McLaren Health Care Corporation v. Zhong Wan / Wanzhongmedia
Claim Number: FA1212001475751
Complainant is McLaren Health Care Corporation (“Complainant”), represented by Steven L. Permut of Reising Ethington P.C., Michigan, USA. Respondent is Zhong Wan / Wanzhongmedia (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mclarenhealth.org>, registered with EuroDNS S.A.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2012; the National Arbitration Forum received payment on December 13, 2012.
On December 18, 2012, EuroDNS S.A confirmed by e-mail to the National Arbitration Forum that the <mclarenhealth.org> domain name is registered with EuroDNS S.A and that Respondent is the current registrant of the name. EuroDNS S.A has verified that Respondent is bound by the EuroDNS S.A registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 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.org. Also on December 19, 2012, 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 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" 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. Complainant
[a.] Domain Names is Identical or Confusingly Similar to Complainant’s Trademarks
Complainant owns U.S. Registration 4,224,362 for McLAREN the common law U.S. trademarks for McLAREN HEALTH, McLAREN HEALTH CARE, McLAREN HEALTH PLAN and McLAREN REGIONAL MEDICAL CENTER. Complainant, through its wholly owned subsidiaries, provides a fully-integrated health care system under the name McLAREN and McLAREN HEALTH CARE, serving patients from around the world. Complainant also provides through its wholly-owned subsidiaries health maintenance organization (“HMO”) and preferred provider organization insurance health coverage under the mark McLAREN HEALTH PLAN. Complainant has continuously provided health care services since at least 1951 under the marks, McLAREN and McLAREN REGIONAL MEDICAL CENTER. Complainant, through its wholly owned subsidiaries, has covered medical insurance and PPO plans since 1997.
Complainant has operated an active website located at www.mclaren.org, www.mclarenhealthcare.org and www.mclarenhealthcare.com continuously since October 10, 2002. Complainant, through its wholly owned subsidiaries, also operates websites under www.mclarenhealthplan.org since July 25, 2001 and www.mclarenregional.org since October 25, 2007.
Complainant has invested large sums of money in the promotion of its marks and services and now spends $5,000,000 per year promoting its services through: television, newspapers, magazines, newsletters, brochures, radio, outdoor billboards, internet and direct mailing for all of the above marks including over $800,000 directed to advertising and promotion of the McLAREN HEALTH PLAN mark.
Complainant, McLaren Health Care Corporation, is the parent entity of a system that offers a continuum of health care through nine hospital facilities with 2,367 licensed beds and through primary and specialty physician services, 200 outpatient centers, urgent care facilities, occupational health centers, skilled nursing facilities, home health care services, behavioral health services, physical medicine and rehabilitation services, hospice services, comprehensive cancer care, and imaging services, medical educational services and medical insurance and health plan services, including HMO services and Preferred Provider Organization (PPO) insurance coverages. Presently, McLaren Health Plan has 140,000 covered lives.
Complainant, together with its wholly owned subsidiaries in its 2011 fiscal year, employed 15,000 employees, engaged or employed 4,200 physicians and 500 resident and fellowship individuals, and raised $4.3 million in donations. Complainant through its wholly owned subsidiaries had 326,455 emergency room visits, 2,424,023 outpatient visits, and 97,795 inpatient admissions, including 4,438 newborns.
Complainant, in its long history, first conducted business its present corporate name McLaren Health Care Corporation in 1989 and has continuously used the mark, McLAREN HEALTH CARE since then. The name comes from the first hospital in its network McLAREN REGIONAL MEDICAL CENTER, a Michigan nonprofit corporation, of which McLAREN HEALTH CARE CORPORATON is the sole member. McLAREN REGIONAL MEDICAL CENTER, an acute care hospital, was previously named McLAREN GENERAL HOSPITAL in 1951. McLAREN HEALTH CARE CORPORATION is also the sole corporate member of McLAREN HEALTH PLAN, a Michigan non-profit corporation which has provided HMO coverage since 1997. All of the entities and facilities in the McLaren network operate under the registered mark, McLAREN. Furthermore, in the advertisements and other literature throughout the years for all of the entities in the McLAREN network, the mark McLAREN is highlighted with distinctive font, color and size and forms its own commercial impression.
A sworn Affidavit of Kevin Tompkins, Vice-President- Marketing of McLaren Health Care Corporation, is submitted supporting Complainant’s assertion that it owns U.S. Registration 4,224,362; it has been using the marks McLAREN and McLAREN HEALTH CARE, McLAREN REGIONAL MEDICAL CENTER, McLAREN HEALTH, and McLAREN HEALTH PLAN in association with its business as early as 1951; and has invested significant time and money in advertising under said marks. Complainant also asserts that it has established secondary meaning in the marks through its long established usage.
Respondent’s mclarenhealth.org website provides links that resolve to different third party websites that offer health plans and medical insurance services, hospital, medical and home care services, as well as medical education services competitive with those provided by Complainant. Some of these services are in the same geographic area as Complainant. Such use constitutes a similar use of a confusingly similar mark. This re-direction of Internet customers to Respondent’s website unfairly diverts Complainant’s business.
