McLaren Health Care Corporation v. Balticsea LLC
Claim Number: FA1212001475824
Complainant is McLaren Health Care Corporation (“Complainant”), represented by Steven L. Permut of Reising Ethington P.C., Michigan, USA. Respondent is Balticsea LLC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcclarenhealthplan.com>, registered with Tucows Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) 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 14, 2012, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <mcclarenhealthplan.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 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@mcclarenhealthplan.com. Also on December 14, 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 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant uses the McLAREN and McLAREN HEALTH PLAN marks in the field of retail pharmacy services, medical research, and health benefits management services for health, dental, and vision care. Complainant owns rights in the McLAREN mark, as it registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,224,362 registered October 16, 2012). Complainant operates websites at the <mclaren.org>, <mclarenhealthcare.org>, and <mclarenhealthcare.com> domain names. Complainant has conducted business using the McLAREN mark since 1989, and offers health care through hospital facilities, primary and specialty physician services, outpatient centers, urgent care facilities, occupational health centers, skilled nursing facilities, home health care services, and other medical providers.
Respondent registered the <mcclarenhealthplan.com> domain name, and the domain name is confusingly similar to Complainant’s McLAREN mark and constitutes a typosquatted version of Complainant’s mark. Respondent uses the <mcclarenhealthplan.com> domain name to connect to a website that sponsors health and medical insurance services, which disrupts Complainant’s business and results in a profit to Respondent, demonstrating Respondent’s bad faith registration and use. Respondent does not have rights or legitimate interests in the <mcclarenhealthplan.com> domain name due to its use of the resolving website to offer competing services to those offered by Complainant, and further, Respondent is not commonly known by the <mcclarenhealthplan.com> domain name. Respondent was previously a party to another UDRP proceeding that ended with a judgment against Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, McLaren Health Care Corporation, uses the McLAREN and McLAREN HEALTH PLAN mark in the field of retail pharmacy services, medical research, and health benefits management services for health, dental, and vision care. Complainant owns rights in the McLAREN mark, as it registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,224,362 registered October 16, 2012). Complainant operates websites at the <mclaren.org>, <mclarenhealthcare.org>, and <mclarenhealthcare.com> domain names. Complainant has conducted business using the McLAREN mark since 1989, and offers health care through hospital facilities, primary and specialty physician services, outpatient centers, urgent care facilities, occupational health centers, skilled nursing facilities, home health care services, and other medical providers.
Respondent, Balticsea LLC, registered the <mcclarenhealthplan.com> domain name on February 11, 2011. Respondent uses the <mcclarenhealthplan.com> domain name to connect to a website that sponsors health and medical insurance services.
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 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.
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 has rights to its McLARENmark under Policy ¶ 4(a)(i) via its trademark registration with the USPTO (Reg. No. 4,224,362 registered October 16, 2012). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006)(complainant’s rights in its mark were demonstrated through its trademark registration with the USPTO). The Panel concludes that it is not necessary for Complainant to register its mark in the same country of Respondent’s residence and operation in order to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel finds that Complainant has rights in the McLAREN mark under Policy ¶ 4(a)(i).
However, Respondent registered the <mcclarenhealthplan.com> domain name on February 11, 2011, prior to the October 16, 2012 registration of the McLAREN mark. In the absence of evidence of record of an earlier application date for the McLAREN mark, the Panel will determine if Complainant has common law rights predating Respondent’s registration of the disputed domain name.
Complainant also owns common law U.S. trademarks for McLAREN, McLAREN HEALTH, McLAREN HEALTH CARE, McLAREN HEALTH PLAN and McLAREN REGIONAL MEDICAL CENTER. Complainant has continuously provided health care services since at least 1951 under the marks, McLAREN and McLAREN REGIONAL MEDICAL CENTER.
Complainant 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. Complainant 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 has established secondary meaning in the marks through its long established usage.
The “mcclarenhealthplan” component of Respondent’s domain name is
substantially identical to Complainant’s mark McLAREN HEALTH PLAN.
The “mcclaren health” component of Respondent’s mark is substantially
directed to Complainant’s mark “McLAREN HEALTH” and is 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. “Mcclaren” is just a
typographical mistake away from Complainant’s mark McLAREN. The
addition of a single letter (“c”) does not change the overall impression of the
mark. See Google v. DKTBot.org FA 286993 (Nat. Arb. Forum Aug. 4,
2004). Furthermore, the addition of the generic Top Level domain (.com) 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). Therefore, the Panel finds that Respondent’s <mcclarenhealthplan.com> domain name is substantially identical to Complainant’s mark McLAREN HEALTH PLAN mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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).
Complainant contends that Respondent lacks rights and legitimate interests in the <mcclarenhealthplan.com> domain name. Complainant notes that the WHOIS information associated with the domain name does not indicate that Respondent is commonly known by the <mcclarenhealthplan.com> domain name, and rather that its true identity is “Contact Privacy, Inc. Customer 0130185573.” The Panel notes that the current WHOIS information for the disputed domain name reveals “Balticsea LLC” as the registrant, and concludes that the WHOIS information does not show that Respondent is commonly known by the <mcclarenhealthplan.com> domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the <mcclarenhealthplan.com> domain name under Policy ¶ 4(c)(ii).
Complainant makes the allegation in its Policy ¶ 4(a)(iii) section that Respondent hosts a website corresponding with the <mcclarenhealthplan.com> domain name that offers health plans, medical education services, and links to surgical service providers in the same geographic area as complainant, resulting in competition with Complainant’s business. The Panel finds that using a website to provide competing services with Complainant and hyperlinks to competing businesses fails to demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant alleges that Respondent’s registration of the <mcclarenhealthplan.com> domain name is an example of typosquatting, as the domain name misspells Complainant’s McLAREN mark by one letter, and argues that typosquatting fails to demonstrate Respondent’s rights or legitimate interests. The Panel determines that the <mcclarenhealthplan.com> domain name is typosquatted form Complainant’s McLAREN HEALTH PLAN mark
Complainant makes the assertion that Respondent was party to previous UDRP proceedings in which the disputed domain name was transferred from Respondent, which Complainant contends is evidence of Respondent’s bad faith. See Mediacom Comm’ns Corp. v. Contact Privacy Inc. / Customer 0131242461, FA1448843 (Nat. Arb. Forum July 24, 2012). The Panel concludes that prior UDRP decisions transferring the domain name in dispute from Respondent’s possession are evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant argues that Respondent disrupts Complainant’s business by connecting to a website that sponsors health and medical insurance services, and offers visitors to the resolving website hyperlinks to health care plans and medical insurance services, medical and surgical services, and medical education services, all of which are similar to the services offered by Complainant. The Panel determines that Respondent’s use of the <mcclarenhealthplan.com> domain name to compete with Complainant’s mark, as well as to display hyperlinks to Complainant’s competitors in the industry, constitutes disruption to Complainant’s business and is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant makes the assertion that Respondent’s use of the <mcclarenhealthplan.com> domain name demonstrates bad faith due to Respondent’s use of the website for its own commercial gain by creating a likelihood of confusion with Complainant’s mark. Complainant alleges that Respondent presumably profits from posting the sponsored links by collecting fees. The Panel determines that Complainant’s bad faith registration and use under Policy ¶ 4(b)(iv) is shown by Respondent’s attempt to generate a profit by hosting hyperlinks to Complainant’s competitors at the resolving website by creating confusion among Internet consumers with Complainant’s marks. 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcclarenhealthplan.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 24, 2013
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