Medline, Inc. v. Domain Active Pty. Ltd.
Claim Number: FA0301000139718
PARTIES
Complainant is Medline, Inc., Mundelein, IL, USA (“Complainant”) represented by Chad J. Doellinger, of Pattishall McAuliffe Newbury Hilliard & Geraldson. Respondent is Domain Active Pty. Ltd., Clayfield, AUSTRALIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwmedline.com>, registered with Fabulous.com Pty. Ltd..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James P. Buchele, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 3, 2003; the Forum received a hard copy of the Complaint on January 6, 2003.
On January 7, 2003, Fabulous.com Pty. Ltd. confirmed by e-mail to the Forum that the domain name <wwwmedline.com> is registered with Fabulous.com Pty. Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty. Ltd. has verified that Respondent is bound by the Fabulous.com Pty. Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 27, 2003 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@wwwmedline.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 2003, Complainant submitted a timely Additional Submission to the Forum, in full accordance with The Forum’s Supplemental Rule #7.
On February 4, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele 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." 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 makes the following assertions:
1. Respondent’s <wwwmedline.com> domain name is confusingly similar to Complainant’s MEDLINE mark.
2. Respondent does not have any rights or legitimate interests in the <wwwmedline.com> domain name.
3. Respondent registered and used the <wwwmedline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
1. Complainant asserts that the failure of Respondent to respond to the Complaint permits the Panel to make any factually substantiated inferences against Respondent and in favor of Complainant.
Complainant, Medline, Inc., is a
privately-held manufacturer and distributor of health care supplies and
services. Since at least 1967, Complainant has operated under the MEDLINE mark,
and holds several valid and subsisting trademark registrations with the
Principal Register of the United States Patent and Trademark Office (“USPTO”)
for the MEDLINE mark (e.g. U.S. Reg. Nos. 894,673 and 894,684, both
registered on July 14, 1970). Complainant has also registered its mark in
several other foreign jurisdictions.
Complainant has made sales under
its MEDLINE mark approaching $940 million, and has invested millions of dollars
promoting the mark. Complainant also operates a website at <medline.com>.
Respondent, Domain Active Pty. Ltd., registered the <wwwmedline.com> domain name on August 25, 2002, and is not licensed or authorized to use the MEDLINE mark for any purpose. Pursuant to its registration agreement, and as an alternative to posting its own original content, Respondent elected to have the disputed domain name redirect Internet users to a commercial website featuring pay-for-placement advertising, controlled by Roar.com Pty Ltd. On October 11, 2002, Complainant sent Respondent a cease-and-desist letter. Respondent did not respond to Complainant, but shortly thereafter chose to redirect the disputed domain name to Complainant’s main website at <medline.com>.
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 also takes into account Complainant’s Additional Submission in deciding this matter.
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 established rights in the MEDLINE mark through registration on the Principal Register of the USPTO, as well as through widespread and continuous use of the mark.
Respondent’s <wwwmedline.com>
domain name is confusingly similar
to Complainant’s MEDLINE mark. The disputed domain name exemplifies
typosquatting, the registration of a domain name which incorporates a known
trademark with minor deviations that mimic the results of typographical errors.
Here, Internet users attempting to reach Complainant’s <www.medline.com>
website will instead find Respondent’s <wwwmedline.com> if
they inadvertently fail to type a period after the “www” acronym. This does not
disguise the fact that the dominant feature of the disputed domain name remains
Complainant’s distinctive MEDLINE mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”); see also Microsoft Corp. v. Stoneybrook, D2000-1274 (WIPO
Nov. 28, 2000) (finding <wwwmicrosoft.com> confusingly similar to
Complainant’s MICROSOFT mark).
Accordingly, the Panel finds that the <wwwmedline.com> domain name is confusingly similar to Complainant’s MEDLINE mark under Policy ¶ 4(a)(i).
Initially, the burden lies upon Complainant to show that Respondent has no rights or legitimate interests in the disputed domain names. Complainant can meet this burden by showing that Policy ¶¶ 4(c)(i)-(iii), three enumerated examples that demonstrate rights and legitimate interests in a domain name, do not apply to Respondent. Once Complainant has made this showing, the burden shifts to Respondent to show that it has rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
For all intents and purposes, Respondent has not used the disputed domain name since its registration. Prior to Complainant’s cease-and-desist notification, Respondent was merely permitting the Registrar to “park” its domain name. After Complainant’s notified Respondent that it was aware of the infringing domain name, Respondent redirected the domain name to Complainant’s own website at <medline.com>. Neither of these “uses” of the infringing domain name constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
Respondent’s WHOIS information does not indicate that Respondent is “commonly known by” the name WWWMEDLINE or <wwwmedline.com>. Considering the nonsensical nature of the domain name and its similarity to Complainant’s registered and distinctive mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
In addition to Complainant’s affirmative showing that Respondent has no rights or legitimate interests in the disputed domain name, the Panel also views Respondent’s lack of a response as evidence that it has no rights or legitimate interests in concluding that Policy ¶ 4(a)(ii) is satisfied. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwmedline.com> domain name under Policy ¶ 4(a)(ii).
As Respondent failed to respond to the Complaint, the Panel may draw any reasonable and factually substantiated inferences in favor of the Complainant. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent’s <wwwmedline.com>
domain name was registered in bad
faith. In typosquatting cases, such as this one, it would be difficult for
Respondent to prove to the Panel that it did not have actual knowledge of
Complainant’s distinctive mark when it registered the infringing domain name.
As Respondent failed to respond, the Panel infers that it did have actual
knowledge of Complainant’s rights in the MEDLINE mark prior to registering the
disputed domain name, evidencing bad faith registration under Policy ¶
4(a)(iii). See Reuters Ltd.
v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where it was aware of Complainant’s famous
mark when registering the domain name as well as aware of the deception and
confusion that would inevitably follow if it used the domain names); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
Typosquatting has been found by previous Panels to evidence bad faith
use of a domain name. See Dow
Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)
(awarding domain names <wwwdowjones.com>, <wwwwsj.com>,
<wwwbarrons.com> and <wwwbarronsmag.com> to Complainants); see
also AltaVista Co. v. Stoneybrook,
D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other
misspellings of altavista.com, to Complainant). In this dispute, Respondent has
not come forward with any evidence that it has a good faith use planned for the
infringing domain name. Given the nature of the domain name, the Panel infers
that Respondent has no good faith use planned for it, and doubts that such use
is even possible. Respondent’s passive holding of the disputed domain name,
coupled with the fact that Respondent is a typosquatter, leads the Panel to
conclude that the domain name is being used in bad faith as contemplated by
Policy ¶ 4(a)(iii). See Alitalia
–Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23,
2000) (finding bad faith where the Respondent made no use of the domain name in
question and there are no other indications that the Respondent could have
registered and used the domain name in question for any non-infringing
purpose); see also Telstra Corp.
v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it
is possible, in certain circumstances, for inactivity by the Respondent to
amount to the domain name being used in bad faith”).
The Panel thus finds that Respondent registered and used the <wwwmedline.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three
elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwmedline.com> domain name be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: February 6, 2003
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page