Medline Industries, Inc. v. Merritt DeLaughter
Claim Number: FA1207001451721
Complainant is Medline Industries, Inc. (“Complainant”), represented by Seth I. Appel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Merritt DeLaughter (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thepinkglovedance.com>, registered with Register.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2012; the National Arbitration Forum received payment on July 5, 2012.
On July 3, 2012, Register.com confirmed by e-mail to the National Arbitration Forum that the <thepinkglovedance.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 July 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2012 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@thepinkglovedance.com. Also on July 6, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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’s Contentions
a) Complainant has rights in the PINK GLOVE DANCE mark:
a. Complainant is the owner of multiple trademark registrations for the PINK GLOVE DANCE mark with the United States Patent and Trademark Office (“USPTO”) including:
i. Reg. No. 3,977,062 filed December 1, 2010; registered July 19, 2011; and
ii. Reg. No. 4,027,975 filed October 8, 2010; registered September 20, 2011;
b. Complainant has been using the mark continuously and extensively since at least November of 2009 to promote breast cancer awareness.
b) The <thepinkglovedance.com> domain name is confusingly similar to the PINK GLOVE DANCE mark.
c) Respondent lacks rights and legitimate interests in the <thepinkglovedance.com> domain name:
a. Respondent is not commonly known by the <thepinkglovedance.com> domain name;
b. The <thepinkglovedance.com> domain name resolves to a website which consists of links that are inspired by Complainant and its PINK GLOVE DANCE trademark.
d) Respondent registered and uses the <thepinkglovedance.com> domain name in bad faith:
a. Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion as to the source of the <thepinkglovedance.com> domain name;
b. Respondent registered the disputed domain name in opportunistic bad faith since she registered the domain three weeks following the debut of Complainant’s PINK GLOVE DANCE video.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the <thepinkglovedance.com> domain name on December 4, 2009.
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(e), 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 (Nat. Arb. 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 contends that, as a result of its trademark registrations, it has rights in the PINK GLOVE DANCE mark. Complainant provides the Panel with evidence of its USPTO registrations for the PINK GLOVE DANCE mark including the following:
Reg. No. 3,977,062 filed December 1, 2010; registered July 19, 2011; and
Reg. No. 4,027,975 filed October 8, 2010; registered September 20, 2011.
Registration of a mark with the USPTO is sufficient evidence of rights in the mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant asserts that it has common law rights in the PINK GLOVE DANCE mark dating back to at least November of 2009. Complainant contends that in 2009 it began offering pink hospital gloves in order to promote breast cancer awareness and has since sold millions of the gloves and donated a portion of the profits to the National Breast Cancer Foundation. Additionally, Complainant states that in the fall of 2009 it devised and produced its first PINK GLOVE DANCE video in which over 200 healthcare workers, all wearing pink gloves, dance in various locations around a hospital. According to Complainant, the video was posted on YouTube on November 13, 2009 and it has since received more than 13 million views. Complainant notes that a second PINK GLOVE DANCE video was made which involved over 4,000 healthcare workers and breast cancer survivors at 14 separate facilities across the United States and Canada. Complainant contends that it has garnered a great deal of publicity for the PINK GLOVE DANCE mark as the video has been the subject of news articles featured in various media forms by ABC News, CNN, and FOX News. Continuous and ongoing use of a mark allows the establishment of secondary meaning. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Therefore, the Panel finds that Complainant has common law rights in the PINK GLOVE DANCE mark, dating back to November, 2009 or earlier, in accordance with Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <thepinkglovedance.com> domain name is confusingly similar to the PINK GLOVE DANCE mark. The Panel agrees that Respondent’s addition of the generic term “the” to the mark in the disputed domain name fails to distinguish the <thepinkglovedance.com> domain name from the PINK GLOVE DANCE mark. Therefore, the Panel finds that the <thepinkglovedance.com> domain name is confusingly similar to the PINK GLOVE DANCE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant argues that the WHOIS record, which lists “Merritt DeLaughter” as the domain name registrant, does not suggest that consumers associate the <thepinkglovedance.com> domain name with Respondent. Panels have found that the WHOIS record is often demonstrative of whether a Respondent is commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, the Panel finds that Respondent is not commonly known by the <thepinkglovedance.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that the disputed domain name simply displays a variety of links that are featured through headings such as “Breast Cancer Awareness” and “Treatment for Breast Cancer.” As Complainant uses its brand in connection with breast cancer awareness efforts, the Panel finds that these links are competitive with Complainant’s PINK GLOVE DANCE mark. Therefore, the Panel finds that Respondent’s <thepinkglovedance.com> domain name is being used for neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant further asserts, and the Panel accepts, that the disputed domain name resolves to a website where Respondent displays links to competing websites. Complainant also alleges, and the Panel accepts, that Respondent is profiting from its registration and use of the disputed domain name. Therefore, the Panel finds bad faith in Respondent’s registration and use of the <thepinkglovedance.com> domain name under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant contends that Respondent’s bad faith in its registration and use of the <thepinkglovedance.com> domain name is particularly evident given Respondent’s timing. Complainant notes that the <thepinkglovedance.com> domain name was registered a mere three weeks following the debut of the PINK GLOVE DANCE video. Panels have found that the registration of a domain name soon after the announcement or display of a product or mark demonstrates opportunistic bad faith. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”). The Panel therefore finds that Respondent registered and is using the <thepinkglovedance.com> domain name with opportunistic bad faith.
Thus, Complainant has satisfied Policy ¶ 4(a)(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 <thepinkglovedance.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 15, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page