Medline Industries, Inc. v. nkwetta daniel
Claim Number: FA2005001894979
Complainant is Medline Industries, Inc. (“Complainant”), represented by Kristine Bergman of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is nkwetta daniel (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlinemask.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2020; the Forum received payment on May 5, 2020.
On May 6, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <medlinemask.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 May 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@medlinemask.com. Also on May 8, 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 June 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Medline Industries, Inc., is the largest privately held manufacturer and distributor of healthcare supplies in the United States. Since 1967, Complainant has offered a wide variety of healthcare products and services under its MEDLINE marks. Complainant’s products can be found in most hospitals, surgery centers, and many retail outlets today.
Complainant has rights in the MEDLINE mark based upon its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <medlinemask.com> domain name is identical or confusingly similar to Complainant’s mark as it simply adds the term “mask” to Complainant’s MEDLINE mark.
Respondent lacks rights or legitimate interests in the <medlinemask.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Given Complainant’s longstanding rights in the MEDLINE mark, there is no way Respondent could have rights or legitimate interests in the at-issue domain name.
Respondent registered and uses the <medlinemask.com> domain name in bad faith. Respondent uses the domain name to attempt to cause confusion with Complainant and attract users to a parked webpage. Respondent registered the at-issue domain name to take advantage of the goodwill of Complainant and the global pandemic and unprecedented demand for personal protective equipment, evidencing opportunistic bad faith. Given the renown of the MEDLINE mark and Respondent’s attempt to trade off the goodwill of Complainant, Respondent must have registered the domain name with actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the MEDLINE mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in MEDLINE.
Respondent uses the domain name to address a parking page.
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 at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its MEDLINE mark establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The at-issue domain name contains Complainant’s MEDLINE trademark followed by the term “mask,” with all followed by the top level domain name “.com.” The differences between Respondent’s <medlinemask.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). Indeed, the term “mask” is suggestive of Complainant’s medical equipment related business and thus only adds to any confusing caused by Respondent’s inclusion of Complainant’s MEDLINE mark in the domain name. Therefore, the Panel finds that the <medlinemask.com> domain name is confusingly similar to Complainant’s MEDLINE mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <medlinemask.com> ultimately indicates that “nkwetta daniel” is the domain name’s registrant. Further, there is nothing in the record before the Panel that evidences that Respondent is known by the <medlinemask.com> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent’s domain name addresses a parked webpage. Using the confusingly similar domain name to display a parked webpage is not indicative of a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶¶ 4(c)(iii). 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).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <medlinemask.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and interests, Respondent uses its confusingly similar <medlinemask.com> domain name to address a parked webpage. Respondent’s use of the domain name diverts internet user to Respondent’s empty website by confusing the internet users into believing that the domain name is affiliated with Complainant, when it is not. Respondent’s use of its <medlinemask.com> domain name is thus indicative of bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondents use of the <medlinemask.com> domain name may be characterized as a passive holding of the domain name. Respondent’s failure to actively use the at-issue domain name indicates bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)).
Next, it is apparent that Respondent registered the at-issue domain name to take advantage of the goodwill of Complainant and the unprecedented spike in demand for personal protective equipment in the wake of the Covid 19 pandemic. Respondent’s timing shows opportunistic bad faith. See Atlantic Automotive Corp. v. michelle popp, FA 1787763 (Forum June 26, 2018) (finding bad faith where the respondent registered the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names in anticipation of the pending acquisition and rebranding of a car dealership, holding: “The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith.”).
Finally, Respondent registered <medlinemask.com> knowing that Complainant had trademark rights in MEDLINE. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s incorporation of the suggestive term “mask” into the domain name. Therefore, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark shows that Respondent registered and used its <medlinemask.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medlinemask.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 2, 2020
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