Medline Industries, L.P. v. vany health
Claim Number: FA2306002048420
Complainant is Medline Industries, L.P. (“Complainant”), USA, represented by Ashly Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, USA. Respondent is vany health (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vmedline.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on June 9, 2023; Forum received payment on June 9, 2023.
On June 9, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <vmedline.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 June 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2023 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@vmedline.com. Also on June 14, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant Medline Industries, LP including its predecessor-in-interest, Medline Industries, Inc. is the largest privately held manufacturer and distributor of healthcare supplies in the United States. Complainant has rights in the MEDLINE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 894,684 registered on July 14, 1970). Complainant has established strong common law rights in MEDLINE as a result of its use and promotion of the mark over the past five decades. The disputed domain name is confusingly similar to Complainant’s mark MEDLINE because it incorporates Complainant’s mark and adds the letter “v” and the “.com” generic top-level-domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain name. 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. There is no evidence to suggest that Respondent is commonly known by “Medline.” Complainant has not licensed or otherwise permitted Respondent to use the MEDLINE mark in connection with the disputed domain name. Respondent illegally advertises and sells drugs including opioids, and benzodiazepines. Respondent is capitalizing on the MEDLINE brand for its own commercial gain. Respondent’s use of the disputed domain name to illegally sell pharmaceuticals and psychedelics is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on October 25, 2022.
2. Complainant has established rights in the MEDLINE mark based upon registration with the USPTO (e.g., Reg. No. 894,684 registered on July 14, 1970).
3. The disputed domain name resolves to a website offering a wide range of pharmaceutical drugs including opioids, and benzodiazepines such as Hydrocodone, Methadone, Oxycodone, OxyContin, Percocet, Clonazepam, Diazepam, Lyrica, and Xanax, among others.
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 asserts rights in the MEDLINE mark based upon registration with the USPTO (e.g., Reg. No. 894,684 registered on July 14, 1970). Registration of a mark with the USPTO is a valid showing of rights in a mark. Since Complainant provides evidence of registration of the MEDLINE mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy 4(a)(i).
Complainant claims that the disputed domain name <vmedline.com> is confusingly similar to Complainant’s MEDLINE mark. The addition of a single letter as well as a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Webster Financial Corporation and Webster Bank, National Association v. Tanya Moulton, FA2303002034214 (Forum April 11, 2023) (“When a disputed domain name wholly incorporates another’s mark, adding a single letter is insufficient to defeat a finding of confusing similarity.”; finding <fwebsteronline.com> domain name confusingly similar to WEBSTER and WEBSTER ONLINE trademarks); ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . ”).
The Panel notes that the disputed domain name incorporates Complainant’s mark MEDLINE and adds the single letter “v” and the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s MEDLINE mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The Panel notes that the unmasked WHOIS information identifies “vany health” as the registrant. Complainant asserts that there is no evidence to suggest that Respondent is commonly known by “Medline.” Complainant has not licensed or otherwise permitted Respondent to use the MEDLINE mark in connection with the disputed domain name. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the disputed domain name to illegally advertise and sell drugs including opioids, and benzodiazepines. Respondent is capitalizing on the MEDLINE brand for its own commercial gain. Respondent’s use of the disputed domain name to illegally sell pharmaceuticals and psychedelics is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the disputed domain name for illegal activities does not constitute a legitimate right or interest in the disputed domain name. See WIPO Jurisprudential Overview 3.0, section 2.13 (“the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”); Abbott Laboratories v. Privacy service provided by Withheld for Privacy ehf, FA2204001992701 (Forum May 11, 2022) (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”)
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered in bad faith and is being used in bad faith. Respondent registered the disputed domain name to take advantage of the value and goodwill associated with the MEDLINE mark, which constitutes bad faith. The combination of Respondent’s knowledge of Complainant’s prior rights and Respondent's use of the disputed domain name intentionally to attract users to a website illegally advertising and selling pharmaceuticals and psychedelics with the MEDLINE mark constitutes bad faith registration and use of the disputed domain name under Policy ¶4(a)(iii).
The Panel notes from the screenshot of the disputed domain name’s resolving website that Respondent admits illegal advertising and selling pharmaceuticals and psychedelics by stating on its site: “We do recognize the extent of federal and state laws we broke to offer you this service.” The Panel finds that such use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See MedImpact Healthcare Systems, Inc. v. Helen Jones, FA2107001954521 (Forum Aug. 4, 2021) (finding bad faith registration and use where infringing domain name was used to operate an illegal online pharmacy); VS Pharmacy, Inc. v. Alexander Shedrin, FA1816288 (Forum Dec. 7, 2018) (finding that the respondent registered the domain name in bad faith since the domain name was being used in connection to selling illegal pharmaceutical products); see also, Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith). Therefore, the Panel finds that Respondent's use of the disputed domain name intentionally to attract users to a website illegally advertising and selling pharmaceuticals and psychedelics with the MEDLINE mark constitutes bad faith registration and use of the disputed domain name under 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 <vmedline.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Panelist
Dated: July 12, 2023
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