Medline Industries, Inc. v. Jeff Ramos
Claim Number: FA1901001823737
Complainant is Medline Industries, Inc. (“Complainant”), represented by Janet A. Marvel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Jeff Ramos (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medlineservers.us>, registered with GoDaddy.com, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 4, 2019; the Forum received payment on January 4, 2019.
On January 7, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <medlineservers.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2019 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@medlineservers.us. Also on January 8, 2019, 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 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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 usTLD Dispute Resolution Policy ("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 usTLD Policy, usTLD 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 the largest privately held manufacturer and distributor of healthcare supplies in the United States. Complainant has rights in the MEDLINE mark through its use, dating back to 1967, and its trademark registrations around the world including at the United States Patent and Trademark Office (“USPTO”). The MEDLINE mark is famous as a result of its market success. Complainant is also the owner of many domain name registrations that include the MEDLINE mark including its primary address of <medline.com>. Respondent’s <medlineservers.us> domain name, registered on October 15, 2018, is confusingly similar to Complainant’s MEDLINE mark as Respondent adds the generic/descriptive term “servers” and the “.us” county code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <medlineservers.us> domain name. Respondent is not licensed or otherwise permitted to use Complainant’s MEDLINE mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and uses the <medlineservers.us> domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the MEDLINE mark prior to registering and subsequent use of the disputed domain name. Respondent attempts to sell the disputed domain name to Complainant or the highest bidder. Respondent has also established a pattern of bad faith registration as it has registered other domain names that incorporate the MEDLINE mark and the trademarks of other companies. Finally, Respondent has sought to use the disputed domain name to profit from a GoDaddy.com CashParking program.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the MEDLINE trademark based upon registration of the mark with the USPTO and other national trademark registration offices. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the MEDLINE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <medlineservers.us> domain name is confusingly similar to the MEDLINE mark, as the name incorporates the mark in its entirety, while adding the generic/descriptive term “servers” and a “.us” ccTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). The Panel therefore determines that the <medlineservers.us> domain name is confusingly similar to the MEDLINE mark per 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
The Panel finds that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Complainant next argues that Respondent has no rights or legitimate interests in the <medlineservers.us> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MEDLINE mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(iii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Jeff Ramos,” and no information in the record indicates that Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(iii) that Respondent has not been commonly known by the <medlineservers.us> domain name.
The <medlineservers.us> domain name does not resolve to any substantive website content beyond the notice “The domain is currently not approved for CashParking" and there is no evidence to indicate that it is used in any other manner. As such, there is nothing in the available evidence to indicate that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, ‘website coming soon!’ The Panel finds that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”) Therefore, this Panel concludes that Respondent has failed Policy ¶¶ 4(c)(ii) and 4(c)(iv).
Complainant further asserts that Respondent’s attempts to offer the <medlineservers.us> domain name for sale. This further indicates that it does not have rights or legitimate interests in the name. A respondent’s offer to sell a domain name to the general public can indicate the respondent lacks rights and legitimate interests in the name per Policy ¶¶ 4(c)(ii) or (iv). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides an email from Respondent attempting to sell the disputed domain name to Complainant or another entity (specifically, Respondent’s email asks “Would the company be interested in acquiring this domain before I sell it to someone that might miss represent the brand.” The Panel therefore finds that Respondent lacks rights and legitimate interests in the <medlineservers.us> domain name per Policy ¶¶ 4(c)(ii) or (iv).
Complainant contends that in light of the fame and notoriety of Complainant's MEDLINE mark, it is inconceivable that Respondent could have registered the <medlineservers.us> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is an adequate foundation upon which to build a showing of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Complainant further asserts that Respondent’s prior UDRP history involving the MEDLINE mark and its attempts to sell the disputed domain name to Complainant indicate that it had actual knowledge of Complainant’s rights. The Panel notes that, despite Complainant’s claim that its mark is famous, no evidence is submitted to support this assertion (e.g., screenshots of Complainant’s own website, examples of its marketing efforts, news stories that mention the mark, etc.) Although the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory, this assertion without evidence that the MEDLINE mark is famous is a conclusory statement and so this Panel declines to accept it as such. However, the Complaint cites two prior UDRP decisions in which the very same Respondent was ordered to transfer domain names that incorporate the MEDLINE mark. See, Medline Industries, Inc. v. Jeff Ramos, FA1809001805909 (Forum Oct. 12, 2018) (medlineinc.com ordered transferred); and Medline Industries, Inc. v. Jeff Ramos, FA1810001811409 (Forum Nov. 16, 2018) (medlineinc.us ordered transferred). In light of these prior registrations by the Respondent and the uniqueness of the MEDLINE mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark at the time it registered the disputed domain name.
Next, Complainant contends that Respondent’s only purpose in registering the <medlineservers.us> domain name was to gain commercially from the sale of the name, indicating its registration and use of the domain name in bad faith. A general offer to sell a domain name can be evidence that the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant contends that given its longstanding trademark registrations of the MEDLINE mark, and Respondent’s threat to sell it to the highest bidder, it is evident that Respondent’s purpose for registering and using the domain name was and is to sell the name for a profit. The Panel agrees and finds Respondent to have registered and used the <medlineservers.us> domain name in bad faith per Policy ¶ 4(b)(i).
Complainant further contends that Respondent’s registration of the <medlineservers.us> domain name is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP decisions, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant cites two recent cases against Respondent involving Complainant’s MEDLINE mark, supra. The Panel therefore determines that the registration and use of the <medlineservers.us> domain name is part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Finally, Complainant contends that Respondent’s attempt at using the <medlineservers.us> domain name to generate revenue through a CashParking scheme also constitutes bad faith. Use of a disputed domain name to commercially gain from a likelihood of confusion with a complainant’s mark may indicate bad faith per Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also State Farm Mutual Automobile Insurance Company v. Pompilio, FA0710001092410 (Forum Nov. 20, 2007) (finding bad faith in respondent's use of CashParking program and noting "that there is no necessity for an actual commercial gain – the intention to so gain is enough.") Complainant provides a screenshot of the disputed domain name’s resolving website and a webpage detailing the CashParking system in support of its contentions. The <medlineservers.us> domain name’s resolving webpage displays the notice “The domain is currently not approved for CashParking". Therefore, the Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in an attempt at commercial gain and, thus, in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medlineservers.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 30, 2019
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