DECISION

 

Medline Industries, LP v. Alex Whos

Claim Number: FA2310002068511

 

PARTIES

Complainant is Medline Industries, LP ("Complainant"), represented by Ashly I. Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Alex Whos ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <medlinesplus.com> ("Disputed Domain Name"), registered with GoDaddy.com, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 30, 2023; Forum received payment on October 30, 2023.

 

On October 30, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <medlinesplus.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@medlinesplus.com. Also on October 31, 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 November 21, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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.

 

RELIEF SOUGHT

Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant submits that it coined the term "MEDLINE" over fifty years ago for use as its company name as well as its house mark.

 

Complainant claims rights in the MEDLINE mark established by its ownership of the portfolio of registrations described below and extensive use of the mark in its business as a provider of healthcare supplies in the United States, since at least as early as 1967 and submits that it has established strong common law rights in MEDLINE as a result of its use of the mark over the past five decades.

 

Complainant submits that it has grown to have an extensive 40-branch distribution network throughout the United States, through which it provides a wide variety of healthcare products and services under its MEDLINE mark which can be found in most hospitals, extended-care facilities, surgery centers, physician offices, home health agencies, and many retail outlets. Complainant adds that it is an accredited wholesale distributor of prescription medications under the National Association of Boards of Pharmacy's "Verified-Accredited, Wholesale Distributors" program.

 

Complainant alleges that the Disputed Domain Name <medlinesplus.com>, is identical or confusingly similar to the MEDLINE mark arguing that it is well-established that the combination of a single letter, a generic term, and a generic Top Level Domain ("gTLD") extension is insufficient to distinguish a domain name from a trademark. See Webster Financial Corporation and Webster Bank, National Association v. Tanya Moulton, FA 2034214 (Forum Apr. 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).

 

Here, Complainant argues, the addition of the letter "s" and the generic term "plus" does not distinguish the Disputed Domain Name from Complainant's MEDLINE mark. See Novartis AG v. dwayne walker, FA 1506961 (Forum July 25, 2013) (finding the domain name <dailiesplus.com> was confusingly similar to Complainant's DAILIES trademark).

 

Moreover, Complainant argues that the use of gTLD <.com> extension in the Disputed Domain Name does not distinguish it from the MEDLINE mark. See Dollar Financial Group, Inc. v. Di Wu, FA 2033021 (Forum Mar. 31, 2023) ("Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis.").

 

Complainant next 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 Gallup v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (respondent does not have rights in domain name incorporating another's mark when respondent is not known by that mark).

 

Complainant adds that Respondent's identity is shown in the published WhoIs for the disputed domain name as "Registration Private", and argues that there is no evidence to suggest that Respondent is commonly known by "Medline". See Teva Pharmaceutical Industries Ltd. v. Redacted for Privacy/Privacy service provided by Withheld for Privacy ehf, FA 2035672 (Forum Apr. 20, 2023) ("The publicly available WhoIs information shielded the name of the actual owner of the domain name but in consequence of these proceedings the Registrar has identified 'Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf' as the domain name registrant. The Panel finds no evidence that Respondent might be commonly known by the disputed domain name.").

 

In addition, Complainant asserts that it has not licensed or otherwise permitted Respondent to use the MEDLINE mark in connection with the Disputed Domain Name.

 

Furthermore, Complainant argues that its longstanding registered and common law rights in the MEDLINE trademark rights would prevent Respondent from acquiring such rights in the mark. 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.").

 

Referring to screen captures of the website to which the Disputed Domain Name resolves which are exhibited in an annex to the Complaint, Complainant further alleges that Respondent is using the Disputed Domain Name as the website address to unlawfully advertise and sell drugs including Oxycodone, Hydrocodone, Percocet, Adderall, Ritalin, Ativan, Klonopin, Valium, Xanax, Cialis, and Viagra. Complainant argues that Respondent is therefore capitalizing on the MEDLINE brand for its own commercial gain.

 

Complainant contends that Respondent's use of the Disputed Domain Name to unlawfully sell pharmaceuticals is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Medline Industries, Inc. v. N/A c/o Ingine Carastheim, FA 1087601 (Forum Nov. 16, 2007) (finding that online pharmacy site using the domain name <usamedline.com> not to be a bona fide offering of goods and services or a legitimate noncommercial or fair use).

 

Complainant next alleges that the Disputed Domain Name was registered and is being used in bad faith arguing that 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., FA 1890140 (Forum Apr. 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 is using the Disputed Domain Name as the address of a website that purports to advertise and sell pharmaceuticals, which constitutes illegal activity and argues 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, FA 1954521 (Forum Aug. 4, 2021) (finding bad faith registration and use where Disputed Domain Name was used to operate an illegal online pharmacy).

