MedicAlert Foundation United States, Inc. v. David Michaels
Claim Number: FA2206002002115
Complainant is MedicAlert Foundation United States, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris LLP, California, USA. Respondent is David Michaels (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medicalert.us>, registered with Dynadot, 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2022; the Forum received payment on June 27, 2022.
On June 28, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <medicalert.us> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 June 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@medicalert.us. Also on June 29, 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.
A timely Response was received and determined to be complete on July 25, 2022.
An additional submission by Complainant was received on July 27, 2022.
On August 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert 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 document submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses its MEDICALERT mark in relation to jewelry containing emblems with personal and medical information. Complainant has rights in the MEDICALERT marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,334,545, registered November 13, 2007).
The <medicalert.us> domain name is identical or confusingly similar to Complainant’s MEDICALERT mark as it incorporates the mark in its entirety, and differs only by the addition of the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights or legitimate interests in the <medicalert.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its MEDICALERT mark in the disputed domain name.
Respondent registered and uses the <medicalert.us> domain name in bad faith. Respondent registered the disputed domain name with intent to sell. Respondent also registered the disputed domain name with actual knowledge of Complainant’s rights in the MEDICALERT marks. Finally, the domain name resolves to an inactive website.
B. Respondent
Respondent has legitimate interests in the disputed domain. Respondent intends to develop the disputed domain name for a legitimate commercial purpose. Furthermore, the mark claimed by Respondent is a generic term.
Complainant has not proven the disputed domain was registered in bad faith nor is it being used in bad faith. Complainant provides no evidence that the disputed domain was registered in bad faith. Respondent did not have actual knowledge of Complainant at the time of registration. Furthermore, an offer for sale is not always indicative of bad faith. Additionally, Respondent did not register the disputed domain name for the purpose of disrupting Complainant’s business, nor to attract Internet users with a false impression of association with Complainant.
C. Additional Submissions
Complainant’s Additional Submission notes that Respondent concedes that the <medicalert.us> domain name “is confusingly similar to the MEDIC ALERT trademark.”
Complainant also states that Respondent's actions in offering the domain for sale are further evidence of his lack of rights and legitimate interests. Respondent first implies that he listed the domain for sale only after being contacted by Complainant. This is false. As shown in Annex 7 to the Amended Complaint, the domain name was listed publicly for sale for $1,500, not $49 as claimed by Respondent. Respondent also provides no evidence to substantiate his claim that the offered purchase price was not in excess of Respondent’s documented out of pocket costs directly related to the domain name. Respondent's offer for sale of the domain name contradicts any claim Respondent could make that he has any rights or legitimate interests in the name.
For reasons discussed below, the Panel finds that Complainant has met each of the requirements of the usTLD policy.
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 may draw upon UDRP precedent as applicable in rendering its decision.
Complainant claims rights in the MEDIC ALERT mark through its registration with the USPTO (e.g., Reg. No. 3,334,545, registered November 13, 2007). Registration with the USPTO is generally sufficient in demonstrating rights in a mark 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).”). The Panel finds Complainant has rights in the MEDICALERT mark under Policy ¶ 4(a)(i) based on its registration with the USPTO.
Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s MEDICALERT mark. Under Policy ¶ 4(a)(i), incorporating a mark in its entirety while adding only a ccTLD does not sufficiently distinguish a domain name from a protected mark. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”) Further, Respondent conceded in its Response that it does not dispute that the disputed domain name is confusingly similar to the MEDIC ALERT trademark.
Therefore, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
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), at which point 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 that Respondent is neither commonly known by the disputed domain name nor has Respondent been given license or consent to use Complainant’s MEDICALERT mark. Respondent has not provided evidence that it is commonly known by the disputed domain name.
Complainant further argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to make an offer of sale to the public. Using a domain’s resolving webpage to make an offer of sale of a disputed domain to the public is not a legitimate use of a disputed domain. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Respondent offers no substantive rebuttal.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Complainant contends that Respondent registered the disputed domain name with intent to sell in bad faith per Policy ¶ 4(b)(i). A respondent’s offer of a domain name for sale is not necessarily evidence of bad faith, but it may, in appropriate circumstances, evidence bad faith. Here, Respondent does not use the disputed domain name to display any content aside from an option to purchase the domain name. Respondent’s bare allegation that it intends to develop the domain name for a legitimate business use in the future provides little to reassure the Panel that it did not, as it would seem, register the disputed domain in order to sell it to Complainant, the trademark owner, at a price exceeding registration and other out-of-pocket costs. Particularly lacking in credibility is Respondent’s contention that it registered the domain name without actual knowledge of Complainant’s mark. It is implausible that Respondent chose to register a domain name identical (but for the ccTLD) to Complainant’s mark without any prior knowledge thereof, particularly given how well known Complainant’s mark is. Respondent also incorporated the entirety of Complainant’s MEDICALERT mark in the disputed domain name. A respondent’s full incorporation of a protected mark in a disputed domain name may demonstrate a respondent’s actual knowledge of a mark. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”).
The Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medicalert.us> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: August 12, 2022
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