McLaren Health Care Corporation v. Direct Privacy ID 026F9
Claim Number: FA1212001475757
Complainant is McLaren Health Care Corporation (“Complainant”), represented by Steven L. Permut of Reising Ethington P.C., Michigan, USA. Respondent is Direct Privacy ID 026F9 (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mclarenregionalmedicalcenter.com>, registered with DNC Holdings, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on December 13, 2012; the National Arbitration Forum received payment on December 13, 2012.
On December 13, 2012, DNC Holdings, Inc confirmed by e-mail to the National Arbitration Forum that the <mclarenregionalmedicalcenter.com> domain name is registered with DNC Holdings, Inc and that Respondent is the current registrant of the name. DNC Holdings, Inc has verified that Respondent is bound by the DNC Holdings, Inc 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 13, 2012, the National Arbitration Forum served the Complaint and all of its Annexes, as well as a Written Notice of the Complaint, setting a deadline of January 2, 2013 by which Respondent could file a Response to the Complaint, via e-mail message to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and also to the attention of postmaster@mclarenregionalmedical-center.com. On December 13, 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 techni-cal, 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 9, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
The McLAREN REGIONAL MEDICAL CENTER mark identifies Complainant’s flagship hospital in its network of nonprofit hospitals.
Complainant has rights in the McLAREN service mark through registration of the mark, on file with the United States Patent & Trademark Office as Reg. No. 4,224,362, filed Sept. 7, 2011, and registered Oct. 16, 2012.
Complainant also has common law rights in the McLAREN REGIONAL MEDICAL CENTER mark, obtained through its continuous use in commerce from 1989, and via a substantial investment of money (approximately $5,000,000.00 annually) and other resources into this mark.
Respondent registered the disputed <mclarenregionalmedicalcenter.com> domain name June 27, 2005.
Respondent’s domain name is confusingly similar to Complainant’s McLAREN mark and substantively identical to Complainant’s McLAREN REGIONAL MEDICAL CENTER mark.
Respondent has not been commonly known by the disputed domain name.
Respondent has not been authorized by Complainant to use the McLAREN mark or the McLAREN REGIONAL MEDICAL CENTER mark in any way.
Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the contested domain name.
The disputed domain name resolves to a website displaying hyperlinks to unrelated third-party websites as well as to the websites of several of Complainant’s commercial competitors in the marketing of health care and medical plans.
Respondent is presumed to receive profits in the form of click-through fees each time an Internet user clicks on a link on the disputed domain’s resolving website.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent is attempting, for commercial gain, to attract Internet users to the website resolving from the domain name by creating a likelihood of confusion with Complainant’s marks as to the sponsorship or endorsement of that website.
Respondent’s registration and use of the <mclarenregionalmedicalcenter.com> domain name is in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the McLAREN service mark for purposes of Policy ¶ 4(a)(i) through its registration of the mark with a national trademark authority, the United States Patent & Trademark Office. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant also has common law rights in the McLAREN REGIONAL MEDICAL CENTER mark sufficient for the purposes of Policy ¶ 4(a)(i) on the strength of, among other things, its continuous use of the mark in commerce since 1989 and its substantial investment of capital funds and other resources in the development and marketing of that mark. See, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark regis-tration if a complainant can establish common law rights in its mark). See also Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (find-ing that a UDRP complainant had acquired secondary meaning in its mark sufficient to establish common law rights in it pursuant to Policy ¶ 4(a)(i) where that complainant had invested “enormous resources” in promoting the goods and services available under the mark).
Turning to the central question arising under Policy ¶ 4(a)(i), we are persuaded from a review of the record that the <mclarenregionalmedicalcenter.com> domain name is substantively identical to Complainant’s mark McLAREN REGION-AL MEDICAL CENTER. The domain name consists of Complainant’s entire mark, with only the deletion of the spaces between the elements of the mark and the addition of the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of identity or confusing similarity under the standards of the Policy be-cause spaces are not permitted in domain names and every domain name re-quires a gTLD. See, for example, Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding the contested domain name <hannoverre.com> to be identical to the mark HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie case that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name <mclarenregionalmedicalcenter.com>, and that Respondent has not been authorized by Complainant to use the McLAREN REGIONAL MEDICAL CENTER mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Direct Privacy ID0726F9, Direct Privacy Ltd.,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain name as described in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by that domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making either a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name in that the domain name resolves to a website displaying hyperlinks resolving to third-party websites unrelated to Complainant as well as to the websites of several of Complainant’s commercial competitors. Respondent’s employment of the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because a “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [a complainant’s] mark,” that respondent was not using the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are convinced from the evidence that Respondent is attempting to use the disputed domain name, for its commercial gain, to attract Internet users to the website resolving from the contested domain name by creating a likelihood of confusion with the Complainant’s mark as to the possibility of its sponsorship or endorsement of, or affiliation with, Respondent and its website. We are likewise persuaded that Respondent likely profits from the operation of the website re-solving from the domain name in the form of click-through fees each time when Internet users clicks on one of the hyperlinks on the resolving website. This is evidence that Respondent has registered and uses the domain name in bad faith as described in Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005):
The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Re-spondent’s domain name is identical to Complainant’s … mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the … domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
For this reason, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <mclarenregionalmedicalcenter.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 21, 2013
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