McLaren Health Care Corporation v. McLaren Health Plan c/o Administrator, Domain
Claim Number: FA0811001234995
Complainant is McLaren Health Care Corporation (“Complainant”), represented by Steven
L. Permut, of Reising, Ethington, Barnes, Kisselle, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mclarenhealthcare.com>, registered with Nameview, Inc.
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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 20, 2008.
On December 3, 2008, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <mclarenhealthcare.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. 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 December 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@mclarenhealthcare.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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." 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. Complainant makes the following assertions:
1. Respondent’s <mclarenhealthcare.com> domain name is identical to Complainant’s MCLAREN HEALTH CARE mark.
2. Respondent does not have any rights or legitimate interests in the <mclarenhealthcare.com> domain name.
3. Respondent registered and used the <mclarenhealthcare.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, McLaren Health Care Corporation, provides
health care services through its hospitals, emergency room services, outpatient
and inpatient services, ambulatory health care services and insurance services
throughout
Respondent, McLaren Health Plan c/o Administrator, Domain, registered the disputed domain name on May 16, 2005. The <mclarenhealthcare.com> domain name resolves to a website that displays third-party links that lead to Complainant’s competitors.
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."
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 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.”).
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.
Registration of Complainant’s mark with a governmental
trademark authority is unnecessary to demonstrate its rights in a mark under
Policy ¶ 4(a)(i).
Rather, it is sufficient if Complainant can demonstrate common law
rights in the mark through a showing of sufficient secondary meaning. See
Complainant has
demonstrated its rights in the mark since 1989 through its employment records,
the number of patients seen, its revenue and its expenditures in marketing and
advertising. The Panel finds that
this is sufficient to find Complainant has achieved a secondary meaning in its
mark. Through continuous use of this
mark in connection with its health care services since 1989, Complainant has
established its common law rights in its mark pursuant to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The <mclarenhealthcare.com>
domain name is identical to Complainant’s MCLAREN HEALTH CARE mark. The addition of a generic top-level domain
(“gTLD”) “.com” is irrelevant in distinguishing the disputed domain name from
Complainant’s mark. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat.
Arb. Forum Aug. 23, 2005) (holding that the
<reebok.net> domain name was identical to the complainant’s REEBOK mark
because it fully incorporates the mark and merely adds a generic top-level
domain); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003)
(“The addition of a top-level domain is irrelevant when establishing whether or
not a mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant has made a prima facie case in support of its allegations, the burden shifts
to the Respondent to prove it has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has a
sufficient prima facie case
supporting its allegations, and therefore the burden shifts to Respondent to
establish its rights or legitimate interests in the disputed domain name. 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 Policy ¶ 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 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 interest in the subject domain names.”).
As Respondent did not answer the Complaint, the Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”). However, the Panel chooses to examine the record in consideration of the factors listed under Policy ¶ 4(c).
The <mclarenhealthcare.com> domain name resolves to a landing site that provides links to Complainant’s competitors. Respondent is exploiting the regional reputation of Complainant’s name in order to divert Internet users to a pay-per-click (“PPC”) site. The Panel finds that Respondent has not used the disputed domain name in connection with 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). 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The WHOIS information identifies Respondent as “mclarenhealthcare.com c/o WHOIS identity shield.” Without further evidence that Respondent is known by the disputed domain name outside of the WHOIS registration, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of an identical domain name to
Complainant’s mark to attract Internet users indicates bad faith registration and
use of the disputed domain name. The
disputed domain name resolves to a PPC site thereby diverting Internet users
from Complainant’s business.
Respondent’s actions directly disrupt Complainant’s business. The Panel finds that Respondent’s use of the disputed
domain name bespeaks bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb 13, 2007)
(concluding that the use of a confusingly similar domain name to attract Internet
users to a directory website containing commercial links to the websites of a
complainant’s competitors represents bad faith registration and use under
Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business).
Complainant alleges that
Respondent’s use of the disputed domain name intentionally exploits the
regional reputation of Complainant’s mark for commercial gain through
click-through referral fees.
Respondent’s disputed domain name is identical to Complainant’s mark
thereby creating the impression of endorsement by or at least an affiliation
with Complainant. Additional evidence of
likely confusion is that Complainant is listed on the directory on Respondent’s
website. The Panel finds that
Respondent’s commercial gain through the use of an identical domain name to
Complainant is evidence of registration and use of the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iv). See
The Panel finds that Complainant has satisfied 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 <mclarenhealthcare.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary , Panelist
Dated: January 15, 2009
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