Medline Industries, L.P. v. Kim Ferraro / Medline Inc
Claim Number: FA2112001977333
Complainant is Medline Industries, L.P. (“Complainant”), represented by Ashly I. Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Kim Ferraro / Medline Inc (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medline-recruit.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2021; the Forum received payment on December 16, 2021.
On December 16, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <medline-recruit.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2022 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-recruit.com.
Also, on December 17, 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 January 12, 2002, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the MEDLINE trademark and service mark established by its ownership of the portfolio of registrations described below and extensive use of the mark since at least as early as 1967 on its healthcare products.
Complainant submits that the disputed domain name is confusingly similar to its MEDLINE mark arguing that It is well-established that adding a descriptive or generic term to another party’s trademark is not sufficient to avoid confusion. See Medline Industries, Inc. v. James Benedict, FA0812001239793 (Forum Feb. 11, 2009) (<directmedline.net> confusingly similar to Medline Industries’ MEDLINE mark: “The Panel considers the term ‘direct’ to create no meaningful distinction as such a word is generic, and in any event, the MEDLINE mark remains the foremost element in the disputed domain names.”).
Complainant contends that the addition of a hyphen and the generic term “recruit” does not distinguish the disputed domain name from Complainant’s MEDLINE mark. See Morgan Stanley v. fuxinggaokeiji, FA1906001850443) (Forum Aug. 5, 2019) (finding <morganstanley-recruit.com> domain name confusingly similar to the MORGAN STANLEY trademark) and State Farm Mutual Automobile Insurance Company v. statefarmrecruiting.com c/o Blue Host.com Domain Privacy, FA0801001140628 (Forum Mar. 25, 2008) (finding <statefarmrecruiting.com> domain name to be confusingly similar to STATE FARM trademark).
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not generally known by the disputed domain name, nor has it acquired any trademark or service mark rights in the name or mark. See Chevron Intellectual Property LLC v. Fred Wallace, FA 150600 (Forum July 27, 2015) (finding that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.”).
Complainant adds that Respondent was identified as “Redacted as Privacy” by the Registrar after its name was originally protected by a privacy shield. There is no evidence to suggest that Respondent is commonly known by “Medline,” and so there is no evidence of Respondent’s legitimate rights or interests in the disputed domain name. See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (respondent had no rights or legitimate interests in the disputed domain name when “Privacy Service” was listed as the registrant of the disputed domain name).
Complainant asserts that Respondent also has no rights in the MEDLINE mark as Complainant’s longstanding trademark rights would prevent the Respondent from acquiring such rights. See Pepsico, Inc. v. Becky a/k/a Joe Cutroni, FA 117014 (Forum Sept. 3, 2002) (“The notoriety and fame of Complainant’s PEPSI and PEPSI-COLA trademarks, due to Complainant’s popular soft drink products, creates a presumption that no one else could be commonly known by the mark or the trade name.”).
Complainant adds that it has not licensed or otherwise permitted the Respondent to use the MEDLINE mark in connection with the disputed domain name. As a panel recently held: “lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).” Medline Industries, Inc. v. Meline Corp, FA1908001858735 (Forum Sept. 19, 2019), citing Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (“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.”).
Referring to a screen capture of the website to which the disputed domain name resolves, which is identical to Complainant’s own website at <www.medline.com>, Complainant alleges that Respondent is using the disputed domain name to resolve to Complainant’s own website or a copycat website and in either case neither such use constitutes a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Mack Weldon, Inc. v. Kelci Thornburgh, FA2110001968649 (Forum Nov. 9, 2021) (finding that respondent’s use the disputed domain name in connection with a copycat website is neither legitimate or a bona fide use) and Amazon Technologies, Inc. v. Ideias Internet Telecom Miami/Ideias Telecom Miami, FA210700195785) (Forum Aug. 6, 2021) (finding respondent’s use of <amazonwserver.com> to pose as Complainant is neither a legitimate offering nor a bona fide offering of goods and services.”).
Complainant then alleges that the disputed domain name was registered and is being used in bad faith because Respondent registered the disputed domain name long after Complainant adopted, used, and registered its MEDLINE mark, and long after the MEDLINE mark became well-known and famous.
Complainant contends that Respondent registered the disputed domain name to take advantage of the value and goodwill associated with the MEDLINE mark, which constitutes bad faith. See e.g., JUUL Labs, Inc. v. Nics Telekomunikasyon A.S., FA2003001890140 (Forum April 24, 2020) (“[W]here a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith”).
Complainant adds that Respondent’s addition of the word “recruit” following the element “Medline” in the disputed domain name is further evidence of bad faith because it attempts to create an association with Complainant. See Morgan Stanley v. fuxinggaokeiji, FA1906001850443) (Forum Aug. 5, 2019) (finding <morganstanley-recruit.com> domain name registered and used in bad faith).
