Medline Industries, Inc. v. James Benedict
Claim Number: FA0812001239793
Complainant is Medline Industries, Inc. (“Complainant”), represented by Janet
A. Marvel, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR
The domain names at issue are <directmedline.com> and <directmedline.net>, registered with Network Solutions, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 29, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <directmedline.com> and <directmedline.net> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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
2, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 22, 2009
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@directmedline.com and postmaster@directmedline.net
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <directmedline.com> and <directmedline.net> domain names are confusingly similar to Complainant’s MEDLINE mark.
2. Respondent does not have any rights or legitimate interests in the <directmedline.com> and <directmedline.net> domain names.
3. Respondent registered and used the <directmedline.com> and <directmedline.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Medline Industries, Inc.,
is the largest privately-held national manufacturer and distributor of
healthcare supplies and services in the
Respondent registered the disputed <directmedline.com> and <directmedline.net> domain names on October 6, 2008. The disputed domain names resolve to web pages that display advertising links for third parties, including those that operate in direct competition with Complainant.
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.
The Panel finds that Complainant’s registrations of the MEDLINE
mark with the USPTO sufficiently demonstrate Complainant’s rights in the mark
under Policy ¶ 4(a)(i).
Respondent’s disputed <directmedline.com> and <directmedline.net> domain names contain Complainant’s entire MEDLINE mark with the following additions: (1) the generic top-level domains “.com” or “.net” have been added; and (2) the generic word “direct” has been attached. The Panel notes that the addition of a top-level domain is irrelevant under Policy ¶ 4(a)(i) as all domain names require such an element. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel considers the term “direct” to create no meaningful distinction as such a word is generic, and in any event, the MEDLINE mark remains the foremost element in the disputed domain names. See State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to the complainant’s registered mark). Therefore, the Panel finds that the disputed domain names are each confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Because Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c).
The Panel notes that Complainant has alleged a lack of license or other permission on behalf of Respondent to use the MEDLINE mark in any form. The WHOIS information lists Respondent as “James Benedict,” which bears no association with the disputed domain names. Without any evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain names resolve to web pages that
merely display third-party links. Some
of these links lead Internet users to Complainant’s direct competitors. The Panel presumes that Respondent has conducted
this activity with the goal of obtaining commercial benefit via the receipt of
click-through fees. The Panel finds that this constitutes
a failure to create a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA
918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a
pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)); see also Vance Int’l, Inc. v.
Abend, FA 970871 (Nat. Arb. Forum
June 8, 2007) (concluding that the operation of a pay-per-click website at a
confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate
noncommercial or fair use, regardless of whether or not the links resolve to
competing or unrelated websites or if the respondent is itself commercially
profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel finds that Respondent’s use of the disputed domain
names to resolve to web pages that promote Complainant’s competitors through
direct links constitutes disruption of Complainant’s business which evidences
Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See David Hall Rare Coins v.
Respondent’s disputed domain names have been found to be
confusingly similar to Complainant’s marks.
The Panel finds that Respondent intended to create a likelihood of
confusion as to Complainant’s marks and the disputed domain names for commercial
gain, given the presence of commercial links on the corresponding web pages. The Panel therefore finds that Respondent has
registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See
Allianz of Am. Corp. v. Bond,
FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith
registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting
Internet users searching for the complainant to its own website and likely
profiting); see also Zee TV USA, Inc. v. Siddiqi, FA
721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in
bad faith registration and use by using a domain name that was confusingly
similar to the complainant’s mark to offer links to third-party websites that
offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <directmedline.com> and <directmedline.net> domain names be TRANSFERRED from Respondent to Complainant.
Dated: February 11, 2009
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