Medline Industries, LP v. Mark Alexander / Med Line Pills
Claim Number: FA2109001964069
Complainant is Medline Industries, LP (“Complainant”), represented by Ashly I. Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Mark Alexander / Med Line Pills (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlinepills.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2021; the Forum received payment on September 16, 2021.
On September 17, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <medlinepills.com> 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 September 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@medlinepills.com. Also on September 20, 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 October 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Medline Industries, LP, operates the largest private manufacturer and distributor of healthcare supplies in the United States.
Complainant has rights in the MEDLINE mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <medlinepills.com> domain name is identical or confusingly similar to Complainant’s MEDLINE mark, only differing by the addition of the generic or descriptive term “pills” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <medlinepills.com> domain name as it is not commonly known by the at-issue domain name and is neither an authorized user or licensee of the MEDLINE mark. Additionally, Respondent fails to use the domain name for any bona fide offer of goods or services or for any legitimate noncommercial or fair use, but instead uses the domain name to advertise and allegedly sell prescription drugs.
Respondent registered and uses the <medlinepills.com> domain name in bad faith. Respondent uses the domain name to advertise and allegedly sell prescription drugs, which is illegal without a valid prescription. Respondent’s use of the domain name is likely to create consumer confusion. Additionally, Respondent registered the <medlinepills.com> domain name with actual knowledge of Complainant’s rights in the MEDLINE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in MEDLINE.
Respondent is not affiliated with Complainant and is not authorized to use the MEDLINE mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in MEDLINE.
Respondent uses the domain name to address a website that purportedly sells prescription drugs without requiring a prescription.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the MEDLINE mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Further, Respondent’s <medlinepills.com> domain name incorporates Complainant’s MEDLINE trademark, adds the suggestive term “pills” to the mark and follows all with the generic top-level domain name “.com”. The differences between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <medlinepills.com> domain name is confusingly similar to Complainant’s MEDLINE trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Mark Alexander / Med Line Pills” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <medlinepills.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <medlinepills.com> domain name for the purposes of Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Respondent uses the <medlinepills.com> domain name to address a website advertise and purportedly sell prescription drugs. Doing indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use of the <walgreensr.com>domain name pursuant to Policy ¶ 4(c)(iii). See Medline Industries, Inc. v. N/A c/o Ingine Carastheim, Claim No. 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); see also, Medline Industries, Inc. v. LC c/o Li Chow, Claim No. FA 1088111 (Forum Nov. 16, 2007) (finding that online pharmacy site using the domain name <medlinepluss.com> not to be a bona fide offering of goods and services or a legitimate noncommercial or fair use);see also Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not 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)); see also, Walgreen Co. v. Usama Nizamani, FA 1767423 (Forum Feb. 18, 2018) (holding that respondent’s use of <wallgreenpharmacy.xyz> for a website offering prescription medications in competition with complainant’s pharmacy business was not a bona fide offering of goods or services nor a non-commercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <medlinepills.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, as mentioned above, Respondent’s confusingly similar domain name is used to address a website advertising and attempting to sell prescription pharmaceuticals without requiring a prescription. Respondent’s illegal use of the domain name shows bad faith registration and use of the domain name per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith); see also, MedImpact Healthcare Systems, Inc. v. Helen Jones, FA2107001954521 (Forum Aug. 4, 2021) (finding bad faith registration and use where infringing domain name was used to operate an illegal online
pharmacy).
Respondent’s use of the domain name further indicates that registered and is using the at-issue domain name primarily to confuse internet users in to believing that its <medlinepills.com> domain name and website are sponsored by Complainant, when they are not. Such use further shows Respondent’ bad faith under the Policy. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use).
Finally, Respondent registered <medlinepills.com> knowing that Complainant had trademark rights in MEDLINE. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from the inclusion of the suggestive term “pills” in the at-issue domain name, and from Respondent’s use of Complainant’s confusingly similar domain name to offer products competing with products offered by Complainant. The Panel thus concludes that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used its <medlinepills.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medlinepills.com> domain name be TRANSFERRED from Respondent to Complainant
Paul M. DeCicco, Panelist
Dated: October 18, 2021
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