The “mclarenhealth” component of Respondent’s domain name is substantially identical to Complainant’s mark McLAREN HEALTH and a first and substantial portion of Complainant’s marks, McLAREN HEALTH CARE and McLAREN HEALTH PLAN. Respondent’s domain wholly incorporates Complainant’s mark, McLAREN. Furthermore, the addition of the generic Top Level domain (.org) cannot prevent confusing similarity as a Top Level domain is a required element in domain names. See Victoria’s Secret Stores Brand Management, Inc. v. Counter Balance Enterprises Limited FA 430902 (Nat. Arb. Forum Apr. 12, 2012) or Trip Network, Inc. v Alviera FA 914943 (Nat. Arb. Forum Mar. 27, 2007) and the cases cited therein. In any event, mclarenhealth.org is substantially similar or identical to the marks, McLAREN, McLAREN HEALTH, McLAREN HEALTH CARE and McLAREN HEALTH PLAN when used in connection with the website as operated by Respondent and will wrongfully divert customers from Complainant by confusion.
[b.] No Rights or Legitimate Interest with Respect to Domain Name
The Respondent has no rights or legitimate interest in respect of the disputed domain name, as the Respondent has no corresponding trademark or trade name rights. Respondent’s domain name is not used in connection with a bona fide offering of goods or services by Respondent.
The attached “Who Is” inquiry does indicate that Respondent’s true identity is Zhong Wan/Wanzhongmedia. Respondent is generally known as Zhong Wan/Wanzhongmedia and is not commonly known by the domain name in question and does not possess rights and legitimate interests in the mark. See Policy ¶4(c)(ii); IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006); Diners Club International LTD v. PrivacyProtect.org, FA 396775 (Nat. Arb. Forum Aug. 24, 2011); and Tercent, Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003). Respondent’s use of a domain name using Complainant’s well known marks diverts Internet users to an advertising portal leading to competitors. Such use is not a legitimate use of a trademark. See SeaWorld, Inc. v. Domain (c/o Rebel.com Privacy Service) FA 299995 (Nat. Arb. Forum Feb. 10, 2010); Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006); or Diner’s Club supra.
Complainant has not granted Respondent permission to use the McLAREN or McLAREN HEALTH marks in any way. Further, Respondent is using the mclarenhealth.org domain to operate a website that displays third-party hyperlinks which resolve to unrelated websites in a similar field with Complainant. Such use is not a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Aetna Inc. v. Compana L.L.C. FA 330494 (Nat. Arb. Forum Nov. 20, 2004). See also Diner’s Club supra; Enterprise Holdings, Inc. v. Moniker Privacy Services, FA 1381725 (Nat. Arb. Forum Apr. 29, 2011).
[c.] Bad Faith
Respondent’s mclarenhealth.org domain name is used in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The Respondent’s domain name is connected to a website sponsoring health and medical insurance services that are disrupting Complainant’s business. The website displays third-parties and provides hyperlinks directly to those third-party sites. These links resolve to sites that offer health and medical insurance services, health plans and health care similar to those of the Complainant. Some of these links resolve directly to competing health care providers in the same geographic area. Presumably, Respondent profits from the posting of these sponsored listings by collecting click-through fees. This activity for commercial gain by creating a likelihood of confusion has been held to be clear evidence of bad faith use of a domain name. See SeaWorld, Inc. v. Domain (c/o Rebel.com Privacy Services) supra.; Jerry Damson Inc. v. Texas Int’l Property Association, FA 916991 (Nat. Arb. Forum Apr. 10, 2007); Enterprises Holding, Inc. v. Counter Balance Enterprises Limited, FA 404551 (Nat. Arb. Forum Sep. 30, 2011); Red Hat v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006); and Tesco Pres. Fin. LTD v. Domain Mgmt. Servs. FA 877982 (Nat. Arb. Forum Feb. 13, 2007).
It is noted that Registrant is offering the mclarenhealth.org domain name for sale to the general public. The offer directs a user to a website portal to place an offer or bid which can be in excess of the out of pocket costs of the Registrant. Such activity to offer for sale is further evidence that establishes bad faith. Choice Hotels Int’l v. Victor Zverev FA 455914 (Nat. Arb. Forum Sep. 11, 2012); InterStar North America, Inc. v. Admin FA 455005 (Nat. Arb. Forum Aug. 29, 2012); and Steve Madden, Ltd. v. Ancient Holdings, LLC FA 453354 (Nat. Arb. Forum Aug. 16, 2012).
As of September 18, 2012, Respondent was a party to a prior proceeding in the NAF which resulted in a transferred registration away from Respondent and a party in WIPO that resulted in a transfer away from Respondent. The Domain Tools website reveals that the Respondent owns over 18,000 domain names. The history of Respondent’s cybersquatting reflects a disregard for intellectual property rights of others and is further overwhelming evidence of Respondent’s bad faith in this matter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 three elements to obtain an order transferring or cancelling a domain name:
(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.
