Medline Industries, L.P. v. cai yan you / yi wu shi yu ming dian zi shang wu shang hang
Claim Number: FA2307002052765
Complainant is Medline Industries, L.P. (“Complainant”), represented by Ashly I. Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, US. Respondent is cai yan you / yi wu shi yu ming dian zi shang wu shang hang (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlinesecureflo.com>, registered with PSI-USA, Inc. dba Domain Robot.
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 Forum electronically on July 12, 2023; Forum received payment on July 12, 2023.
On July 13, 2023, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to Forum that the <medlinesecureflo.com> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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 the attention of postmaster@medlinesecureflo.com. Also on July 19, 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 August 9, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant is the largest privately held manufacturer and distributor of healthcare supplies in the United States.
Complainant holds a registration for the service mark MEDLINE, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,778,944, registered April 20, 2010, and renewed as of May 25, 2019.
Complainant has done business online at the address <medline.com> since 1998.
On June 21, 2023, Complainant applied to the USPTO for registration of the marks MEDLINE SECUREFLO and MEDLINE SECURE FLO GO on an intent-to-use basis.
Four days later, on June 25, 2023, Respondent registered the domain name <medlinesecureflo.com>.
The domain name is confusingly similar to Complainant’s MEDLINE mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise permitted Respondent to use its MEDLINE mark in the domain name.
The domain name resolves to a webpage stating that it is available for sale at a price of USD 3,999.
The domain name has been put to no other use than to sell it to Complainant at a commercial profit.
Respondent has neither any rights to nor any legitimate interests in the domain name.
Respondent has 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 service mark 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 to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
By virtue of its registration of the MEDLINE service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <medlinesecureflo.com> domain name is confusingly similar to Complainant’s MEDLINE service mark. The domain name incorporates the mark in its entirety, with only the addition of the coined term “secureflo,” which relates to an aspect of Complainant’s line of business, plus 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, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of a UDRP complainant a gTLD and the generic term “finance,” which described that complainant’s financial services business conducted under the mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
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.
And see, in particular, Bridgewater Associates, L.P. v. Buy this domain on Dan.com, FA2015999 (Forum November 10, 2022) (finding confusing similarity between a challenged domain name and a UDRP complainant’s BRIDGEWATER mark, noting that the infringing domain name was registered three days after that complainant filed an intent-to-use application for the mark BRIDGEWATER DEFENSIVE ALPHA).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <medlinesecureflo.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, for example, 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 domain name <medlinesecureflo.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the MEDLINE mark in that domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “cai yan you / yi wu shi yu ming dian zi shang wu shang hang,” 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 objection from Respondent, that the <medlinesecureflo.com> domain name now resolves to a webpage stating that it is available for sale at a price of USD 3,999, and that the domain name has been put to no other use than to sell it to Complainant at a commercial profit. This employment 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. Respondent does not qualify for protection under the provisions of Policy ¶ 4(c)(i) because there is no showing in the record that Respondent is making or has made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Likewise, Respondent cannot claim refuge in the provisions of Policy ¶ 4(c)(iii) because there is nothing in the record before us demonstrating that Respondent is making a legitimate noncommercial or fair use of the domain name without intent to acquire commercial gain. Indeed, the evidence is to the contrary. See, for example, Workday, Inc. v. Terry McGlynn, et al., FA2037257 (Forum April 25, 2023):
[T]he Response indicates that the Domain Names were registered as part of a strategy (not known or endorsed by Complainant) to register a series of domain names corresponding to the Complainant’s … mark in order to sell them as a package to the Complainant. … [T]he offer for sale … is … [not]… a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent registered the disputed <medlinesecureflo.com> domain name with the then present intent to sell it to Complainant for a profit, which it has since attempted, and is still attempting, to do. That Respondent registered the domain name only four days after Complainant had applied to the USPTO for registration of the mark MEDLINE SECUREFLO on an intent-to-use basis, and that the domain name has been put to no other use than to attempt to sell it since it was registered, seals this question. Without more, these facts establish that Respondent both registered and is now using the domain name in bad faith. See, for example, Sullivan & Cromwell LLP v. Lei Shi, FA1983479 (Forum March 10, 2022):
Under Policy¶4(b)(i), an offer to sell a disputed domain name indicates bad faith if it is likely that a respondent intended to make such an offer when registering the domain.
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 <medlinesecureflo.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
______________________________
Dated: August 22, 2023
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