McLaren Health Care Corporation v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1212001476200
Complainant is McLaren Health Care Corporation (“Complainant”), represented by Steven L. Permut of Reising Ethington P.C., Michigan, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mclarenhealth.com>, registered with Click Registrar, Inc. D/B/A Publicdomainregistry.Com, Pdr Ltd.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 17, 2012; the National Arbitration Forum received payment December 17, 2012.
On December 18, 2012; Dec 27, 2012, respectively, Click Registrar, Inc. D/B/A Publicdomainregistry.Com, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <mclarenhealth.com> domain name is registered with Click Registrar, Inc. D/B/A Publicdomainregistry.Com, Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the name. Click Registrar, Inc. D/B/A Publicdomainregistry.Com, Pdr Ltd. D/B/A Publicdomainregistry.Com verified that Respondent is bound by the Click Registrar, Inc. D/B/A Publicdomainregistry.Com, Pdr Ltd. D/B/A Publicdomainregistry.Com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2013, 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@mclarenhealth.com. Also on January 3, 2013, 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 January 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. Parties’ Contentions
Complainant Contentions:
Complainant makes the following allegations in this proceeding:
Policy ¶ 4(a)(i):
Complainant holds a United States Patent & Trademark Office registration for the McLAREN mark for use in the provision of health care services, pharmaceuticals, and health insurance. See Reg. No. 4,224,362 registered on Oct. 16, 2012.
Complainant used the McLAREN mark in the provision of health care services continuously since 1951. Complainant operates several websites bearing its McLAREN mark, such as <mclaren.org>, <mclarenhealthcare.org>, and <mclarenhealthplan.org>. Complainant invests about $5,000,000.00 per year promoting its McLAREN mark and related services. Complainant is the parent entity of a system that operates nine hospital facilities. Complainant employs 15,000 employees, who oversee 326,455 emergency room visits, 2,424,023 outpatient visits, and 97,795 inpatient admissions.
Respondent’s <mclarenhealth.com> domain name is substantially identical to Complainant’s McLAREN HEALTH mark. The domain name incorporates various aspects of Complainant’s McLAREN family of marks. The addition of the generic top-level domain (“gTLD”) “.com” cannot prevent confusing similarity because the gTLD is a required element in domain names.
Policy ¶ 4(a)(ii):
The WHOIS information does not indicate that Respondent’s true identity is the <mclarenhealth.com> domain name. The WHOIS information lists “Domain Private Registrations Aktein Gesellschaft Domain Admin.” as the registrant. Complainant has not given Respondent any permission to use the McLAREN mark in any way.
Respondent is using the <mclarenhealth.com> domain name to resolve to a website advertising hyperlinks to both Complainant’s competitors and other third-party websites doing business in areas similar to Complainant’s field.
Policy ¶ 4(a)(iii):
Respondent was a party to prior proceedings in the National Arbitration Forum, which resulted in a transfer of the domain names to complainants. Respondent’s cybersquatting behavior reflects a disregard for intellectual property rights of others and is further overwhelming evidence of Respondent’s bad faith in this matter.
Respondent is seeking to confuse Internet users into believing that Complainant is in some way sponsoring, endorsing, or affiliating with Respondent’s offerings on the <mclarenhealth.com> domain name. The domain name provides a list of hyperlinks to competing medical and health related products and services, many of which compete with Complainant. Respondent receives a commercial gain from the confused Internet user by way of click-through fees.
Respondent’s Contentions:
Respondent did not submit a response.
The Panel notes that Respondent registered the <mclarenhealth.com> domain name November 26, 2006, six years before Complainant’s registration of the mark but some 55 years after Complainant has shown use in commerce that should establish common law rights in the mark.
Complainant has protected rights in the mark contained in its entirety within the disputed domain name.
The facts presented by Complainant establish common law rights in the family of marks used by Complainant in its extensive healthcare operations.
