Medline Industries, Inc. v. Jeff Ramos
Claim Number: FA1810001811409
Complainant is Medline Industries, Inc. (“Complainant”), represented by Kristine A. Bergman of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Jeff Ramos (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlineinc.us>, 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 October 11, 2018; the Forum received payment on October 11, 2018.
On October 12, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <medlineinc.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2018 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@medlineinc.us. Also on October 22, 2018, 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 November 15, 2018, 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 usTLD 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 usTLD Policy, usTLD 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 is the largest, privately held manufacturer and distributor of healthcare supplies in the United States. Complainant has rights in the MEDLINE mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 897,881, registered Sep. 1, 1970, renewal date Dec. 26, 1990). See Compl. Ex. C. Respondent’s <medlineinc.us> domain name is confusingly similar to Complainant’s MEDLINE mark as it adds the generic term “inc” and a “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <medlineinc.us> domain name. Respondent is not licensed or otherwise permitted to use Complainant’s MEDLINE mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent redirects users through the disputed domain name to third-party website, presumably for commercial gain. Further, Respondent attempts to sell the disputed domain name to Complainant or the general public for more than out-of-pocket costs.
Respondent registered and uses the <medlineinc.us> domain name in bad faith. Respondent offered to sell the disputed domain name to Complainant and to the general public in excess of out-of-pocket costs. Additionally, Respondent attempts to attract, for commercial gain, users to the disputed domain name where it diverts users to third-party website. Finally, Respondent registered and used the disputed domain name with actual and constructive knowledge of Complainant’s rights in the MEDLINE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is the largest, privately held manufacturer and distributor of healthcare supplies in the United States.
2. Complainant has established its rights in the MEDLINE mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 897,881, registered Sep. 1, 1970, renewal date Dec. 26, 1990).
3. Respondent registered the <medlineinc.us> domain name on October 6, 2018.
4. Respondent redirects internet users through the disputed domain name to a third-party website, presumably for commercial gain and has attempted to sell the disputed domain name to Complainant or the general public for more than out-of-pocket costs.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable 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 (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.”).
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 registration of the mark with the USPTO (e.g., Reg. No. 897,881, registered Sep. 1, 1970, renewal date Dec. 26, 1990). See Compl. Ex. C. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore finds that Complainant’s registration of the MEDLINE mark with the USPTO is sufficient to establish 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 Respondent’s <medlineinc.us> domain name is confusingly similar to the MEDLINE mark, as the name adds the generic term “inc” and the “.us” ccTLD. Adding a generic term and a ccTLD to a complainant’s mark may not sufficiently mitigate any confusingly similarity between the disputed domain name and mark in a Policy ¶ 4(a)(i) analysis. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis); see also CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). The Panel therefore determines the <medlineinc.us> domain name is confusingly similar to the MEDLINE mark per 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MEDLINE trademark and to use it in its domain name, adding the generic term “inc” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <medlineinc.us> domain name on October 6, 2018;
(c) Respondent redirects internet users through the disputed domain name to a third-party website, presumably for commercial gain and has attempted to sell the disputed domain name to Complainant or the general public for more than out-of-pocket costs;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <medlineinc.us> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MEDLINE mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Jeff Ramos,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(iii) that Respondent has not been commonly known by the <medlineinc.us> domain name;
(f) There is also nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (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)). Therefore, the Panel finds that Respondent has failed to establish a right or legitimate interest under Policy ¶ 4(c)(i);
(g) Complainant argues that Respondent is not making a bona fide offering of goods or services via the <medlineinc.us> domain name, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv), respectively. Instead, the disputed domain name resolves to a page which diverts users to third-party websites for Respondent’s commercial gain. Use of a disputed domain name to redirect users via pay-per-click hyperlinks may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under a Policy ¶¶ 4(c)(ii) or (iv) analysis. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the disputed domain name’s resolving website which features links to medical-related links for third-party website. See Compl. Ex. G. Therefore, the Panel finds Respondent fails to use the disputed domain name for a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv);
(h) Complainant argues Respondent lacks rights or legitimate interests in the <medlineinc.us> domain name as Respondent is attempting to sell the disputed domain name to the highest bidder. Attempting to sell a disputed domain name for more than out-of-pocket costs may evince a finding that the respondent lacks rights or legitimate interests under a Policy ¶ (a)(ii) analysis. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides an email from Respondent on September 10, which purports to offer the disputed domain name to Complainant “or the highest bidder.” See Compl. Ex. H. Therefore, the Panel finds Respondent’s attempts to sell the disputed domain name demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name per Policy ¶ (a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
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 submits Respondent registered and uses the <medlineinc.us> domain name in bad faith. Specifically, Complainant contends Respondent’s only purpose in registering the disputed domain name was to gain commercially from the sale of the same, indicating its registration and use of the domain name in bad faith. A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant contends that given its longstanding trademark registration of the MEDLINE mark and Respondent’s current use of the domain name to offer to sell the domain name (see Compl. Ex. H), it is evident Respondent’s purpose for registering and using the domain name was and is to sell the domain name for a profit. The Panel agrees and finds Respondent to have registered and used the <medlineinc.us> domain name in bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant contends that Respondent’s bad faith is indicated by its use of the <medlineinc.us> domain name to link to third party websites, some of which compete with Complainant’s business. Use of a domain name to resolve to a page of third-party links, including competitive links, can demonstrate a respondent’s bad faith per Policy ¶ 4(b) (iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends the domain name resolves to a webpage displaying links to third party websites, some of which belong to competitors of Complainant. See Compl. Ex. G. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that in light of the fame and notoriety of Complainant's MEDLINE mark, it is inconceivable that Respondent could have registered the <medlineinc.us> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Arguments of bad faith based on constructive notice are usually not successful, as previous UDRP decisions have declined to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further submits that Respondent’s registration of the disputed domain name after Complainant filed a prior UDRP complaint against Respondent indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the domain name in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MEDLINE mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medlineinc.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 16, 2018
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