Medline Industries, L.P. v. Erica Brooks / Medline industries
Claim Number: FA2205001995846
Complainant is Medline Industries, L.P. ("Complainant"), represented by Ashly I. Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Erica Brooks / Medline industries ("Respondent"), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlineindustrieslp.com>, registered with Google 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2022; the Forum received payment on May 10, 2022.
On May 11, 2022, Google LLC confirmed by email to the Forum that the <medlineindustrieslp.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@medlineindustrieslp.com. Also on May 13, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is the largest privately held manufacturer and distributor of healthcare supplies in the United States. Complainant has used the MEDLINE trademark in connection with its products and services since at least as early as 1967, and contends that the mark is recognized worldwide and has become famous as a result of extensive sales and advertising. Complainant owns multiple United States trademark registrations for MEDLINE in standard character form and otherwise, along with similar registrations in other jurisdictions throughout the world. Complainant also asserts common law rights in the mark.
The disputed domain name <medlineindustrieslp.com> was registered in April 2022. The name is registered in the name of a privacy registration service on behalf of Respondent. The domain name does not currently resolve to a website. Complainant states that Respondent is not commonly known by the domain name and is not licensed or otherwise permitted authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <medlineindustrieslp.com> is confusingly similar to its MEDLINE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <medlineindustrieslp.com> incorporates Complainant's registered MEDLINE trademark, adding the generic terms "industries" and "LP" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Medline Industries, Inc. v. Hostmaster Inspedium / Inspedium Corp (SMC Pvt) Ltd., FA 1905056 (Forum Aug. 14, 2020) (finding <medlinesindustries.com> confusingly similar to MEDLINE); Medline Industries, Inc. v. Meline Corp, FA 1858735 (Forum Sept. 19, 2019) (finding <medlineindustriescorp.com> confusingly similar to MEDLINE); Dell Inc. v. Fredrick Gesimba, FA 1865142 (Forum Nov. 1, 2019) (finding <dellmarketinglp.com> confusingly similar to DELL). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization and is nearly identical to Complainant's corporate name. Respondent's apparent failure to make any active use of the domain name suggests that Respondent lacks rights or legitimate interests in the name. See, e.g., Medline Industries, Inc. v. Hostmaster Inspedium / Inspedium Corp (SMC Pvt) Ltd., supra (finding lack of rights or legitimate interests in similar circumstances): Dell Inc. v. Fredrick Gesimba, supra (same); Medline Industries, Inc. v. Meline Corp, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that incorporates Complainant's registered mark and is nearly identical to Complainant's corporate name, and does not yet appear to have made any active use of the name. Respondent has not come forward with any explanation for the selection of the domain name or its intended use, nor otherwise participated in this proceeding. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant and its mark, perhaps by selling the domain name to Complainant or a competitor thereof or using it to support a fraudulent phishing scheme, and that Respondent is maintaining the domain name for that purpose. See, e.g., Radio Flyer Inc. v. Qing Yang Hao, FA 1994547 (Forum June 3, 2022) (finding bad faith registration and use in similar circumstances); Bunge Ltd., Bunge Asia Pte. Ltd, & Bunge SA v. Ismailov Iskandar, FA 1989818 (Forum May 2, 2022) (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medlineindustrieslp.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 9, 2022
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