National Arbitration Forum




Health Advantage, Inc. v. Texas International Property Associates-NA NA

Claim Number: FA0811001232766



Complainant is Health Advantage, Inc. (“Complainant”), represented by Steven L. Permut, of Reising, Ethington, Barnes, Kisselle, P.C., Michigan, USA.  Respondent is Texas International Property Associates-NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.



The domain name at issue is <>, registered with Compana, Llc.



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.



Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2008.


On November 7, 2008, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <> 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 by e-mail.


A timely Response was received and determined to be complete on December 2, 2008.


On December 11, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker as Panelist.



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




A.     Complainant


Complainant, Health Advantage, Inc., a Michigan corporation, has provided third-party administration for health insurers continuously since 2001.  It has used the mark, HEALTH ADVANTAGE and the slogan “A McLaren Health Service” since 2001 and has an active and operating website at the <> domain name, registered on July 21, 2001. 


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 U.S. trademark for McLAREN HEALTH CARE.


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 CARE, in connection with the services identified above and has continuously provided medical services since at least 1989.  MHCC has operated an active website located at the <> domain name continuously since October 10, 2002.  MHCC has invested large sums of money in the promotion of its name and services and now spends US $5,000,000 per year promoting its services.


MHCC is the parent entity of a large integrated health care system including eight acute care regional hospitals in the State of Michigan and 100 other facility locations.


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. Tex. Int’l Prop. Assoc., FA 916991 (Nat. Arb. Forum Apr. 10, 2007).  As of February 28, 2008, Respondent has been a party to 41 proceedings where all but four resulted in a cancelled or transferred registration.  See Azar, Inc. v. Tex. Int’l Prop. Assoc., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008).  As of August 27, 2008, the number of proceedings against Respondent has grown to 62 in WIPO and 92 proceedings in NAF.


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. Tex. Int’l Prop. Assoc., D2007-0343 (WIPO May 2, 2007) and the cases cited therein.


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 <> 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.




(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.




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 Tex. Med. Ctr. v. Spinder, FA 886496 (Nat. Arb. Forum Feb. 19, 2007) (foregoing the traditional Policy analysis where the respondent stipulated to the transfer of the disputed domain names to the complainant); see also Adams v. Truth About Jos, FA 907564 (Nat. Arb. Forum Mar. 9, 2007) (concluding that when a respondent stipulates to the transfer of the disputed domain name in its response or expresses a willingness to transfer the disputed domain name to the complainant, the Panel can forego an analysis of the Policy and order the immediate transfer of the disputed domain name); see also Metro. Life Ins. Co. v. Secure Whois Info. Serv., FA 910715 (Nat. Arb. Forum Mar. 16, 2007) (“In light of Respondent’s request that the Panel enter an order transferring the disputed domain name to Complainant without findings of fact on the elements set forth in Paragraph 4(a) of the Policy, and the lack of any objection thereto, the Panel declines to set forth or address the Parties’ contentions.”); see also Californian Acad. of Sci. v. Tex. Int’l Prop. Assoc., FA 944494 (Nat. Arb. Forum May 8, 2007); see also 3M Innovative Prop. Co. v. (name redacted), FA 1211165 (Nat. Arb. Forum Aug. 4, 2008); see also State Farm Mut. Auto. Ins. Co. v. Global Selling Network LLC, FA 121354 (Nat. Arb. Forum Aug. 12, 2008).


The same approach can be found in WIPO decisions such as Williams-Sonoma Inc. v. VEZ-Port, D2000-0207 (WIPO May 5, 2000). See also Slumberland France v. Acohuri, D2000-0195 (WIPO June 10, 2000); see also Cartoon Network LP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006); see also Sanofi-Aventis & Ors v. Demand Domains Inc., D2008-1465 (WIPO Nov 27, 2008).


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.



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


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





Hon. Sir Ian Barker, Panelist
Dated: December 22, 2008