Medline Industries, Inc. v. li si heng
Claim Number: FA2104001940028
Complainant is Medline Industries, Inc. (“Complainant”), represented by Janet A. Marvel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is li si heng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <medline.ltd> and <medlinemedicalsupplies.shop>, (‘the Domain Names’) registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2021; the Forum received payment on April 2, 2021.
On April 6, 2021, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <medline.ltd> and <medlinemedicalsupplies.shop> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 April 12, 2021, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 3, 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@medline.ltd, postmaster@medlinemedicalsupplies.shop. Also on April 12, 2021, the Chinese language 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 6, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark MEDLINE, registered, inter alia, in the USA for health related products and services with first use recorded as 1967.
<medline.ltd> registered in 2021 is identical to the Complainant’s MEDLINE mark adding only the gTLD “.ltd”.
<medlinemedicalsupplies.shop> registered in 2021 is confusingly similar to the Complainant’s MEDLINE mark adding only the generic term ‘medical supplies’ and the gTLD “.shop”.
The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by either of them and is not authorized by the Complainant.
The Domain Names have been used for web sites purporting to sell the Complainant’s products which use the Complainant’s ‘Medline’ mark as a masthead and the Complainant’s logo in a way so as to suggest that the sites attached to the Domain Names are official sites of the Complainant. This is registration and use in opportunistic bad faith confusing Internet users for commercial gain and disrupting the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark MEDLINE, registered, inter alia, in the USA for health related products and services with first use recorded as 1967.
The Domain Names registered in 2021 have been used for sites using the Complainant’s MEDLINE mark as a masthead and the Complainant’s logo in a way so as to suggest the sites are official sites of the 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”).
<medline.ltd> consists of the Complainant's MEDLINE mark (which is registered, inter alia, in USA for health related goods and services with first use recorded as 1967) and the gTLD “.ltd”.
<medlinemedicalsupplies.shop> consists of the Complainant's MEDLINE mark (which is registered, inter alia, in USA for health related goods and services with first use recorded as 1967), the generic term ‘medical supplies’ and the gTLD “.shop”.
A gTLD does not serve to distinguish a domain name from a complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘medical supplies’ to the Complainant's MEDLINE mark does not prevent confusing similarity between <medlinemedicalsupplies.shop> and the Complainant's trade mark pursuant to the Policy.
Accordingly, the Panel holds that <medline.ltd> is identical for the purpose of the Policy to a mark in which the Complainant has rights and <medlinemedicalsupplies.shop> is confusingly similar to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names or either of them. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial so cannot be legitimate noncommercial fair use.
The web sites attached to the Domain Names use the Complainant's MEDLINE mark in the masthead and the Complainant’s logo so that the Respondent’s sites could be taken to be official sites of the Complainant. They do not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Names in relation to the Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as they uses ‘Medlne’ in their mastheads and the Complainant’s logo in a confusing manner. The use of the Complainant’s logo and reference to the Complainant’s products on the web site shows that the Respondent is aware of the Complainant its business, rights and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web sites and services and products on them likely to disrupt the business of the Complainant.
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv).
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.ltd> and <medlinemedicalsupplies.shop> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 6, 2021
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