DECISION

 

Medline Industries, Inc. v. Hostmaster Inspedium / Inspedium Corp (SMC Pvt) Ltd.

Claim Number: FA2007001905056

 

PARTIES

Complainant is Medline Industries, Inc. (“Complainant”), represented by Janet A. Marvel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois.  Respondent is Hostmaster Inspedium / Inspedium Corp (SMC Pvt) Ltd. (“Respondent”), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <medlinesindustries.com>, registered with Realtime Register B.V.

 

PANEL

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.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 20, 2020; the Forum received payment on July 20, 2020.

 

On July 21, 2020, Realtime Register B.V. confirmed by e-mail to the Forum that the <medlinesindustries.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@medlinesindustries.com. Also on July 22, 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 August 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it is the largest privately held manufacturer and distributor of healthcare supplies in the United States. Since at least as early as 1967, Medline has offered a wide variety of healthcare products and services under its MEDLINE marks. Today, Complainant’s products can be found in most hospitals, extended-care facilities, surgery centers, physician offices, home health agencies, and many retail outlets. Complainant is the market leader in several product categories, including medical examination gloves, durable medical equipment, surgical procedure tray kits, and medical drapes and gowns. Complainant has rights in the MEDLINE mark based on registration in the United States in 1970. As a result of Complainant’s extensive sales and advertising efforts, consumers throughout the United States and the world have come to recognize MEDLINE as an identifier of Complainant and its offerings. The mark is famous.

 

Complainant alleges that the disputed domain name is confusingly similar to its MEDLINE mark because it wholly incorporates the mark and merely adds the letter “s” and the generic term “industries” to form the disputed domain name.

 

According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the MEDLINE mark in any way. Additionally, it may be presumed that Respondent does not have rights in the MEDLINE mark because of the fame of the mark and Complainant’s longstanding trademark rights.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent had constructive knowledge of Complainant rights in the MEDLINE mark based on registration with the USPTO. Additionally, Respondent registered the disputed domain name to take advantage of the value and goodwill associated with Complainant. Furthermore, Respondent engages in typosquatting which is further evidence of bad faith. Respondent also fails to actively use the disputed domain name as it resolves to an inactive webpage. Finally, Respondent intentionally uses the disputed domain name to confuse consumers into believing Complainant is the owner of the disputed domain name and resolving website.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the mark MEDLINE and uses it to market a variety of healthcare products and services. The mark is well known.

 

Complainant’s rights in its marks date back to at least 1970.

 

The disputed domain name was registered in 2019.

 

Complainant has not licensed or otherwise authorized Respondent to use its marks.

 

The disputed domain name is not being used. Registrant used a privacy service to shield its name and contact information.

 

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 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”).

 

Identical and/or Confusingly Similar

The disputed domain name wholly incorporates Complainant’s MEDLINE mark and merely adds the letter “s” and the generic term “industries”. Under Policy ¶ 4(a)(i), the addition of a letter or a generic term is insufficient to distinguish a domain name from a mark. See Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”); see also Eastman Chemical Company v. Amnon Jakony, FA1606001681860 (Forum July 31, 2016) (finding the domain name <eastmanindustries.net> likely to cause confusion with complainant’s EASTMAN mark, despite the inclusion of the “generic” term “industries”). Thus, the Panel finds that the <medlinesindustries.com> domain name is confusingly similar to Complainant’s MEDLINE mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or permitted Respondent to use its MEDLINE mark in any way. Respondent is not commonly known by the disputed domain name: when no response is submitted, 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 State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information of record lists “Hostmaster Inspedium / Organization Inspedium Corp (SMC Pvt) Ltd.” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).

 

The disputed domain name is not being used. Failure to make an active use of a domain name demonstrates that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy  ¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

The disputed domain name is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.  While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

 

In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).

 

There has been no response to the Complaint. Respondent used a privacy service, that is, it concealed its identity. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

 

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 <medlinesindustries.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Richard Hill, Panelist

Dated:  August 14, 2020

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page