 

Complainant contends that consumers would logically expect that Complainant owns the Disputed Domain Name just as Complainant owns countless other MEDLINE-formative domain names as listed in an annex to the Complaint.

 

In conclusion, Complainant submits that 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 with the MEDLINE mark all constitute bad faith registration and use of the Disputed Domain Name under Policy ¶4(a)(iii).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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 long-established registrations 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.

 

Complainant has an established Internet presence, maintaining its principal website at <www.medline.com> on which it promotes and advertises its products and services, and has submitted a list of a large portfolio of generic Top Level Domain ("gTLD") and country-code Top Level Domain ("ccTLD") registrations consisting of, or incorporating the MEDLINE name and mark.

 

The Disputed Domain Name <medlinesplus.com> was registered on October 14, 2023 and resolves a website on which Respondent purports to offer a wide range of pharmaceuticals including Oxycodone, Hydrocodone, Percocet, Adderall, Ritalin, Ativan, Klonopin, Valium, Xanax, Cialis, and Viagra.

 

There is no information available about Respondent except for that provided in the Complaint, as amended, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for verification of the registration details of the Disputed Domain Name. The identity of the Registrant is concealed on the published WhoIs. The Registrar has confirmed that Respondent is the registrant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

A.       Complainant's Rights

Complainant has provided convincing, uncontested evidence that it has rights in the MEDLINE mark, established by the ownership of the portfolio of trademark and service mark registrations described above and the reputation and goodwill that it has established in the mark by extensive use in its business as a manufacturer and distributor of healthcare supplies

 

B.       Confusing Similarity

The Disputed Domain Name <medlinesplus.com>, consists of Complainant's MEDLINE mark in its entirety, in combination with the letter "s", the word "plus" and the gTLD extension <.com>.

 

Complainant's MEDLINE mark is clearly recognizable as being the initial, dominant, and only distinctive element in the disputed domain name.

The addition of the single letter "s" and the word "plus" does not prevent a finding that the Disputed Domain Name is confusingly similar to the MEDLINE mark.

 

Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration.

 

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).

.

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the Disputed Domain Name arguing that

·       Respondent is not generally known by the Disputed Domain Name, nor has Respondent acquired any trademark or service mark rights in the name or mark;

·       Respondent's identity is shown as "Registration Private" in the published WhoIs for the disputed domain name;

·       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;

·       Complainant's longstanding registered and common law rights in the MEDLINE trademark rights would prevent Respondent from acquiring such rights in the mark;

·       the screen captures of the website to which the disputed domain name resolves at <www.medlinesplus.com>, which are exhibited in an annex to the Complaint, show that Respondent is using the Disputed Domain Name as the address of a website on which Respondent unlawfully advertises and sells drugs including Oxycodone, Hydrocodone, Percocet, Adderall, Ritalin, Ativan, Klonopin, Valium, Xanax, Cialis, and Viagra;

·       Respondent is therefore capitalizing on the MEDLINE brand for its own commercial gain;

·       such use of the Disputed Domain Name by Respondent to illegally sell pharmaceuticals is neither 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 respondent 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 the 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).

 

Registration and Use in Bad Faith

Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the MEDLINE mark dating back at least as far as its United States trademark and service mark registrations in 1970 which long predate the registration and first use of the Disputed Domain Name which n ot was registered until October 14, 2023.

 

MEDLINE is a distinctive mark, and Complainant's uncontested assertion is that it is a coined word which Complainant has adopted as its corporate name and mark.

 

Furthermore, Complainant has shown that by its extensive use in the United States of America and online on its official website, it has established an international reputation and goodwill.

 

It is most improbable that the Disputed Domain Name which contains the MEDLINE mark as its dominant and only distinctive element was chosen for any reason other than its similarity to Complainant's mark.

 

This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind to take predatory advantage of Complainant's goodwill and reputation in the MEDLINE mark.

 

Complainant's uncontested submission that Respondent is using the disputed domain name to attract Internet traffic to Respondent's website on which Respondent purports to sell pharmaceutical products.

 

Respondent's use of the Disputed Domain Name is clearly intended to attract and confuse Internet users, misrepresent that the Disputed Domain Name, and the website to which it resolves, has an association with Complainant, and divert Internet traffic to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and the products that Respondent purports to offer.

 

Such abuse of Complainant's trademark constitutes bad faith for the purposes of the Policy.

 

As this Panel has found that the Disputed Domain Name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <medlinesplus.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

___________________________________________

James Bridgeman SC, Panelist

Dated: November 22, 2023