Medline Industries, Inc. v. New Ventures Services, Corp.
Claim Number: FA2108001958523
Complainant is Medline Industries, Inc. (“Complainant”), represented by Janet A. Marvel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is New Ventures Services, Corp. (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlinedubai.com>, registered with Sssasss, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2021; the Forum received payment on August 6, 2021.
On August 10, 2021, Sssasss, LLC confirmed by e-mail to the Forum that the <medlinedubai.com> domain name is registered with Sssasss, LLC and that Respondent is the current registrant of the name. Sssasss, LLC has verified that Respondent is bound by the Sssasss, 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 August 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@medlinedubai.com. Also on August 11, 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 September 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a manufacturer and distributor of healthcare supplies in the United States.
Complainant holds a registration for the MEDLINE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,365,696, registered January 8, 2008, and renewed as of October 1, 2017.
Respondent registered the domain name <medlinedubai.com> on or about June 22, 2021.
The domain name is confusingly similar to Complainant’s MEDLINE mark.
Respondent has not been commonly known by the domain name.
Respondent is not authorized to use Complainant’s MEDLINE mark.
Respondent takes advantage of the goodwill associated with Complainant’s mark to profit from the sale of the disputed domain name online.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the MEDLINE mark when it registered the domain name. Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 trademark sufficient for purposes of Policy ¶ 4(a)(I) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registrations for a mark sufficiently demonstrated its rights in the mark under Policy ¶ 4(a)(i)).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <medlinedubai.com> domain name is confusingly similar to Complainant’s MEDLINE trademark. The domain name incorporates the mark in its entirety, merely adding the geographic reference “dubai” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, PepsiCo, Inc. v. Kieran McGarry, D2005-0629 (WIPO August 5, 2005):
The Domain Name is comprised of Complainant’s famous mark, …, plus the geographically descriptive term “USA”. The Panel finds that the Domain Name is confusingly similar to Complainant’s mark. Numerous prior decisions under the Policy have held that the mere addition of a descriptive term to a mark (which descriptive term does not contain any pejorative content or otherwise tend to suggest disassociation from the mark) does not negate the confusing similarity between the mark and the domain name.
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <medlinedubai.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <medlinedubai.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the MEDLINE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “New Ventures Services, Corp.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without any objection from Respondent, that the only use to which Respondent puts the domain name is to offer it for sale online, to its profit. In the circumstances presented in the Complaint, this behavior is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. In short, there is no evidence in the record even suggesting that Respondent is using, or has made demonstrable preparations to use, the challenged domain name in connection with a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), or that Respondent is, without intent for commercial gain, making a legitimate noncommercial or fair use of the domain name within the ambit of Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
For closely parallel reasons, we conclude that Respondent’s failure to make any legitimate commercial or noncommercial or fair use of the domain name, but only to attempt to sell it online, evidences its bad faith in registering and thus using it. See, for example, Steven Gordon v. Oleg Belan, FA1890577 (Forum April 29, 2020):
A general offer [of a domain name] for sale can evidence bad faith under Policy ¶ 4(b)(i).
See also Capital One Financial Corp. v. haimin xu, FA1819364 (Forum January 8, 2019) (finding bad faith where “Respondent’s only purpose in registering the … domain name was to gain commercially from the sale of the same.”).
Further see Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum November 6, 2000):
UDRP Panels have held that general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith.
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its MEDLINE mark when it registered the disputed domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [by a respondent of a UDRP complainant’s rights in a mark when that respondent registered a confusingly similar domain name, and thus that respondent’s bad faith in registering the domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <medlinedubai.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 7, 2021
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