Health Advantage, Inc. v.
Claim Number: FA0811001232766
PARTIES
Complainant is Health Advantage, Inc. (“Complainant”), represented by Steven L. Permut, of Reising, Ethington,
Barnes, Kisselle, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mclarenhealthadvantage.com>,
registered with Compana, Llc.
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.
Hon. Sir Ian Barker.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On November 7, 2008, Compana, Llc confirmed by e-mail to the National
Arbitration Forum that the <mclarenhealthadvantage.com>
domain name is registered with Compana, Llc and that the Respondent is the
current registrant of the name. Compana,
Llc has verified that Respondent is bound by the Compana, Llc registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On November 12, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 2, 2008 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@mclarenhealthadvantage.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Health Advantage, Inc., a
Complainant also uses the mark, McLAREN HEALTH ADVANTAGE for its health
services directed to employees of McLaren Health Plan, Inc. and McLaren Health
Care Corporation.
Complainant spends approximately US $200,000 annually in promoting its
mark and services in a wide array of media including, television, radio,
newspapers, magazines, brochures, Internet, direct mail and billboards.
Complainant is solely owned by McLaren Health Plan, Inc. which is in
the health insurance field and is in turn solely owned by McLaren Health Care
Corporation (MHCC) which owns a common law
MHCC first conducted business under the name McLaren Health Care
Corporation in 1989 and has continuously used the mark since then. MHCC through its subsidiaries provides health
care services in hospitals, as well as HMO and PPO health insurance plans and
services and has used the mark, McLAREN HEALTH
MHCC is the parent entity of a large integrated health care system
including eight acute care regional hospitals in the State of
Respondent’s website resolves to sites which offer identical services
to those provided by Complainant.
The disputed domain name fully incorporates Complainant’s HEALTH
ADVANTAGE mark and its McLAREN HEALTH ADVANTAGE mark and is confusingly similar
or identical.
Respondent has no rights or legitimate interest in the disputed domain
name, as Respondent has no corresponding trademark or trade name rights, its
domain is not used in connection with a bona
fide offering of goods or services by Respondent.
Respondent holds several other domain names entailing well known
businesses which similarly divert users to an advertising portal. See Jerry Damson, Inc. v.
It is also acknowledged by WIPO that Respondent has been subject to
numerous Policy complaints when transfers were ordered. See
Fry’s Elec., Inc. v.
Respondent is in the business of registering thousands of domain names
which it uses to generate “pay-per-click” advertising revenues.
Complainant has not granted Respondent permission to use its mark in
any way. Further, Respondent is using
the disputed domain name to operate a website that displays third-party
hyperlinks which resolve to websites in direct competition with
Complainant. Such use is not a bona fide use of the disputed domain
name and is inconsistent with Policy ¶ 4(c)(i). See
Aetna Inc. v. Compana L.L.C., FA 330494 (Nat. Arb. Forum Nov. 22,
2004); see also Intesa Sanpaolo S.p.A. v. Maison Tropicale S.A., D2007-1396 (WIPO
Nov. 12, 2007) citing TM Acquisition Corp v. Lam, FA 280499
(Nat. Arb. Forum July 9, 2004).
Respondent’s <mclarenhealthadvantage.com>
domain name is registered and used in bad faith. Respondent has intentionally attempted to
attract, for commercial gain, Internet users to Respondent’s website, by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation or endorsement of Respondent’s website. The disputed domain name is connected to a
website sponsoring health care services.
The website displays third-parties and provides hyperlinks directly to
those third-party sites. The web page
indicates that the linked entities are “sponsored listings.” These links resolve to sites that offer
directly competitive products and components thereof to those of Complainant.
B. Respondent
Prior to the UDRP Complaint, Respondent had never heard of or from
Complainant. Respondent has, in the
past, transferred domains to complaining parties such as Complainant. Having missed the opportunity to transfer
prior to the institution of this proceeding, Respondent herein agrees to the
relief requested by the Complainant and will, upon order of the Panel, do
so. This is not an admission to the
three elements of 4(a) of the Policy but rather an offer of “unilateral consent
to transfer” as prior panels have deemed it.
FINDINGS
(a)
Complainant
has rights in a common law trademark for the words MCLAREN HEALTH ADVANTAGE.
(b)
The
disputed domain name is identical or confusingly similar to trademarks in which
Complainant has rights.
(c)
Respondent
unilaterally consents to the relief requested by Complainant, if so ordered by
the Panel.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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.
However, where a respondent has admitted that he/she/it does not have
an interest in a disputed domain name and has consented to the transfer of the
disputed domain name, the Panel may forego the traditional UDRP analysis and
order the immediate transfer of the disputed domain name. See
The same approach can be found in WIPO decisions such as Williams-
This Panel agrees with the panelists in Citigroup Inc. v. Texas International Property
Associates, FA 1210904 (Nat. Arb. Forum Aug. 5, 2008) who
disagreed with the panelist in Graebel
Van Lines Inc. v. Texas International Property Associates, FA 1195954 (Nat.
Arb. Forum July 17, 2008), who suggested that a full
review was required in circumstances such as the present in order not to shield
cybersquatters from adverse findings.
The panelist in Citigroup considered
that the UDRP does not have a policing function.
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 <mclarenhealthadvantage.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker, Panelist
Dated: December 22, 2008