Medline Industries, Inc. v. Bishal pudasaini
Claim Number: FA2108001959054
Complainant is Medline Industries, Inc. (“Complainant”), represented by Ashly Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Bishal pudasaini (“Respondent”), Nepal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lifecaremedicalmart.com> (the “disputed domain name”), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 11, 2021; the Forum received payment on August 11, 2021.
On August 12, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <lifecaremedicalmart.com> disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 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@lifecaremedicalmart.com. Also on August 17, 2021, 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 September 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed 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 has rights in the MEDICALMART trademark through its registration of the mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA771457, registered May 6, 2019) (hereinafter referred to as the “MEDICALMART Mark”).
Complainant claims that Respondent’s <lifecaremedicalmart.com> disputed domain name is confusingly similar to Complainant’s MEDICALMART Mark because it incorporates the MEDICALMART Mark in its entirety and merely adds the descriptive terms “life” and “care”, followed by the “.com” generic top-level domain (“gTLD”). In addition, Complainant contends that Respondent has no rights or legitimate interests in the <lifecaremedicalmart.com> disputed domain name as Complainant has not authorized, licensed or otherwise permitted Respondent to use the MEDICALMART Mark. Finally, Complainant contends that Respondent registered and is using the <lifecaremedicalmart.com> disputed domain name in bad faith since Respondent registered the disputed domain name to disrupt Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds trademark rights in the MEDICALMART Mark, that the disputed domain name is confusingly similar to Complainant’s MEDICALMART Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel concludes that the disputed domain name is confusingly similar to the MEDICALMART Mark under Policy¶ 4(a)(i).
The Panel finds that Complainant has rights in the MEDICALMART Mark based on the registration of the MEDICALMART Mark with the CIPO (e.g., Reg. No. TMA771457, registered May 6, 2019). Registration of a mark with the CIPO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Toronto-Dominion Bank v. Reggie Rags, FA 1778853 (Forum Apr. 19, 2018) (“Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, or any name similar to it, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the MEDICALMART Mark, and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the disputed domain name resolves to a website in which Respondent passes itself off as Complainant. Where a respondent uses a disputed domain name to pass itself off as a complainant, the panel may find that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the disputed domain name resolved to a website featuring the complainant’s mark and various photographs related to the complainant’s business).
Finally, Respondent uses the <lifecaremedicalmart.com> disputed domain name to further a fraudulent phishing scam by collecting personal information of unsuspecting users who seek to place orders on the resolving website, although no orders were actually sold to such users. Such use of a disputed domain name in a fraudulent phishing scheme, as here, also demonstrates that Respondent failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent is using its website as a fraudulent phishing scheme to collect unsuspecting users’ personal information. Per Policy ¶ 4(a)(iii), using a disputed domain name to phish for users’ information is considered evidence of bad faith. See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses to fraudulently phish for information. Thus, the Panel concludes that Respondent phishes for confidential information and does so in bad faith under Policy ¶ 4(a)(iii).”).
Third, the Panel finds evidence of bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii), as well as an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). Here, Respondent uses the disputed domain name to pass itself off as Complainant and to deceive Internet users into believing they have reached Complainant’s website, or is otherwise affiliated or associated with Complaint. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017).
Finally, the Panel finds that Respondent registered and used the disputed domain name in bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the MEDICALMART Mark. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is sufficient to establish bad faith under Policy ¶ 4(a)(iii). It strains credulity to think that Respondent did not have actual knowledge of Complainant’s MEDICALMART Mark. Prior knowledge of a complainant’s trademark and use of a disputed domain name that incorporates the trademark is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s mark at the time of registration).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lifecaremedicalmart.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: September 20, 2021
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