national arbitration forum

 

DECISION

 

McLaren Health Care Corporation v. Domains, Profile

Claim Number: FA1212001475989

 

PARTIES

Complainant is McLaren Health Care Corporation (ďComplainantĒ), represented by Steven L. Permut of Reising Ethington P.C., Michigan, USA.† Respondent is Domains, Profile (ďRespondentĒ), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mclaren.net>, registered with Network Solutions.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

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 17, 2012, Network Solutions confirmed by e-mail to the National Arbitration Forum that the <mclaren.net> domain name is registered with Network Solutions and that Respondent is the current registrant of the name.† Network Solutions has verified that Respondent is bound by the Network Solutions 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 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 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 postmaster@mclaren.net.† Also on December 18, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant:

1.    Complainant has registered the MCLAREN mark with the United States Patent and Trademark Office (ďUSPTOĒ) (Reg. No. 4,224,362 filed September 7, 2011; registered October 16, 2012).

2.    Complainant has continuously provided health care services under the MCLAREN mark since at least as early as 1951.

3.    Complainant has continuously operated active websites at the <mclaren.org>, <mclarenhealthcare.org>, and <mclarenhealthcare.org> domains since October 10, 2002.

4.    Complainant now spends $5,000,000 per year promoting its services through: television, newspapers, magazines, newsletters, brochures, radio, outdoor billboards, internet and direct mailing.

5.    During its 2011 fiscal year, Complainant employed 15,000 employees, engaged or employed 4,200 physicians and 500 resident and fellowship individuals, and raised $4.3 million in donations.

a.    During that time, Complainantís facilities also had 326,455 emergency room visits, 2,424,023 outpatient visits, and 97,795 inpatient admissions, including 4,438 newborns.

6.    Respondentís <mclaren.net> domain name is identical to Complainantís MCLAREN mark.

7.    The <mclaren.net> domain name resolves to a website that provides links to third-party sites which offer medical services competitive those provided by Complainant.

a.    Specifically, links are provided to competing health plan and medical insurance, hospital and health care, and medical educations services.

8.    Respondent profits from the sponsored listings posted on its website through the collection of click-through fees.

 

  1. Respondent has not submitted a formal Response in this proceeding, however the Panel notes that an e-mail correspondence has been received from Respondent, claiming that:

1.    †Respondent received the Complaint just before the Christmas period, which did not leave Respondent enough time to prepare a Response in time to meet the January 7, 2013 deadline.

2.    Respondent uses the <mclaren.net> domain name purely for e-mail purposes.

a.    If the domain is transferred to Complainant, Respondent will lose contact with hundreds of people.

3.    Respondentís surname is McLaren.

4.    The <mclaren.net> domain name points to a holding page operated by Respondent, over which Respondent has no control with regard to management or design.

a.    Respondent has ďsince asked them to take it down.Ē

5.    The Panel notes that Respondent registered the <mclaren.net> domain name on January 8, 2004.

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.† Complainant has rights in its MCLAREN mark.

2.† Respondentís <mclaren.net> domain name is identical to Complainantís mark.

3.† Respondent has no rights to or legitimate interests in the domain name.

4.† Respondent registered and used the domain name in bad faith.

 

DISCUSSION

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 respondentís 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) (ďIn the absence of a response, it is appropriate to accept as true all allegations of the Complaint.Ē).

 

Identical and/or Confusingly Similar

 

Complainant provides the Panel with evidence of its registration of the MCLAREN mark with the United States Patent and Trademark Office (ďUSPTOĒ) (Reg. No. 4,224,362 filed September 7, 2011; registered October 16, 2012). The Panel finds that Complainantís trademark registration confers rights in the mark dating back to the date Complainant filed for trademark protection. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, ďsuch evidence establishes complainantís rights in the mark pursuant to Policy ∂ 4(a)(i).Ē); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (ďAs Complainantís trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing Ďrightsí in the mark for the purposes of Policy ∂ 4(a)(i) dates back to Complainantís filing date.Ē). The Panel holds that Complainant has rights in the MCLAREN mark under Policy ∂ 4(a)(i) dating back to September 7, 2011 by virtue of its USPTO registration.† Further, the Panel finds that Complainant need not own a trademark registration in the country of Respondent in order to establish rights in its mark under Policy ∂ 4(a)(i).† See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).††

 

