Medline Industries, Inc. v. N/A c/o Ingine Carastheim
Claim Number: FA0710001087601
Complainant is Medline Industries, Inc. (“Complainant”), represented by Janet
A. Marvel, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <usamedline.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@usamedline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <usamedline.com> domain name is confusingly similar to Complainant’s MEDLINE mark.
2. Respondent does not have any rights or legitimate interests in the <usamedline.com> domain name.
3. Respondent registered and used the <usamedline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Medline Industries, Inc. (“Medline”), is the largest privately held
manufacturer and distributor of healthcare supplies and services in the
Respondent’s
<usamedline.com> domain name was registered on
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has sufficiently established its rights in the
MEDLINE mark through registration with the USPTO pursuant to Policy ¶
4(a)(i). See
Respondent’s <usamedline.com> domain name contains Complainant’s MEDLINE mark in its entirety preceded by the term “usa,” which describes the geographic location of Complainant’s business, and followed by the generic top-level domain (“gTLD”) “.com.” It is well established that the inclusion of a geographic term and a gTLD do not distinguish a disputed domain name. As such, the Panel finds that Respondent’s <usamedline.com> domain name is confusingly similar to Complainant’s MEDLINE mark pursuant to Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no
rights or legitimate interests in the <usamedline.com>
domain name. See VeriSign Inc. v. VeneSign
Respondent failed to submit a Response to the Complaint. Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the <usamedline.com> domain name but will still consider the factors listed under Policy ¶ 4(c) based upon all of the evidence in the record. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Nowhere in the Respondent’s WHOIS information or elsewhere
in the record does it indicate that Respondent is or ever was commonly known by
the disputed domain name. Moreover,
Respondent has not sought nor has Complainant granted it permission to use the MEDLINE
mark in any way. As such, the Panel
finds that Respondent is not commonly known by the <usamedline.com> domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
Respondent’s <usamedline.com>
domain name contains Complainant’s MEDLINE mark in its entirety and resolves to
a website fraudulently purporting to be an online pharmacy where no
prescriptions are needed. The offered
services if legitimate would be in competition with those services offered under
Complainant’s mark. Consequently, the
Panel finds this to be neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12,
2002) (finding the respondent’s use of the disputed 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)); see also Prudential Ins. Co. of Am. v. Stonybrook
Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no
rights or legitimate interests in the disputed domain name where the respondent
was using the complainant’s mark to redirect Internet users to a website
offering credit card services unrelated to those services legitimately offered
under the complainant’s mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <usamedline.com> domain name resolves to a website purporting to offer services and products in direct competition with those offered under Complainant’s mark. The Panel finds that Respondent’s competing use demonstrates its bad faith registration and use of the <usamedline.com> domain name pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith under Policy ¶ 4(b)(iii) by attracting Internet users to a website that competes with the complainant’s business).
Moreover, Respondent is presumably financially benefiting from the commercial use of its website that is confusingly similar to Complainant’s MEDLINE mark. As such, the Panel finds additional evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel concludes that Complainant has satisfied 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 <usamedline.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: November 16, 2007
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