Medline Industries, Inc. v. dou dou / Abbeville
Claim Number: FA2102001933083
Complainant is Medline Industries, Inc. (“Complainant”), represented by Ashly Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is dou dou / Abbeville (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlineplus.shop>, registered with NameSilo, 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 February 22, 2021; the Forum received payment on February 22, 2021.
On February 23, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <medlineplus.shop> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2021 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@medlineplus.shop. Also on February 25, 2021, 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 March 22, 2021, 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 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 made the following contentions.
Complainant, Medline Industries, Inc., is the largest privately held manufacturer and distributor of healthcare supplies in the United States. Complainant has provided its offerings using the MEDLINE mark as early as 1967. Complainant maintains a registration in its MEDLINE mark with the United States Patent and Trade Office (USPTO) (e.g. Reg. No. 897,881. Registered on Sept. 1, 1970). See Compl. Ex. C. The Disputed Domain Name, <medlineplus.shop>, is identical or confusingly similar to the MEDLINE mark because it wholly incorporates the mark with the addition of a generic term, “plus”, and a generic top-level domain (“gTLD”), “.shop”.
Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent is not commonly known by the Disputed Doman Name and Complainant also has not authorized Respondent to use Complainant’s MEDLINE mark. Additionally, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent advertises and offers products that create confusion with Complainant.
Respondent has registered the Disputed Domain Name in bad faith because Respondent had knowledge of Complainant’s rights in the MEDLINE mark. Complainant is also using the Disputed Domain Name to redirect users to a website that offers a product unrelated to Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the largest privately held manufacturer and distributor of healthcare supplies in the United States.
2. Complainant has established its trademark rights by virtue of its registration of its MEDLINE mark with the United States Patent and Trade Office (USPTO) (e.g. Reg. No. 897,881, registered on Sept. 1, 1970).
3. Respondent registered the disputed domain name on January 31, 2021.
4. Respondent uses the disputed domain name to advertise and offer products that create confusion with Complainant.
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 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 through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to show that Complainant has rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence that it has registered its MEDLINE mark with the USPTO (e.g. Reg. No. 897,881. Registered on Sept. 1, 1970). See Compl. Ex. C. With this showing of registration with the USPTO, the Panel finds that Complainant has shown that it has 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 that the Disputed Domain Name is identical or confusingly similar because it wholly incorporates Complainant’s MEDLINE mark and adds a generic term and gTLD to the Disputed Domain Name. The addition of generic terms and a gTLD does not differentiate the identicalness or confusing similarity to the complainant’s mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that the Disputed Domain Name is identical or confusingly similar to Complainant’s MEDLINE mark under 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”).
(a) Respondent has chosen to take Complainant’s MEDLINE trademark and to use it in its domain name, adding only the generic word “plus” which does not negate the confusing similarity that is present;
(b) Respondent registered the disputed domain name on January 31, 2021;
(c) Respondent uses the disputed domain name to advertise and offer products that create confusion with Complainant;
(d) Respondent acquired and retained the domain name and engaged in the aforementioned activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have any rights or legitimate interests in the Disputed Domain Name because it is not commonly known by the Disputed Domain Name nor has Respondent received authorization from Complainant to use the MEDLINE mark. A respondent is not commonly known under Policy ¶ 4(c)(ii) where the WHOIS information does not indicate that respondent is not known by the disputed domain name and the record does not suggest respondent was authorized to use the complainant’s mark. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). WHOIS data provided by Complainant states Respondent’s name as “Domain Adminstrator”. A further filing states that Respondent’s name is actually “dou dou Abbeville”. See Compl. Ex. B. Nothing else provided by Complainant states that Respondent is known by the Disputed Domain Name or Complainant’s MEDLINE mark. Complainant further submits that it has not given Respondent any permission, license, or other authorization to use Complainant’s MEDLINE mark. The Panel thus finds Respondent is not commonly known by the Disputed Domain Name under Policy ¶ 4(c)(ii);
(f) Complainant further argues that the Disputed Domain Name is not being used for a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because the use of the Disputed Domain Name is unrelated to Complainant. Use of a disputed domain name to cause confusion for commercial benefit can show a lack of rights or legitimate interests under Policy ¶ 4(c)(i) and (iii). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). The Disputed Domain Name directs users to a website that advertises and sells male enhancement pills. See Compl. Ex. F. Complainant, however, only sells medical equipment and does not manufacture or sell pills of its own. The Panel therefore finds that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii) because Respondent is using the domain name to display products unrelated to Complainant.
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 argues that the Disputed Domain Name is being used in bad faith because the Disputed Domain Name redirects users to a website that advertises and sell products for commercial gain. Bad faith registration can be found under Policy ¶ 4(b)(iv) where the respondent diverts internet users to its own commercial website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). When users access the Disputed Domain Name, they are redirected to a website that sells male enhancement pills under the name Vyasilx. See Compl. Ex. F. Through this redirection to Respondent’s commercial website, the Panel finds registration in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that the Disputed Domain Name was registered in bad faith because Respondent was aware of Complainant’s rights in the MEDLINE mark at the time of registration. While constructive knowledge is insufficient, actual knowledge of a complainant’s rights in a mark may evidence bad faith pursuant to 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.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant submits that Respondent had notice of Complainant’s rights in the MEDLINE mark based upon the complete inclusion of the mark in the domain name as well as the longstanding registration of the mark. As the Panel agrees that actual knowledge is evident, the Panel finds that the Disputed Domain Name was registered in bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medlineplus.shop> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 23, 2021
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