McLaren Health Care Corporation v. Alister Mclaren / Mclaren & Mckechnie
Claim Number: FA1212001475975
Complainant is McLaren Health Care Corporation (ďComplainantĒ), represented by Steven L. Permut of Reising Ethington P.C., Michigan, USA.† Respondent is Alister Mclaren / Mclaren & Mckechnie (ďRespondentĒ), represented by Howard Gordon of Miller Beckett & Jackson, Peden & Patrick, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The Domain Name at issue is <mclaren.biz>, registered with Tucows.com Co.
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.
Mr. Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2012; the National Arbitration Forum received payment on December 14, 2012.
On December 14, 2012, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <mclaren.biz> Domain Name is registered with Tucows.com Co. and that Respondent is the current registrant of the name.† Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On December 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org.† Also on December 20, 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 Respondentís registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 7, 2013.
On January 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Hugues G. Richard as Panelist.
Complainant submitted an Additional Submission on January 14, 2013, which was determined to be timely received.
Respondent has submitted an Additional Submission on January 17, 2013, which was determined to be timely received.
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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
The Complainant states that it meets all three paragraphs of Policy ∂ 4(a) since:
(1) the Respondentís Domain Name is identical to the McLAREN trademark, which Complainant owns;
The Complainant states that it owns the McLAREN mark, a trademark registered with the United States Patent and Trademark Office (ďUSPTOĒ) (Reg. No. 4,224,362 filed September 7, 2011, registered October 16, 2012. See Complainantís Exhibit B. Under this mark, the Complainant explains that it has operated different websites such as <mclaren.org>; <mclarenhealthcare.org>; and <mclarenhealthcare.com>.
The Complainant asserts that the ďmclarenĒ component of the Disputed Domain Name is identical to its mark and that it wrongfully diverts customers from the Complainant by confusion.
(2) the Respondent has no right or legitimate interest since the Disputed Domain Name is not used under a corresponding trademark or in connection with a bona fide offering of goods or services by the Respondent;
The Complainant alleges that the Respondent has no rights or legitimate interests with respect to the <mclaren.biz> Domain Name. The Complainant asserts that the Respondent has no corresponding trademark or trade name rights in association with the Disputed Domain Name, nor is it used in connection with a bona fide offering of goods or services by the Respondent. The Complainant adds that the Respondent is using the <mclaren.biz> Domain Name to divert Internet users to the Complainantís competitors by using third-party hyperlinks. The Complainant states that this constitutes neither a right, nor a legitimate interest in a domain name.
Moreover, the Complainant contends that the Respondentís surname does not give him unfettered rights and legitimate interests when used for illegitimate and bad faith purposes. While acknowledging the Respondentís name as Alister McLaren/McLaren & McKechnie, the Complainant argues that the Respondent is not generally known under the Domain Name <mclaren.biz>.
(3) the Disputed Domain Name is used in bad faith since the Respondent intentionally attempted to attract, for commercial gain, internet users to the Respondentís website through sponsored links.
The Complainant argues that the Respondent has intentionally attempted to attract Internet users for commercial gain through the use of sponsored links, which lead to the websites of the Complainantís competition. The Complainant adds that the Respondentís website displays third-party hyperlinks which presumably provide profits by collecting click-through fees. The Complainant argues that this type of activity has been held to be evidence of bad faith following SeaWorld, Inc. v. Domain, FA 299995 (Nat. Arb. Forum Feb.10, 2010).
The Respondent presents the following arguments against the Complainantís claim:
1) There is no confusion between the Complainantís mark and the Respondentís <mclaren.biz> Domain Name;
The Respondent relies on the fact that there exists many different extensions combined with the ďmclarenĒ component to argue that there is no confusion. The Respondent adds that the nature of his business and location of his business are different from that of the Complainantís. As such, the Respondent asserts that there cannot be confusion.
The Respondent points to the fact that the registration of his Domain Name preceded the registration of the Complainantís trademark.
The Respondent states that the name McLaren is primarily seen as a surname in Scotland and that the Complainantís mark is unknown there.
2) The Respondent has rights and legitimate interests in the Disputed Domain Name, considering the history of the Respondentís business;
The Respondent exposes the long history of the McLaren optical business, which started in 1948. The Respondent then argues that his business is successful and well-known in the local area. The Respondent adds that this success led to the registration of the <mclaren.biz> domain name. The Respondent states that he has not made use of the Disputed Domain Name in order to wait until a quality site had been written; which has been the subject of many delays for business, family, and financial reasons. The Respondent insists that the sole intention has always been to provide a web presence for the family business.
