Medline Industries, Inc. v. Kari Luning
Claim Number: FA2004001894294
Complainant is Medline Industries, Inc. (‘Complainant’), represented by Kristine A. Bergman of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Kari Luning (‘Respondent’), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medline.courses>, 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 April 30, 2020; the Forum received payment on April 30, 2020.
On May 1, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <medline.courses> 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 May 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@medline.courses. Also on May 5, 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 May 27, 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 a leading manufacturer and distributor in the United States of healthcare supplies. It has rights in the MEDLINE mark based upon numerous registrations with the United States Patent and Trademark Office and elsewhere. The MEDLINE mark is famous. Respondent’s <medline.courses> domain name is confusingly similar to Complainant’s MEDLINE mark because it simply adds the “.courses” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <medline.courses> domain name. Respondent is not licensed or authorized to use Complainant’s MEDLINE mark and is not commonly known by the domain name, which is not being used for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to offer online courses that compete with Complainant.
Respondent registered and uses the domain name in bad faith. Respondent disrupts Complainant’s business by offering competing training services. Respondent had actual or constructive knowledge of Complainant’s rights in the MEDLINE mark.
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 based upon several registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 894,673, registered July 14, 1970 and Reg. No. 3,900,739, registered January 4, 2011). The Panel finds Respondent’s <medline.courses> domain name to be identical to Complainant’s mark because it comprises that mark in its entirety and simply adds the “.courses” generic top-level domain (“gTLD”), which may be ignored for the purposes of the comparison required under 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.
Respondent registered the domain name on February 27, 2020. It resolves to a website displaying on its home page the headline “Medline University” and offering online courses. The website also displays a notice: “Medline University Copyright© Medline University all rights reserved”. The gTLD “.courses” serves to convey an association between the domain name and the services offered by Complainant at its “medlineuniversity.com” website.
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 it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). 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.
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
Given the longstanding fame of Complainant’s MEDLINE mark, the Panel finds that Respondent was fully aware of Complainant and its mark when registering the domain name and did so primarily for the purpose of disrupting the business of a competitor. Further, the Panel finds that by using the domain name to masquerade as Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a service on its website.
Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medline.courses> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 3, 2020
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