Medline Industries, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2012001925182
Complainant is Medline Industries, Inc. (“Complainant”), represented by Janet A. Marvel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onemedline.com>, registered with Media Elite Holdings Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2020; the Forum received payment on December 15, 2020.
On December 16, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <onemedline.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 December 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2021 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@onemedline.com. Also on December 17, 2020, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant manufactures and distributes healthcare supplies. Complainant has rights in the MEDLINE trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 894,673, registered on July 14, 1970). Respondent’s <onemedline.com> domain name is confusingly similar to Complainant’s trademark because it simply adds the term “one” to the MEDLINE trademark.
Respondent does not have rights or legitimate interests in the <onemedline.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the MEDLINE trademark. Additionally, Respondent could not possibly be known by the MEDLINE trademark because it is famous and well-known.
Respondent registered and uses the <onemedline.com> domain name in bad faith. Respondent uses the disputed domain name to confuse Internet users and offer third-party hyperlinks on a parked webpage. Additionally, Respondent has constructive knowledge of Complainant’s rights in the MEDLINE trademark based on registration of the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 894,673 MEDLINE (word), registered July 14, 1970 for goods in classes 24 and 27;
No. 894,684 MEDLINE (word), registered July 14, 1070 for goods in classes 5 and 10;
No. 897,881 MEDLINE (word), registered September 1, 1970 for goods in class 25;
No. 1,810,374 MEDLINE (word), registered December 14, 1993 for goods in classes 3, 5, 10 and 16;
No. 3,778,944 MEDLINE (word), registered April 20, 2010 for services in class 44;
No. 3,311,664 MEDLINE (logo), registered October 16, 2007 for goods and services in classes 3, 5, 9, 10, 12, 16, 20, 21, 24, 25, 27 and 35;
No. 3,311,898 MEDLINE (word), registered October 16, 2007 for goods and services in classes 3, 9, 11, 12, 16, 20, 21, 22, 24, 25, 27 and 35;
No. 3,365,696 MEDLINE (word), registered January 8, 2008 for goods in classes 5 and 10;
No. 3,301,915 MEDLINE (word), registered October 2, 2007 for goods in class 24;
No. 5,166,882 MEDLINE (device), registered March 21, 2017 for goods and services in classes 3, 5, 9, 10, 11, 12, 16, 20, 21, 22, 24, 25, 27, 35 and 44;
and
No. 5,171,995 MEDLINE (device), registered March 28, 2017 for goods and services in classes 3, 5, 9, 10, 11, 12, 16, 20, 21, 22, 24, 25, 27, 35 and 44.
The disputed domain name was registered on November 23, 2020.
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”).
The Complainant asserts rights in the MEDLINE trademark based on registration with the USPTO (e.g., Reg. No. 894,673, registered on July 14, 1970). Registration of a trademark with the USPTO is a valid showing of rights in a trademark. 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”).”). Since Complainant provides evidence of registration of the MEDLINE trademark with the USPTO, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <onemedline.com> domain name is confusingly similar to Complainant’s trademark because it simply adds the term “one” to the MEDLINE trademark. The addition of a generic or descriptive term to a trademark does not negate any confusing similarity between a disputed domain name and trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Thus, the Panel find that the disputed domain name is confusingly similar to the MEDLINE trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 argues that Respondent does not have rights or legitimate interests in the <onemedline.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the MEDLINE trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization or permission to use a trademark constitutes a further showing that a respondent lacks rights in a mark. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information lists “Domain Administrator / Fundacion Privacy Services LTD” as the registrant and not information suggests that the Complainant has authorized Respondent to use the MEDLINE trademark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
The Complainant argues that Respondent registered and uses the <onemedline.com> domain name in bad faith because Respondent confuses Internet users and offers third-party hyperlinks on the resolving parked webpage for the disputed domain. The use of a disputed domain name to confuse users and feature third-party hyperlinks can be evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the resolving webpage for the disputed domain name showing various third-party hyperlinks and Complainant notes that consumers would reasonably believe that the disputed domain name is affiliated with the Complainant since it is similar to Complainant’s other domain names involving the MEDLINE trademark (including but not limited to: <medline.com>,
<medline.eu>, <medline.link>, <medline.us>, <medline.info>, <medline.mobi>, <medline.net>, <medline.supplies>, and <medline4me.com>). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Furthermore, Complainant argues that Respondent has constructive knowledge of Complainant’s rights in the MEDLINE trademark based on registration of the trademark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, Panels have found actual knowledge based on the fame and notoriety of a mark. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel agrees with the Complainant’s conclusion that Respondent has actual knowledge of Complainant’s rights in the MEDLINE trademark, and the Panel thereby also find bad faith per 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 <onemedline.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 18, 2021
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