DECISION

 

Medline Industries, L.P. v. Francesco Piergianni / Medline USA/US/UK

Claim Number: FA2508002173773

 

PARTIES

Complainant is Medline Industries, L.P. ("Complainant"), represented by Ashly I. Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Francesco Piergianni / Medline USA/US/UK ("Respondent"), Italy.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <try-medline.com> ('the Domain Name'), registered with Tucows Domains Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 26, 2025; Forum received payment on August 26, 2025.

 

On August 27, 2025, Tucows Domains Inc. confirmed by e-mail to Forum that the <try-medline.com> Domain Name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 August 28, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 2025 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@try-medline.com. Also on August 28, 2025, 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 September 18, 2025 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

Complainant owns the trade mark MEDLINE, registered, inter alia, in the USA for personal care products since 2007. It has a range of eyecare products.

 

The Domain Name registered in 2025 is confusingly similar to the Complainant's mark adding only the generic term 'try', a hyphen and the gTLD .com which do not prevent confusing similarity.

 

The Respondent has no rights or legitimate interests in the Domain Name is not commonly known by it and is not authorised by the Complainant. The Respondent's site uses the Complainant's mark MEDLINE and the TM symbol meaning trade mark to suggest that it is a site connected to the Complainant and to offer for sale magnetic eye lashes without making it clear there is no connection with the Complainant which is not a bona fide offering of goods.

 

Further Complainant placed a test purchase and the Respondent never delivered any goods in response and has not replied to subsequent queries about that purchase which suggests the Respondent's site is fraudulent i.e. bad faith per se, as well as confusing customers for commercial gain and taking advantage of the Complainant's goodwill. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the trade mark MEDLINE, registered, inter alia, in the USA for personal care products since 2007. It has a range of eyecare products.

 

The Domain Name registered in 2025 uses the Complainant's mark MEDLINE as its masthead and the TM symbol to offer magnetic eye lashes.

 

Complainant placed a test purchase and the Respondent never delivered any goods and has not replied to subsequent queries about that purchase.

 

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

The Domain Name consists of the Complainant's registered MEDLINE mark, the generic term 'try', a hyphen and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by the Complainant). The Panel agrees that the addition of the generic term 'try' to the Complainant's mark does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy.

 

The addition of a hyphen to a mark does not distinguish a disputed domain name from a mark incorporated therein per Policy 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) ("Respondent's <workforce-now.com> domain name appropriates the dominant portion of Complainant's ADP WORKFORCE NOW mark and adds a hyphen and the gTLD ".com." These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.").

 

The gTLD .com does not serve to distinguish the Domain Name from the Complainant's mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. Although MEDLINE appears on the WhoIs details the Domain Name was not registered until 2025 and there is no corroborating evidence to show that the Respondent is commonly known by the Domain Name. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as "Jessie McKoy / Ripple Reserve Fund" in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The use of the Domain Name is commercial and so is not legitimate non commercial fair use.

 

The Complainant has a range of eye products. The Respondent has used a site using the Complainant's mark MEDLINE as a masthead and the designation TM meaning trade mark to promote magnetic eye lashes not connected to the Complainant without making it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Further the Respondent did not supply any goods in response to a test purchase and has not answered subsequent queries about that purchase which suggests the site is fraudulent. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) ("a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use").

 

The Respondent has not answered this Complaint and has not rebutted the prima face case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the Policy the site attached to the Domain Name is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it advertises products relating to the eyes, magnetic eye lashes, under the Complainant's distinctive mark (known for eye products) as its masthead and using the sign TM meaning trade mark.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site and goods offered on it likely to disrupt the business of the Complainant. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) ("the Panel finds the respondent is appropriating the complainant's mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)").

 

Further the Respondent's site has not provided goods in response to a test purchase and has not answered subsequent queries about the purchase suggesting the site is fraudulent. Phishing conduct is evidence of bad faith registration and use within the Policy 4 (a)(iii). See Klabzuba Oil & Gas, Inc v LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv).

 

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 <try-medline.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: September 18, 2025