national arbitration forum

 

DECISION

 

Medline Industries, Inc. v. Kyungeh An

Claim Number: FA1211001470333

 

PARTIES

Complainant is Medline Industries, Inc. (“Complainant”), represented by Seth I. Appel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA.  Respondent is Kyungeh An (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <medlineproducts.us>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2012; the National Arbitration Forum received a hard copy of the Complaint on November 8, 2012.

 

On November 9, 2012, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <medlineproducts.us> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 November 9, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 29, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <medlineproducts.us> domain name is confusingly similar to Complainant’s MEDLINE mark.

 

2.    Respondent does not have any rights or legitimate interests in the  <medlineproducts.us> domain name.

 

3.    Respondent registered and used the <medlineproducts.us> domain name in bad faith.

 

B.  Respondent failed to submit a timely Response in this proceeding.

 

FINDINGS

Complainant manufactures and distributes healthcare supplies and services throughout the United States under its MEDLINE mark.  Complainant has trademark rights in its MEDLINE mark through its several registrations with the United States Patent and Trademark Office (“USPTO”):

Reg. No. 897,881 registered September 1, 1970

Reg. No. 894,673 registered July 14, 1970

Reg. No. 894,684 registered July 14, 1970

Reg. No. 1,810,374 registered Dec. 14, 1993

Reg. No. 3,311,898 registered Oct. 16, 2007

Reg. No. 3,343,906 registered Nov. 27, 2007

Reg. No. 3,365,696 registered Jan. 8, 2008

Reg. No. 3,301,915 registered Oct. 2, 2007

Reg. No. 3,778,944 registered April 20, 2010

 

Respondent registered the <medlineproducts.us> domain name on September 4, 2011, and uses it to link to websites of Complainant’s competitors.

 

DISCUSSION

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 will draw upon UDRP precedent as aplicable in rendering its decision.

 

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 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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in its MEDLINE mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO.  Previous panels have found that evidence of registration with the USPTO for a given mark is sufficient to establish Complainant’s rights in a mark pursuant to Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)).

 

Respondent’s <medlineproducts.us> domain name is confusingly similar to Complainant’s MEDLINE mark, as it merely adds a generic top-level domain (“gTLD”) and the word “products.”  These changes do not distinguish the disputed domain name from Complainant’s mark pursuant to Policy 4(a)(i).  See Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark).  Thus, the Panel finds that the <medlineproducts.us> domain name is confusingly similar to Complainant’s mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

There is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <medlineproducts.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant argues that Respondent is not commonly known by the <medlineproducts.us> domain name.  The WHOIS information for Respondent lists the registrant as “Kyungeh An,” which is not similar to the disputed domain name.  Previous UDRP panels have found that a respondent lacks rights in a domain name when there is no evidence that it is commonly known by a given mark.  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).  Thus, the Panel finds that Respondent is not commonly known by, and has not established rights or legitimate interests in the <medlineproducts.us> domain name pursuant to Policy 4(c)(iii).

 

Complainant contends that Respondent has no rights or legitimate interests in the <medlineproducts.us> domain name because it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Complainant contends that Respondent’s website features mainly links to websites that compete with Complainant.  Complainant further argues that Respondent’s webpage is purely for commercial gain and used to mislead and divert consumers.  The Panel notes that Respondent’s <medlineproducts.us> domain name resolves to a website displaying extensive information on Complainant and Complainant’s products, Complainant’s MEDLINE mark, and links to websites that sell products that compete with Complainant.  The Panel notes, for example, that the <www.BHmedwear.com> domain name resolves to a page featuring lab coats and hospital gowns for sale, which is a predominant part of Complainant’s business.  Previous panels have found that using a confusingly similar domain name to display pay-per-clicks links that are competitive with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).  Consequently, the Panel finds that Respondent is making neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use of the disputed domain name.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

 

Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s MEDLINE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s <medlineproducts.us> domain name.  Respondent’s revenue no doubt comes from click-through advertising revenues found on Respondent’s resolving website.  Previous panels have found bad faith pursuant to Policy 4(b)(iv) when a respondent uses a confusingly similar domain name to attract Internet users to a website featuring advertisements and links to third party competitors, while commercially gaining.  See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to [UDRP] ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).  Thus, the Panel finds that Respondent registered and is using the <medlineproducts.us> domain name in bad faith pursuant to Policy 4(b)(iv).

 

Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the MEDLINE mark.  Complainant argues that Respondent's offering of products competing with Complainant’s products, as well as Respondent’s use of Complainant’s MEDLINE mark at the resolving website, indicates that Respondent had actual knowledge of Complainant's mark and rights.  The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights, further evidence of bad faith under Policy ¶ 4(a)(iii).  See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under UDRP ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <medlineproducts.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  December 18, 2012

 

 

 

 

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