MedicAlert Foundation United States, Inc. v. xiansheng li
Claim Number: FA2112001976065
Complainant is MedicAlert Foundation United States, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris LLP, California, USA. Respondent is xiansheng li (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medicalertapp.com>, registered with Net-Chinese 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 6, 2021; the Forum received payment on December 6, 2021. The Complaint was received in English.
On December 9, 2021, Net-Chinese Co., Ltd. confirmed by e-mail to the Forum that the <medicalertapp.com> domain name is registered with Net-Chinese Co., Ltd. and that Respondent is the current registrant of the name. Net-Chinese Co., Ltd. has verified that Respondent is bound by the Net-Chinese 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 10, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of December 30, 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@medicalertapp.com. Also on December 10, 2021, the Chinese and English 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 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration 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 in English because English is a common business language where Respondent is from, the <medicalertapp.com> domain name consists of Latin characters, and the “.com” generic top-level domain (“gTLD”) which primarily targets English speaking internet users. Additionally, translating documents would cause Complainant undue delay and expense.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant, MedicAlert Foundation United States, Inc., provides jewelry containing personal and medical information. Complainant has rights in the MEDIC ALERT mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 695,056, registered March 22, 1960). Respondent’s <medicalertapp.com> domain name is confusingly similar to Complainant’s MEDIC ALERT mark as it incorporates the entire mark and merely adds the descriptive term “app” and the “.com” gTLD to form the disputed domain name.
Respondent lacks rights or legitimate interests in the <medicalertapp.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed Respondent to use the MEDIC ALERT mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to direct users to adult-oriented content.
Respondent registered and uses the <medicalertapp.com> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by directing users to adult-oriented content for commercial gain. Additionally, Respondent had constructive and actual knowledge of Complainant’s rights in the MEDIC ALERT mark based on the registration and popularity of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is MedicAlert Foundation United States, Inc. (“Complainant”), of Turlock, CA, USA. Complaint is the owner of the numerous domestic registrations for the marks MEDICALERT and MEDIC ALERT, both of which Complainant has used continuously since at least as early as 1956 in connection with its development and distribution of jewelry containing emblems with personal and medical information thereon, and other related goods and services.
Respondent is Xiansheng Li (“Respondent”), of Singapore. Respondent’s registrar information indicates a location in Taiwan and/or China. The Panel notes that the disputed domain name was registered on or about November 16, 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”).
Complainant asserts rights in the MEDIC ALERT mark based on registration of the mark with the USPTO (e.g., Reg. No. 695,056, registered March 22, 1960). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Based on Complainant’s evidence of registration of the MEDIC ALERT mark with the USPTO, the Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <medicalertapp.com> domain name is confusingly similar to Complainant’s MEDIC ALERT mark as it incorporates the entire mark and merely adds the descriptive term “app” and the “.com” gTLD to form the disputed domain name. The addition of a descriptive term and a gTLD to a mark does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel here finds that the disputed domain name is confusingly similar to the MEDIC ALERT mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent lacks rights or legitimate interests in the <medicalertapp.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed Respondent to use the MEDIC ALERT 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 Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. 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). Here, the WHOIS information identifies “xiansheng li” as the registrant and no information or evidence is provided that indicates Complainant authorized Respondent to use the MEDIC ALERT mark in any way. The Panel here finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to direct users to adult-oriented content. Use of a disputed domain name to divert users to adult-oriented material does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Here, Complainant provides screenshots showing the disputed domain name resolves to a website featuring adult-oriented content. The Panel here finds that Respondent is not using 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).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <medicalertapp.com> domain name in bad faith because Respondent uses the disputed domain name to disrupt Complainant’s business by directing users to adult-oriented content for commercial gain. Using a disputed domain name to divert Internet users to adult-oriented material may be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Nasdaq, Inc. v. Domain Administrator / See PrivacyGuardian.org, FA 1919840 (Forum Dec. 9, 2020) (“Complainant has provided a screenshot of the disputed domain name’s resolving webpage which offers adult-oriented materials. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv).”); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). The Panel here again notes that Complainant provides screenshots showing the disputed domain name resolves to a website featuring adult-oriented images. The Panel here finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <medicalertapp.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 19, 2022
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