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.”).
Complainant provides evidence of its registration of the MCLAREN mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 4,224,362 registered October 16, 2012, filed September 7, 2011). Complainant’s USPTO registration confers rights in the mark dating back to the September 7, 2011 filing of Complainant’s trademark registration. 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 claims it has established secondary meaning in the MCLAREN mark through its longstanding use of the mark. Complainant has continuously provided health care services since at least 1951 under the MCLAREN mark. The Panel notes Complainant’s trademark registration lists a 1951 first use of the mark in commerce. Complainant’s health care facilities offer a continuum of health care services consisting of 326,455 emergency room visits, 2,424,023 outpatient visits, and 97,795 inpatient admissions, including 4,438 newborns, all in Complainant’s 2011 fiscal year. Complainant employs 15,000 employees, engaged or employed 4,200 physicians and 500 resident and fellowship individuals, and raised $4.3 million in donations in its 2011 fiscal year, and now spends $5,000,000 per year promoting its services through: television, newspapers, magazines, newsletters, brochures, radio, outdoor billboards, internet and direct mailing. The Panel finds Complainant has provided sufficient evidence to demonstrate that the MCLAREN mark has achieved secondary meaning, conferring common law rights in the mark dating back to 1951 pursuant to Policy ¶4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant claims Respondent’s <mclarenhealth.org> domain name wholly incorporates Complainant’s MCLAREN mark. The disputed domain name also includes the term “health” and the generic top-level domain (“gTLD”) “.org.” The term “health” is descriptive of the health care services Complainant provides under its mark. The addition of a word which describes Complainant’s business does not adequately differentiate the disputed domain name from Complainant’s business. 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 addition of a gTLD cannot distinguish a disputed domain name from a mark under Policy ¶4(a)(i) because all domain names must contain a TLD (either a gTLD or a ccTLD). See 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.”). Accordingly, the Panel finds Respondent’s <mclarenhealth.org> domain name is confusingly similar to Complainant’s MCLAREN mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the <mclarenhealth.org> domain name within the meaning of Policy ¶4(c)(ii), Complainant has not authorized or otherwise permitted Respondent’s use of its MCLAREN mark in any way. The present WHOIS information on record identifies Respondent as “Zhong Wan / Wanzhongmedia.” The original WHOIS information showed a privacy service as the domain name owner. Respondent’s name and the <mclarenhealth.org> domain name are clear evidence Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply). Respondent has failed to provide any evidence Respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims Respondent uses the <mclarenhealth.org> domain name to resolve to a website that provides links to third-party sites which offer health plans and medical insurance services, hospital, medical and home care services, and medical education services which compete with Complainant. Complainant contends such a use is not a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). The Panel agrees and so finds this type of use as satisfying Policy ¶4(c)(i) or Policy ¶4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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)).
The Panel also notes the disputed domain name was registered with a privacy service, which creates a bare trust with the privacy service as trustee and the true owner as the undisclosed beneficiary. Such registration in the commercial context prevents Respondent from acquiring any rights to the disputed domain name. The privacy service is not using the domain name for its own purposes. The beneficiary of the bare trust is not publicly linking its name to the dispute domain name, which prevents it from acquiring any rights.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant points out Respondent has offered the disputed domain name for sale to the general public. A link on Respondent’s site directs users to a website portal where they can make an offer or bid on the domain. Complainant believes such activity is evidence of bad faith. The Panel finds Respondent has offered the disputed domain for sale (presumably for an amount in excess of its out of pocket costs), and finds bad faith under Policy ¶4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Respondent has been found to have registered at least two domains in bad faith in previous UDRP proceedings, and urges Respondent’s history of cybersquatting is “overwhelming evidence” of Respondent’s bad faith registration and use of the <mclarenhealth.org> domain name in the immediate proceeding. See Peabody Management, Inc. v. WhoisPrivacy Limited / Domain Administrator, FA 1349833 (Nat. Arb. Forum Nov. 29, 2010); see also J. P. SA COUTO, S.A. v. Wanzhongmedia, c/o Wan Zhong, D2011-1045 (WIPO July 28, 2011). The fact Respondent was a respondent in various previous disputes is immaterial and does not demonstrate bad faith (absent preventing Complainant from using its mark in a domain name). Each case must be considered on its own merits.
Likewise, bad faith is not demonstrated by Respondent’s ownership of 18,000 domain names.
Complainant claims Respondent registered and is using the <mclarenhealth.org> domain name in bad faith because Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. It seems clear Respondent profits from the sponsored listings featured on its site through the collection of click-through fees. The Panel finds Respondent’s web site intentionally attracts unsuspecting confused users for commercial gain, which constitutes bad faith registration and use of the disputed domain under Policy ¶4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, Respondent registered the disputed domain name using a privacy service. This Panel has held such registration raised the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut this presumption. Based upon this alone, the Panel finds bad faith as required under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <mclarenhealth.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 31, 2013
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