow.us> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
As discussed below regarding bad faith, Respondent uses the at-issue domain to attempt to pass itself off as Complainant and to offer Complainant’s products for sale without license or authorization to do so. Respondent’s use of the domain name in this manner is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor of a non-commercial or fair use under Policy ¶ 4(c)(iv). See Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (finding no rights or legitimate interests where Respondent offered Complainant’s own financial news services in the Russian language); see also G.D. Searle & Co. v. Mahony, FA 112559 (Forum June 12, 2002) (finding the respondent’s use of the at-issue domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <binaxnow.us> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s confusingly similar domain name addresses a website that purports to sell Complainant’s products without license or authorization to do so. The website advertises and offers to sell BINAXNOW COVID-19 Home Tests, specifically the ones which require a prescription. Respondent’s posted price for a 6 pack of the product is $214.99 compared to the same product for $150.00 at eMed.com. Respondent’s website has no information related to the actual Respondent. Instead, it shows Complainant’s BINAXNOW products with multiple references to Complainant (Abbott) and displays the copyright notice (© 2021 BinaxNOW US) that falsely indicates that the site is the US site for Complainant’s BINAXNOW product. Respondent is thus attempting to pass itself off as Complainant. Respondent’s use of the at-issue domain name to pass itself off as Complainant and to offer Complainant’s products for sale without authority to do so is evidence of bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii) and further indicates an attempt to exploit Complainant’s trademark so as to attract internet users for commercial gain under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods), see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Moreover, the Panel finds that Respondent registered its <binaxnow.us> domain name knowing that Complainant had trademark rights in BINAXNOW and thus in <binaxnow.us>. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of <binaxnow.us> as discussed above. Respondent’s prior knowledge further demonstrates that Respondent registered and used its <binaxnow.us> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <binaxnow.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 21, 2021
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