Complainant argues that its longstanding use of the MCLAREN mark in connection with the provision of health care-related services has lead the mark to achieve secondary meaning. Complainant claims that it has continuously provided health care services under the MCLAREN mark since at least as early as 1951. Complainant claims to have continuously operated active websites at the <mclaren.org>, <mclarenhealthcare.org>, and <mclarenhealthcare.org> domains since October 10, 2002, and claims to now spend $5,000,000 per year promoting its services through: television, newspapers, magazines, newsletters, brochures, radio, outdoor billboards, internet and direct mailing. Complainant states that it employed 15,000 employees, engaged or employed 4,200 physicians and 500 resident and fellowship individuals, and raised $4.3 million in donations during its 2011 fiscal year. Complainant also states that its facilities had 326,455 emergency room visits, 2,424,023 outpatient visits, and 97,795 inpatient admissions, including 4,438 newborns, during that time. The Panel †determines that Complainant has provided sufficient evidence to show that the MCLAREN mark has accrued secondary meaning for the purposes of Policy ∂ 4(a)(i). As a result, the Panel further finds that Complainant has established common law rights in the MCLAREN mark dating back to 1951. See Jerry Damson, Inc. v. Tex. Intíl Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).

 

Complainant urges that the <mclaren.net> domain name is identical to Complainantís MCLAREN mark, noting that the domain contains the entire mark, adding the generic top-level domain (gTLD) ď.net.Ē The Panel agrees with Complainantís contention that because a gTLD is a required element in all domain names, a gTLD alone cannot distinguish a disputed domain name from a mark under Policy ∂ 4(a)(i). See Reebok Intíl Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainantís REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain). The Panel determines that Respondentís <mclaren.net> domain name is identical to Complainantís MCLAREN mark for the purposes of Policy ∂ 4(a)(i).

 

 

Rights or Legitimate Interests

 

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.† See Hanna-Barbera Prods., Inc. v. Entmít Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ∂ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (ďComplainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.† If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.Ē).

 

In contending that Respondent is not commonly known by the <mclaren.net> domain name under Policy ∂ 4(c)(ii), Complainant also asserts that it has never granted Respondent permission to use the MCLAREN mark in any way. The Panel notes that Respondent is identified as ďDomains, ProfileĒ in the WHOIS information on record. The Panel also notes that Respondent has failed to submit a Response in this case, meaning that there is no evidence in the record to suggest that Respondent is in fact commonly known by the disputed domain name. In light of these findings, the Panel concludes that Respondent is not commonly known by <mclaren.net> domain name within the meaning of Policy ∂ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant avers that Respondentís use of the <mclaren.net> domain name to resolve to a website featuring links to health care services that directly compete with those provided by Complainant suggests that Respondentís use of the disputed domain name can be considered neither a bona fide offering of goods or services pursuant to Policy ∂ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ∂ 4(c)(iii). The Panel notes that previous panels have agreed that the use of a confusingly similar domain name to redirect Internet users to a site displaying competing links illustrates a respondentís lack of rights or legitimate interests in a disputed domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ∂ 4(c)(i) or a legitimate noncommercial or fair use under Policy ∂ 4(c)(iii)). The Panel concludes that Respondentís use of the<mclaren.net> domain name does not constitute 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).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondentís use of the disputed domain name to connect to a website featuring links to competing health and medical services is disrupting Complainantís business. The Panel finds that Respondentís use of a domain name which is identical to Complainantís mark substantially increases the likelihood that consumers will mistakenly visit Respondentís site instead of Complainantís site. The Panel further finds that Complainantís business is disrupted when these misdirected users are presented with links to competing services, because Complainant will likely lose sales to its competitors as a result. In light of these findings, the Panel holds that Respondent has registered and used the <mclaren.net> domain name in bad faith pursuant to Policy ∂ 4(b)(iii). See David Hall Rare Coins v. Tex. Intíl Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ∂ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainantís competitors, thereby disrupting the complainantís business).

 

Finally, Complainant† alleges that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondentís website, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of Respondentís website. Complainant assumes that profits from the operation of its website through the receipt of click-through fees collected each time one of its sponsored listings is accessed. The Panel finds that Respondentís registration and use of an identical domain name was a ploy to create confusion with Complainant and draw Internet traffic to its website in order to commercially benefit from the collection of click-through revenues. The Panel determines that Respondentís registration and use of the <mclaren.net> domain name exhibits bad faith under Policy ∂ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (ďRespondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ∂ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving Ďclick-through-fees.íĒ).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mclaren.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:† January 30, 2013

 

 

 

 

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