MedicAlert Foundation United States, Inc. v. Chuck Furi
Claim Number: FA2205001996567
Complainant is MedicAlert Foundation United States, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris LLP, California, USA. Respondent is Chuck Furi (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mymedicalerts.com>, registered with NameCheap, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2022; the Forum received payment on May 16, 2022.
On May 17, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <mymedicalerts.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2022 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@mymedicalerts.com. Also on May 17, 2022, 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 June 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant is a California-based company that provides a myriad of health-related goods and services. Complainant claims rights in the MEDIC ALERT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 695,056 registered March 22, 1960). The disputed domain name is confusingly similar to Complainant’s mark because it differs only through the term “my” preceding the MEDIC ALERT mark, as well as the addition of the letter “s” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MEDIC ALERT mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to resolve to a site which hosts third-party competing links.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business by using a confusingly similar domain name. Furthermore, Respondent attempts to create a likelihood of confusion through creating an apparent association with Complainant for financial gain. Respondent also had actual knowledge of Complainant’s rights in the MEDIC ALERT trademark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on May 3, 2022.
2. Complainant has established rights in the MEDIC ALERT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 695,056 registered March 22, 1960).
3. Respondent uses the disputed domain to resolve to a site which hosts third-party competing links.
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 claims rights in the MEDIC ALERT mark through its registration with the USPTO (e.g., Reg. No. 695,056 registered March 22, 1960). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence that the mark is registered with the USPTO, the Panel finds Complainant has established rights in the MEDIC ALERT mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <mymedicalerts.com> is confusingly similar to Complainant’s MEDIC ALERT mark because it wholly incorporates Complainant’s mark merely adding the descriptive term “my” and followed by the letter “s”, also adding the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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”).
Complainant argues Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been given license or consent to use the MEDIC ALERT mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the disputed domain name lists Respondent as “Chuck Furi”. Nothing in the records rebuts Complainant’s assertion that Complainant did not authorize Respondent to use the MEDIC ALERT mark or register domain names using Complainant’s mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name.
Complainant further argues that the disputed domain does not offer a bona fide offering of goods and services or legitimate noncommercial or fair use, as it is used to host links to third-party competing websites. Using a disputed domain name to host a website with competing hyperlinks is neither a bona fide offer or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites). Complainant has provided the Panel with a screenshot of Respondent’s website. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues that Respondent registered and uses the disputed domain name in bad faith because Respondent disrupts Complainant’s business by redirecting users to competing hyperlinks. Where a respondent uses a disputed domain name only to host hyperlinks of businesses and websites that compete with the complainant’s business, the Panel may find this disrupts the complainant’s business in bad faith. See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”). As previously noted, Complainant provides a screenshot of the disputed domain name’s resolving page, evidencing the links in direct competition with Complainant’s business, as well as its own webpage, showcasing the business it engages in. The Panel therefore finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(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 <mymedicalerts.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 15, 2022
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