Complainant further submits that consumers would logically expect that Complainant owns <medline-recruit.com>, just as Complainant owns <medlineindustries.com> and many other MEDLINE-formative domain names, including <medline.eu>, <medline.net>, <medline.info>, and <medline.link>. See Meow Media Inc. v. John Basil a/k/a American Software Factory Corp., Inc., FA0205000113280 (Forum Aug. 20, 2002) (ordering transfer of <persiankitty.us> : “[T]he use of the domain name at issue by the Respondent would certainly cause confusion among internet users as to the source or sponsorship of the website, as Complainant currently holds registrations for the majority of the available generic top-level domains, more specifically, ‘.com,’ ‘.net,’ ‘.info,’ and ‘.biz.’”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the MEDLINE trademark and service mark which it uses in its business as a manufacturer and distributor of healthcare supplies, and for which it holds an international portfolio of trademark and service mark registrations including the following in the United States of America:
· United States of America registered service mark MEDLINE, registration number 897,881, registered on the Principal Register on September 1, 1970, for services in international class 39;
· United States of America registered trademark MEDLINE, registration number 894,673, registered on the Principal Register on July 14, 1970 for goods in international classes 24 and 27;
· United States of America registered trademark MEDLINE, registration number 894,684, registered on the Principal Register on July 14, 1970 for goods in international classes 5 and 10;
· United States of America registered trademark MEDLINE, registration number 1,810,374, registered on the Principal Register on December 14, 1993 for goods in international classes 3, 5, 10, and 16;
· United States of America registered service mark MEDLINE, registration number 3,778,944, registered on the Principal Register on April 20 2010 for services in international class 44;
· United States of America registered trademark and service mark MEDLINE & Design, registration number 3,311,664, registered on the Principal Register on October 16, 2007 for goods and services in international classes 3,5,9,10,12,16,20,21,24,25,27, and 35;
· United States of America registered trademark and service mark MEDLINE, registration number 3,311,898, registered on the Principal Register on October 16, 2007 for goods and services in international classes 3,9,11,12,16,20,21,22,24,25,27, and 35;
· United States of America registered trademark MEDLINE, registration number 3,365,696, registered on the Principal Register on January 8, 2008, for goods in international classes 5 and 10;
· United States of America registered trademark MEDLINE, registration number 3,301,915, registered on the Principal Register on October 2, 2007for goods in international class 24;
· United States of America registered trademark and service mark MEDLINE & Design, registration number 5,166,882, registered on the Principal Register on March 21, 2017 for goods and services in international classes 3, 5, 9, 10, 11, 12,16, 20, 21, 22, 24, 25, 27,35, and 44;
· United States of America registered trademark and service mark MEDLINE & Design, registration number 5,171,995, registered on the Principal Register on March 28, 2017 for goods and services in international classes 3, 5, 9, 10, 11, 12,16, 20, 21, 22, 24, 25, 27,35, and 44.
Complainant has an established Internet presence, holding a large number of domain names including <medlineindustries.com> and <medline.net>, registered in 1996 and <medline.com> registered in 1998 and has promoted its company and its offerings at <www.medline.com>.
The disputed domain name <medline-recruit.com> was registered on November 30, 2021 and redirects Internet traffic either to Complainant’s website at <medline.com> or resolves to a copycat website that purports to be Complainant’s website.
There is no information available about Respondent who availed of a privacy service to conceal her identity on the published WhoIs, except for that provided in the Compliant, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name.
The Registrar provided the details of the Respondent as being the registrant in response to said request.
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 provided convincing, uncontested evidence that it has rights in the MEDLINE mark established by its ownership of the trademark and service mark registrations described above and at common law by its long and extensive use of the mark in its medical supplies business.
The disputed domain name <medline-recruit.com> consists of Complainant’s MEDLINE mark, a hyphen, the word “recruit” and the gTLD extension <.com>.
Complainant’s MEDLINE mark Is the initial, dominant and only distinctive element in the disputed domain name.
Neither the hyphen nor the word “recruit” add any distinguishing character to the disputed domain name.
In the circumstances of this proceeding, the gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the MEDLINE mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· there is no evidence to suggest that Respondent is commonly known by “Medline” or that Respondent is generally known by the disputed domain name;
· Respondent has not acquired any trademark or service mark rights in the MEDLINE name or mark and Complainant has longstanding trademark rights in the MEDLINE mark that would prevent the Respondent from acquiring such rights;
· Respondent was identified as “Redacted as Privacy” by the Registrar after its name was originally protected by a privacy shield;
· Complainant has not licensed or otherwise permitted the Respondent to use the MEDLINE mark in connection with the disputed domain name.
· a screen capture adduced in evidence in an annex to the Complaint, illustrates that the disputed domain name resolves either to Complainant’s own website at <www.medline.com> or a copycat website and in either case neither such use constitutes a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
It is well established that once a complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests. Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has a long and extensive reputation in the use of the MEDLINE mark on its products and services, with an established Internet presence. MEDLINE is a distinctive mark, and it is improbable that the registrant would have chosen and the disputed domain name, without knowledge of Complainant’s mark which is the dominant and only distinctive element of the disputed domain name.
There is no plausible reason why the disputed domain name, would be chosen other than to reference Complainant, its name, brand, mark and goodwill.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill.
In making this finding this Panel is conscious that the screen capture annexed to the Complaint shows that Respondent is using the disputed domain name to resolve either to Complainant’s own website or a copycat website and is making no use of the disputed domain name for any purpose unrelated to Complainant.
This Panel further finds that given the similarity of the disputed domain name and Complainant’s mark, its use on the Internet would inevitably attract and confuse users and divert traffic seeking Complainant’s website.
The exact intention of Respondent in using the disputed domain name to resolve to Complainant’s website or a copycat website in that manner, while attracting and intercepting Internet traffic seeking Complainant, is unclear however it is a serious cause of concern and jeopardizes Complainant’s business and goodwill. This Panel finds therefore that the disputed domain name is being used in bad faith.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
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-recruit.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman, Panelist
Dated: January 13, 2022
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