The disputed domain name is confusingly similar to Complainant’s mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 Complainant to 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 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant argues that it owns a United States Patent & Trademark Office (USPTO) registration to the McLAREN mark for use in the provision of health care services, pharmaceuticals, and health insurance. See Reg. No. 4,224,362 registered on Oct. 16, 2012 (filed on Sept. 7, 2011) (first used Dec. 31, 1951). Previous panels have found that a registration with the USPTO is sufficient to establish rights under the Policy, even if the respondent does not dwell in the United States. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel finds that Complainant established legal rights in its McLAREN mark under Policy ¶ 4(a)(i) dating back to the filing date with the USPTO. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant further argues that it has used the McLAREN mark in the provision of health care services continuously since 1951. Complainant notes that it operates several websites bearing its McLAREN mark, such as <mclaren.org>, <mclarenhealthcare.org>, and <mclarenhealthplan.org>. Complainant asserts that it invests about $5,000,000.00 annually promoting its McLAREN mark and related services. Complainant contends that it is the parent entity of a health care system that operates nine hospitals. Complainant finally claims that it employs 15,000 employees, who oversee 326,455 emergency room visits, 2,424,023 outpatient visits, and 97,795 inpatient admissions, all in the provision of services under the McLAREN mark. The Panel finds, based on this showing, that Complainant also established common law rights in the McLAREN mark pursuant to Policy ¶ 4(a)(i) dating back to 1951. See Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding that a complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶ 4(a)(i) where the complainant had invested “enormous resources” in promoting the goods and services available under the complainant’s mark). The Panel therefore finds that Complainant established rights in its McLAREN mark under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <mclarenhealth.com> domain name is substantially identical to Complainant’s McLAREN HEALTH mark. Complainant argues that the domain name incorporates various aspects of Complainant’s McLAREN family of marks. Complainant also asserts that the addition of the generic top-level domain (“gTLD”) “.com” cannot prevent confusing similarity because the gTLD is a required element in domain names. The Panel notes that the <mclarenhealth.com> domain name also adds the term “health” to Complainant’s alleged common law McLAREN mark. The Panel agrees that the addition of the term “health” enhances confusing similarity when Complainant uses the McLAREN mark in the provision of health and medical services. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel also agrees with Complainant in finding the addition of the gTLD “.com” to be irrelevant to its analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <mclarenhealth.com> domain name is confusingly similar to Complainant’s McLAREN mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t 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) (“Complainant 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.”).
Complainant asserts that the attached WHOIS information does not indicate that Respondent is commonly known as the <mclarenhealth.com> domain name. Complainant specifically notes that the WHOIS information lists one “Domain Private Registrations Aktein Gesellschaft Domain Admin.” as the registrant. Complainant avers that it has not given Respondent any permission to use the McLAREN mark in any way. The Panel finds that Complainant’s evidence, in light of Respondent’s failure to provide affirmative evidence to the contrary, illustrates that Respondent is not commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also contends that Respondent is using the <mclarenhealth.com> domain name to resolve to a website advertising hyperlinks to both Complainant’s competitors and other third-party websites doing business in areas similar to Complainant’s field. The Panel notes that the disputed domain name resolves to a website dominated by hyperlinks to medical companies as well as other unrelated third-party businesses. See Complainant’s Exs. X–Z. Previous panels have held that the use of a confusingly similar domain name to advertise competing goods and services, vis-à-vis the Complainant, is not a bona fide offering of goods and services, nor could such advertising be considered a legitimate noncommercial or fair use of the domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel therefore finds that Respondent’s use of the disputed domain name constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant asserts that Respondent has been a party to prior proceedings in the National Arbitration Forum, which resulted in a transfer of the disputed domain names to the complainants. Complainant asserts that Respondent’s cybersquatting behavior reflects a disregard for intellectual property rights of others and is evidence of Respondent’s bad faith use and registration. The Panel notes that Complainant h provided a list of UDRP decisions in which Respondent was ordered to transfer its domain names. See Complainant’s Exhibit EE; see, e.g., DatingDirect.com Limited v. Private Regs. Aktien Gesellschaft c/o Domain Admin, FA 1227747 (Nat. Arb. Forum Nov. 24, 2008); Immaculata Univ. v. Private Regs. Aktien Gesellschaft, FA 1278462 (Nat. Arb. Forum Sept. 21, 2009); Anheuser-Busch, Inc. v. Private Regs. Aktien Gesellschaft, FA 1319609 (Nat. Arb. Forum May 24, 2010); Assn. Fin. Profls. v. Private Regs. Aktien Gesellschaft, FA 1382556 (Nat. Arb. Forum May 13, 2011). Previous panels have found that a series of past UDRP decisions, in which respondent is ordered to transfer its domain name to complainants, illustrate a pattern of bad faith use and registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Thus, the Panel finds that Respondent registered the <mclarenhealth.com> domain name to prevent Complainant from embodying its mark in a domain name. Further the Panel finds that Respondent engaged in a series of such bad faith registrations and use in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant finally contends that Respondent is seeking to confuse Internet users into believing Complainant’s mark is in some way sponsoring, endorsing, or affiliated with Respondent’s offerings on the <mclarenhealth.com> domain name. Complainant claims that the domain name provides a list of hyperlinks to competing medical and health related products and services, and that many of the hyperlinked products or services compete with Complainant. Complainant asserts that Respondent obtains a commercial gain from the confused Internet user by way of click-through fees. The Panel again notes that the domain name appears to resolve, as Complainant claims, to a website dominated by competing and other third-party hyperlinks. See Complainant’s Exs. X–Z. Previous panels have held that the use of a confusingly similar domain name to redirect Internet users to competing products or services constitutes bad faith use and registration because this use simply seeks to profit off of the confusion of Internet users. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel agrees and finds that Respondent engaged in a Policy ¶ 4(b)(iv) bad faith use and registration in using the disputed domain name to redirect confused Internet users to Complainant’s competitors.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <mclarenhealth.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 11, 2013.
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