Health Advantage, Inc. v.
Claim Number: FA0811001232766
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.
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
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 email@example.com by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to 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.
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
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.
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