Medline Industries, Inc. v. Charlie Mills / Medline International Switzerland Sarl
Claim Number: FA2005001895854
Complainant is Medline Industries, Inc. (“Complainant”), represented by Ashly I. Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Charlie Mills / Medline International Switzerland Sarl (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlineeurope.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 May 11, 2020; the Forum received payment on May 11, 2020.
On May 12, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <medlineeurope.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 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@medlineeurope.com. Also on May 13, 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 4, 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, 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 famous MEDLINE marks, which it has registered with multiple trademark agencies around the world. Respondent’s <medlineeurope.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the geographical indicator “Europe” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <medlineeurope.com> domain name. Respondent is not commonly known by the domain name and fraudulently registered it under the name of the CEO of Complainant, which did not authorize Respondent to register a domain name containing Complainant’s mark. Given Complainant’s longstanding rights in the MEDLINE mark, there is no way Respondent could have rights or legitimate interests in the domain name.
Respondent registered and uses the <medlineeurope.com> domain name in bad faith to pass off as Complainant by mimicking Complainant’s European website, having registered the domain name using false WHOIS information. 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 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 established that it has rights in the MEDLINE mark based upon its registration with multiple trademark agencies around the world (e.g., USPTO Reg. No. 894,673, registered July 14, 1970 and UKIPO Reg. No. 2525751, registered Jul. 16, 2004). Respondent’s <medlineeurope.com> domain name is confusingly similar to Complainant’s mark as it comprises Complainant’s mark in its entirety and adds the geographical indicator “Europe”, which is insufficient to distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
(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 April 19, 2020 in the name of Complainant’s CEO and its Geneva-based company. Before the website to which the domain name resolved was disabled on May 8, 2020 at the behest of Complainant, it displayed one of Complainant’s figurative trademarks and mimicked Complainant’s European 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 name and address provided by Respondent when registering the domain name and the use to which the domain name has been put, the Panel finds that Respondent was fully aware of Complainant, its mark, the names of its CEO and of its company based in Geneva 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 and fraudulently 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 product or 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 <medlineeurope.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 6, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page