MedicAlert Foundation United States, Inc. v. ZA Domains / ZA Domains PTY LTD
Claim Number: FA2206002000357
Complainant is MedicAlert Foundation United States, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris LLP, California, USA. Respondent is ZA Domains / ZA Domains PTY LTD (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medicalert.africa> (“Domain Name”), registered with DNS Africa Ltd.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2022; the Forum received payment on June 14, 2022.
On July 15, 2022, DNS Africa Ltd confirmed by e-mail to the Forum that the <medicalert.africa> domain name is registered with DNS Africa Ltd and that Respondent is the current registrant of the name. DNS Africa Ltd has verified that Respondent is bound by the DNS Africa Ltd 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 July 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@medicalert.africa. Also on July 18, 2022, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, MedicAlert Foundation United States, Inc., offers medical identification products and medical information resources. Complainant asserts rights in the MEDICALERT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,334,545, registered November 13, 2007). Respondent’s <medicalert.africa> domain name is identical to Complainant’s mark because it contains the MEDICALERT mark in its entirety, merely adding the generic top-level domain name (“gTLD”) “.africa” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <medicalert.africa> domain name. Respondent is not licensed or authorized to use Complainant’s MEDICALERT mark and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent has failed to make an active use of the Domain Name.
Respondent registered and uses the <medicalert.africa> domain name in bad faith. Respondent is not making active use of the Domain Name. Moreover, Respondent had actual knowledge of Complainant’s rights in the MEDICALERT mark based on the fame of the MEDICALERT mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However on July 19, 2022, Respondent sent an e-mail to the Forum that constitutes an informal response to the Complaint. Respondent relevantly states that:
“The domain name medicalert.africa was registered on behalf of our reseller Equation Business Solutions who services Medic Alert here in South Africa and who has the domain name medicalert.co.za registered under their account with ZADomains (Ourselves).
The registry for .africa is currently running a promotion and providing free registration of qualifying .africa domains for all .co.za, web.za, web.za and net.za registrants, and as such the domain name medicalert.africa was registered as part of a bulk registration for an behalf of the registrant Ruth Goble …”
Complainant holds trademark rights for the MEDICALERT mark. The Domain Name is confusingly similar to Complainant’s MEDICALERT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 formal 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 rights in the MEDICALERT mark based on registration with the USPTO (e.g Reg. No. 3,334,545, registered November 13, 2007). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the <medicalert.africa> domain name is confusingly similar to Complainant’s MEDICALERT mark as incorporates the MEDICALERT mark and adds the gTLD “.africa”. The addition of a gTLD to a mark does not distinguish a disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i); see Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the MEDICALERT mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “ZA Domains / ZA Domains PTY LTD” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is inactive. In the absence of any additional evidence inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website.).
Respondent asserts that the Domain Name was registered on behalf of an individual known as Ruth Goble. The Respondent provides no evidence of this, nor any evidence or submissions that would suggest that, even if Respondent had registered the Domain Name on behalf of such an individual that such a purpose is a sufficient basis to find that Respondent has rights or legitimate interests in the Domain Name. Finally, there is no evidence (and it is not clear that Respondent is even suggesting this) that the Domain Name was registered on behalf of a related entity to the Complainant.
In the absence of any other evidence suggesting that the Domain Name is being held pending use of the Domain Name for a bona fide offering of goods or services or legitimate noncommercial or fair use, the Panel finds that Respondent is not using the Domain Name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, June 1, 2022, Respondent had actual knowledge of Complainant’s MEDICALERT mark. The Complainant had, at the time of registration, used the MEDICALERT mark for almost 65 years and developed a significant reputation in the mark, one that could easily have been identified had Respondent conducted an Internet search prior to registration. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that is identical to the MEDICALERT mark other than to take advantage of Complainant’s reputation in the MEDICALERT Mark. I note that given the reputation of the MEDICALERT mark it is highly unlikely that a third party (either the Respondent or Ruth Goble) would register the Domain Name by co-incidence and certainly nothing has been provided by the Respondent to suggest that this is the case. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel notes that the actions of Respondent in this matter do not fall under the arguments set out in Policy ¶ 4(b). However, these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). It is well accepted that the elements of Policy ¶ 4(b) are not exclusive and that a Panel may consider all of the circumstances of a given case, including passive holding, in making its bad faith analysis. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”); see also Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Respondent has, without realistic explanation (or active use), registered a domain name that is wholly incorporates the well-known MEDICALERT mark. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii) and, after considering the totality of the circumstances (including the fact that the Domain Name is identical to the MEDICALERT mark) and in the absence of any coherent and supported explanation for such inactivity by Respondent (or any possible good faith use of the Domain Name by Respondent), the Panel finds that this inactive holding of the Domain Name amounts to use in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <medicalert.africa> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 15, 2022
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