MedicAlert Foundation United States, Inc. v. Mr James Kirkby-Bott
Claim Number: FA2204001991909
Complainant is MedicAlert Foundation United States, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris LLP, California, USA. Respondent is Mr James Kirkby-Bott (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <my-medic-alert.com>, registered with Tucows Domains Inc.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 11, 2022. The Forum received payment on April 11, 2022.
On April 12, 2022, Tucows Domains Inc. confirmed by e-mail to the Forum that the <my-medic-alert.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 May 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2022 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@my-medic-alert.com. Also on May 9, 2022, 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 June 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 is a medical device company. Complainant has rights in the MEDIC ALERT and MEDICALERT marks through multiple registrations with the United States Patent and Trademark Office (“USPTO”). Respondent’s <my-medic-alert.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent lacks rights and legitimate interests in the <my-medic-alert.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its MEDIC ALERT or MEDICALERT marks in the domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the domain name’s resolving website.
Respondent registered and uses the <my-medic-alert.com> domain name in bad faith with knowledge of Complainant’s rights in the MEDIC ALERT and MEDICALERT marks and uses the domain name in bad faith by inactively holding the domain name’s resolving website. Complainant has millions of members and is well-known within the field, which indicates that it is likely Respondent was aware of Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the MEDIC ALERT and MEDICALERT marks through multiple registrations with the USPTO (e.g. Reg. No. 695,056 MEDIC ALERT, registered March 22, 1960 and Reg. No. 3,334,545 MEDICALERT, registered November 13, 2007). The Panel finds Respondent’s <my-medic-alert.com> domain name to be confusingly similar to Complainant’s marks as it incorporates the marks in their entirety, adding two hyphens and the word “my”, and omitting the space in the case of the MEDIC ALERT mark, which differences are insufficient to distinguish the domain name from the marks, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <my-medic-alert.com> domain name was registered on March 20, 2017, many years after Complainant registered its marks, which have become very well-known in the field of medical information resources. The domain name does not resolve to an active website.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <my-medic-alert.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
The four illustrative circumstances of bad faith registration and use of a domain name set out in paragraph 4(b) of the Policy for purposes of paragraph 4(a)(iii) are not exclusive.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was aware of Complainant’s MEDIC ALERT and MEDICALERT marks when Respondent registered the <my-medic-alert.com> domain name and that Respondent’s inactive use of the domain name and failure to file a response support a finding of bad faith registration and use. In this regard the Panel adopts the reasoning in Indiana University v. Ryan G Foo / PPA Media Services FA1588079 (Forum December 28, 2014):
“…Respondent fails to use the confusingly similar domain name for any technical Internet purpose; there is no indication that the domain name is connected with a website, mail server, or other Internet device. Without any evidence or argument opposing Complainant’s contention that Respondent’s holding of the trademark identical domain name gives rise to an inference of bad faith, the Panel finds in harmony with such contention. Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).”
Complainant has established this element.
DECISION
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 <my-medic-alert.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 7, 2022
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