Medline Industries, Inc. v. David Teifer
Claim Number: FA2003001886691
Complainant is Medline Industries, Inc. (“Complainant”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, USA. Respondent is David Teifer (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlineimaging.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.
Alan L Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2020.
On March 3, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <medlineimaging.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 March 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 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@medlineimaging.com. Also on March 4, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent subsequently informally emailed the Forum in terms having no bearing on the merits of the dispute and which the Panel declines to consider, pursuant to the Forum's Supplemental Rule 7.
On March 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L Limbury 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 is the largest privately held manufacturer and distributor of healthcare supplies in the United States.
Respondent’s domain name is confusingly similar to Complainant’s famous registered trademark MEDLINE.
Respondent lacks rights or legitimate interests in the <medlineimaging.com> domain name. Respondent is not commonly known by the domain name and Respondent is not a licensee or authorized to use Complainant’s mark in any fashion. The domain name resolves to a webpage where Respondent passes himself off as Complainant and offers medical imaging equipment for sale.
Respondent registered and uses the domain name in bad faith to disrupt Complainant’s business by passing himself off as Complainant and selling medical imaging equipment. The domain name would cause initial interest confusion for Internet users. Respondent must have had actual knowledge of Complainant’s rights in the MEDLINE mark prior to registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has rights in the MEDLINE mark through numerous registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 894,684, registered on July 14, 1970).
Respondent’s <medlineimaging.com> domain name includes the MEDLINE mark in its entirety, adding the generic word “imaging” and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored. The addition of a generic term with a gTLD does not distinguish a domain name for purposes of Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The Panel finds the <medlineimaging.com> domain name to be confusingly similar to Complainant’s MEDLINE mark.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <medlineimaging.com> domain name was registered on January 13, 2020 in the name of Respondent, David Teifer, many years after Complainant registered its MEDLINE trademark, which Complainant has shown is very well known in the field of healthcare supplies in the United States, where Respondent resides. The domain name resolves to a website which displays Complainant’s MEDLINE mark and offers medical imaging equipment for sale.
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the domain name. See 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”).
Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Although the test of confusing similarity involves a simple side-by-side comparison of the domain name and the mark, in the present case the word “imaging” serves to convey the false impression that the domain name is associated with Complainant. This, coupled with the display of the well-known MEDLINE mark on Respondent’s website offering medical imaging equipment for sale, satisfies the Panel that Respondent was aware of Complainant and its mark when registering the domain name, and did so in order to impersonate Complainant for commercial gain. Hence the Panel concludes that Respondent registered the domain name in bad faith.
Further, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the affiliation or endorsement of Respondent’s website and of products on its website. This is evidence of both bad faith registration and bad faith use.
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medlineimaging.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L Limbury, Panelist
Dated: March 28, 2020
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