Medline Industries, Inc. v. Scarlette donahey
Claim Number: FA2007001902797
Complainant is Medline Industries, Inc. (“Complainant”), represented by Janet A. Marvel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, USA. Respondent is Scarlette donahey (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <meddline.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2020; the Forum received payment on July 2, 2020.
On July 2, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <meddline.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2020 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@meddline.com. Also on July 6, 2020, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 30, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant made the following contentions.
Complainant, Medline Industries Inc., is the largest privately held manufacturer and distributor of healthcare supplies in the United States. Complainant has rights in the MEDLINE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 897, 881, registered Sep. 1, 1970). See Compl. Ex. C. Respondent’s <meddline.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s MEDLINE mark, merely adding the letter “d” within the mark and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <meddline.com> domain name. Respondent is not licensed or authorized to use Complainant’s MEDLINE mark and is not commonly known by the disputed domain name. Additionally, Respondent has no rights in the MEDLINE mark as Complainant's longstanding rights in the mark would prevent Respondent from obtaining such rights.
Respondent registered and uses the <meddline.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site. Additionally, Respondent is engaged in typosquatting. Respondent also provided false WHOIS information through use of a privacy service. Lastly, Respondent registered the disputed domain name with constructive knowledge of Complainant’s rights in the MEDLINE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the largest privately held manufacturer and distributor of healthcare supplies in the United States.
2. Complainant has established its trademark rights in the MEDLINE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 897, 881, registered Sep. 1, 1970).
3. Respondent registered the <meddline.com> domain name on June 5, 2020.
4. Respondent engaged in typosquatting, provided false WHOIS information through use of a privacy service and registered the domain name with knowledge of Complainant’s rights in the MEDLINE mark.
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 and is being used in bad faith.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MEDLINE mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 897, 881, registered Sep. 1, 1970). See Compl. Ex. C. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per 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)”). Complainant provides evidence of its registrations of the MEDLINE mark with the USPTO, therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MEDLINE mark. Complainant argues that Respondent’s <meddline.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s MEDLINE mark, adding only the letter “d” within the mark and the “.com” gTLD. The addition of a single letter and a gTLD to a mark may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’). Thus, the Panel finds that the disputed domain name is confusingly similar to the MEDLINE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then 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”).
(a) Respondent has chosen to take Complainant’s MEDLINE trademark and to use it in its domain name, adding the letter “d”, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <meddline.com> domain name on June 5, 2020;
(c) Respondent is engaged in typosquatting of the domain name. It also provided false WHOIS information through use of a privacy service and registered the disputed domain name with knowledge of Complainant’s rights in the MEDLINE mark;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Respondent does not have rights or legitimate interests in the <meddline.com> domain name because Respondent is not licensed or authorized to use Complainant’s MEDLINE mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way”). The WHOIS information of record notes “Scarlette Donahey” as the registrant and no information in the record suggests that Complainant has authorized Respondent to use the MEDLINE mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Respondent has no rights in the MEDLINE mark as Complainant's longstanding rights in the mark would prevent Respondent from obtaining such rights. Prior Panels have found that the registration of a domain name incorporating the well-known mark of another entity can indicate a respondent does not have rights or legitimate interest in the domain name. See Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a famous mark belonging to another entity); see also Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”). As the Panel agrees, the Panel finds Respondent does not have rights or legitimate interests in the domain name per Policy ¶ 4(a)(iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and uses the <meddline.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See Allianz of Am. Corp. v. Bond, FA 680624 (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). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that in its entirety incorporates Complainant’s MEDLINE mark with a slight typographical error and gives the impression that interested individuals will receive information regarding Complainant. However, individuals are actually presented with a webpage that has no affiliation to Complainant. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant contends Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to benefit commercially from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant”). Here, Complainant argues Respondent merely adds an additional letter “d” within the MEDLINE mark. Thus, the Panel agrees and finds that Respondent’s addition of a single letter in Complainant’s mark constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
Thirdly, Complainant asserts that Respondent used a WHOIS privacy service when registering the <meddline.com> domain name. Use of a WHOIS privacy service may be further indication of bad faith registration. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason”). Here, Complainant has provided a copy of Respondent’s WHOIS information, which shows use of a privacy service. See Compl. Ex. B. Thus, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, Complainant submits that its trademark registrations for the MEDLINE mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant’s rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). Here, Complainant claims that due to the fame of the MEDLINE mark, Complainant’s long standing use of the mark, and Respondent’s use of the disputed domain name which features Complainant’s mark in its entirety with a minor typographical error render it wholly implausible that Respondent created the domain name independently. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the MEDLINE mark, and thus constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <meddline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated July 31, 2020
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