3) The Respondent has never demonstrated bad faith regarding the use of the <mclaren.biz> Domain Name
The Respondent states that <mclaren.biz> is the only domain name in his repertoire. He explains that in the eight years since registration, he has never sought to sell the Disputed Domain Name, nor has he used the Disputed Domain Name to attract Internet users for commercial gain. The Respondent refers to the holding page dated January 3rd, 2013 (See Respondentís Exhibit A).
The Respondent asserts that he has been making preparations towards the website, as attested by email correspondences, with various agencies (See Respondentís Exhibits B-E); the last correspondence being made in May 2012.
The Respondent argues that this demonstrates fair intention on his behalf.
C. Additional Submissions
∑ The Complainant makes the following allegations in its Additional Submission:
The Complainant maintains its contention with regard to the use of the Respondentís surname as a domain name. The Complainant insists that using a surname to operate a pay-per-click search engine does not give the Respondent any rights or legitimate interest.
While acknowledging the Respondent retail optical business, the Complainant argues that the website does not relate to the Respondentís business. The Complainant again insists that the Respondentís website is nothing more than a pay-per-click search engine. The Complainant states that the Respondent admitted that his business was commonly known under a different name.
Concerning the Respondentís arguments, the Complainant asserts that the Respondent has submitted unsubstantiated reasons for the delay and has not submitted evidence as to what preparation had been made to write a legitimate website. The Complainant argues that broad unsupported assertions that preparations are being made are not sufficient.
The Complainant states that the doctrine of laches is not applicable in the matter at bar since the Respondent has not explained how he has been disadvantaged by the Complainantís delay in bringing the claim.
The Complainant asserts that the Respondent has not rebutted his bad faith. The Complainant admits that it is willing to accept a different name that is longer than ďmclarenĒ. In any event, the Complainant argues that the Respondent has not provided a plausible explanation for the existence of the pay-per-click website that is under the Disputed Domain Name. As such, the Complainant asserts that the Respondent has no right or legitimate interest or has good faith intentions to use the Complainantís name.
∑ The Respondent makes the following allegations in his Additional Submission:
The Respondent denies the Complainantís allegations concerning the operation of a click-through for fees website and insists that he has not made any money from the Disputed Domain Name. He adds that he would not have hesitated to take steps to rectify the matter had he known about any complaint about the content of the parked domain name.
The Respondent states that as a further legitimate interest, he would like to pass on the domain name to his children after his own working life concludes.
The Respondent has made steps towards web content for the Disputed Domain Name. The evidence demonstrates that the Respondent has contacted different professionals in web design and information technology for the domain name <mclaren.biz> (See Exhibits B - E)
Moreover, the evidence does not demonstrate conclusively that the Respondent has made any financial gains through the links sponsored on the website.
After consideration of the evidence, the Panel finds that the Complainant has failed to establish: 1) that the Respondent has no right or legitimate interest in <mclaren.biz> Domain Name; and 2) that the Respondent registered and is using the <mclaren.biz> Domain Name in bad faith. The Complainant has failed to meet all of the three elements required under Policy ∂ 4(a). The relief is therefore denied.
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.
Cease and Desist Letter
Before considering the claim on its merits, the Panel would like to discuss the absence of any cease and desist letter in this matter. Before a matter is taken to a tribunal, it is useful to consider sending a cease and desist, which gives an opportunity for the parties to settle their dispute and avoid unnecessary procedures. Had the Complainant done so, this matter may have been resolved through amicable means. The Respondent acknowledged that he would have responded timely to such a letter and would have taken the steps necessary to rectify the matter. Parties are encouraged to communicate with one another in order to settle matters before filing a complaint.
The Domain Name <mclaren.biz> is identical or confusingly similar to the trademark owned by the Complainant. The Complainant has met its burden under Policy ∂ 4(a)(i).
