MedicAlert Foundation United States, Inc. v. MelGerLLC MelGerLLC
Claim Number: FA2206002001504
Complainant is MedicAlert Foundation United States, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris LLP, California, USA. Respondent is MelGerLLC MelGerLLC (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medicalert.net>, registered with DropCatch.com 753 LLC.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2022; the Forum received payment on June 22, 2022.
On June 23, 2022, DropCatch.com 753 LLC confirmed by e-mail to the Forum that the <medicalert.net> domain name is registered with DropCatch.com 753 LLC and that Respondent is the current registrant of the name. DropCatch.com 753 LLC has verified that Respondent is bound by the DropCatch.com 753 LLC 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 June 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@medicalert.net. Also on June 24, 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 July 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant sells jewelry containing emblems with personal and/or medical information which provide medical information to emergency responders. Complainant has rights in the MEDICALERT and MEDIC ALERT marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 695,056, registered on March 22, 1960 (for MEDIC ALERT); Reg. No. 3,334,545, registered on November 13, 2007 (for MEDICALERT)). The disputed domain name is identical or confusingly similar to Complainant’s MEDICALERT and MEDIC ALERT marks as it incorporates the marks in their entirety, while adding the “.net” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its MEDICALERT and MEDIC ALERT marks in the disputed domain name.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business and hosts click-through links. Additionally, Respondent creates confusion and a false sense of affiliation with Complainant. Furthermore, Respondent registered the disputed domain name with constructive knowledge of Complainant’s rights in the MEDICALERT and MEDIC ALERT marks.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on June 15, 2022.
2. Complainant has established rights in the MEDICALERT and MEDIC ALERT marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 695,056, registered on March 22, 1960 (for MEDIC ALERT); Reg. No. 3,334,545, registered on November 13, 2007 (for MEDICALERT)).
3. The disputed domain name’s resolving website advertises third-party links to unrelated and competing services. The third-party links redirect Internet users to three different healthcare services: healthcare services; skilled nursing and rehabilitation services; and addiction recovery programs and treatment services.
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 claims rights in the MEDICALERT and MEDIC ALERT marks through its registration with the USPTO (e.g., Reg. No. 695,056, registered on March 22, 1960 (for MEDIC ALERT); Reg. No. 3,334,545, registered on November 13, 2007 (for MEDICALERT)). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). Therefore, the Panel finds Complainant has established rights in the MEDICALERT and MEDIC ALERT marks under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name is identical or confusingly similar to its marks. Under Policy ¶ 4(a)(i), adding the “.net” gTLD is insufficient in differentiating the domain name from the mark. The disputed domain name incorporates Complainant’s marks in their entirety while adding the “.net” gTLD. The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its marks in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by the disputed domain name, while a lack of evidence demonstrating otherwise may affirm a complainant’s assertion that it never authorized or licensed respondent to use its mark in the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS information identifies Respondent as “MelGer LLC MelGer LLC”, while nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its marks in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
While Complainant does not address this directly, the Panel finds Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use because the disputed domain name’s resolving website offers a variety of competing hyperlinks. Past panels have agreed that using a disputed domain name to redirect users to a website that hosts third-party competing hyperlinks is not a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The Panel references screenshots of the disputed domain name’s resolving website, redirecting users to services related to health insurance in direct competition with Complainant. Therefore, the Panel finds Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith. Under Policy ¶ 4(b)(iii), using a disputed domain name to advertise third-party links is a disruption of a complainant’s business and thus evidence of bad faith. See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which advertises third-party links to unrelated and competing services. The Panel notes that Complainant provides services in the medical and healthcare field. The third-party links redirect Internet users to three different healthcare services: healthcare services; skilled nursing and rehabilitation services; and addiction recovery programs and treatment services. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(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 <medicalert.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: July 26, 2022
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