The Complainant has rights in the McLAREN trademark. †The Complainantís rights in the McLAREN trademark are demonstrated by its registration (Reg. No. 4,224,362 filed September 7, 2011, registered October 16, 2012), based on first use in commerce on December 31, 1951. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.† The Respondent has the burden of refuting this assumption. See Innomed Techs., Inc. v. DRP Servs., FA221171 (Nat. Arb. Forum Feb. 18, 2004); see also Janus Int'l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002). Considering the Complainantís registration of the McLAREN mark in the United Stated, the Complainant has satisfied Policy ∂ 4(a)(i). The Respondent has not presented evidence which rebut this presumption. Moreover, the location of the trademark is irrelevant for the purposes of Policy ∂ 4(a)(i) See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007.
The Panel finds that the Respondent has met its onus with regard to having rights and legitimate interests in the <mclaren.biz> Domain Name. The Complainantís claim fails under Policy ∂ 4(a)(ii).
Under Policy ∂ 4(a)(ii), the Complainant must first make a prima face case that the Respondent lacks rights and legitimate interests in the Disputed Domain Name. This step is easy to meet as the burden is light See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006). The Complainant argues that the Respondentís <mclaren.biz> Domain Name provides hyperlinks that connect to other businesses in the health and medical insurance services industry, which are in competition with the Complainantís business. In its Additional Submission, the Complainant also contends that the retail optical outlet using the McLaren name does not relate to the website found under the <mclaren.biz> domain name. See Complainantís Exhibits Q - V. This satisfies the burden that the Complainant must meet under Policy ∂ 4(a)(ii).
The burden then shifts to the Respondent, which now has the onus to demonstrate that he has rights and legitimate interests in the Disputed Domain Name. See Hanna-Barbara Prods., Inc. v. Entmít Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). The Respondent has met his onus in this regard. The Respondent has demonstrated to the Panelís satisfaction that he had rights and legitimate interests in the <mclaren.biz> Domain Name following the circumstances set out in Policy ∂ 4(c). The Panel finds that the steps the Respondent has taken to establish a website under the <mclaren.biz> Domain Name †(See Respondentís Exhibits B Ė E) and the use of the Respondentís surname demonstrate the Respondentís rights and legitimate interest. They are discussed in detail below.
The Respondent, as far back as June 29, 2010, has made preparations in order to provide web content under the <mclaren.biz> domain name. See Respondentís Exhibit B. There have been exchanges with different web design and IT professionals regarding the website to be used under <mclaren.biz> on June 29, 2010; March 5, 2012; August 3, 2012; and May 30, 2012. Contrary to the Complainantís contentions, the Panel finds that the Respondent has made demonstrable preparations to use the <mclaren.biz> domain name with bona fide offering of goods or services under Policy ∂ 4(c)(i). See Google Inc. v. Sullivan, FA 423451 (Nat. Arb. Forum Mar. 1, 2012).
Furthermore, the Respondent is commonly known under the McLaren name. This name is also reflected in the Respondentís business. The Respondent can demonstrate its rights and legitimate interest in the Disputed Domain Name under Policy ∂ 4(c)(ii) if the Domain Name reflects his name. See G.A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001). The evidence demonstrates that the Respondentís surname is indeed McLaren, which is also associated with the Respondentís business. However, the Complainant alleges that the fact that the surname is McLaren does not give the Respondent unfettered rights and legitimate interests in such a Domain Name when used for illegitimate and bad faith purposes.
According to the Complainant, the purpose is presumably the making of profits from the posting of sponsored listings by collecting click-through fees. The Complainant brings no evidence to support this ďpresumption.Ē On the other hand the Respondent forcefully denies this allegation and states that he has not made any money from the <mclaren.biz> Domain Name. Under the circumstances, the Panel cannot conclude that the Respondentís purpose, when registering and using the Domain Name was the making of profits from the posting of sponsored listings by collecting click-through fees.
Considering that the Respondent has demonstrated circumstances that show his rights and legitimate interests for the purposes of Policy ∂ 4(a)(ii), the Panel finds that the Complainant has failed to satisfy Policy ∂ 4(a)(ii).
As the Complainant has failed to meet its burden under Policy ∂ 4(a)(ii), the Panel is not required to consider the Complainantís argument under Policy ∂ 4(a)(iii).
However, the Panel did consider those arguments under Policy ∂ 4(a)(iii) and finds that the Respondent did not register and use the Disputed Domain Name in bad faith, but under the circumstances the Panel will not further elaborate on this matter.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mclaren.biz> Domain Name †REMAIN WITH the Respondent.
Hugues G. Richard, Panelist
Dated: January 24, 2013
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