McLaren Health Care Corporation v. PPA Media Services / Ryan G Foo
Claim Number: FA1212001475914
Complainant is McLaren Health Care Corporation (“Complainant”), represented by Steven L. Permut of Reising Ethington P.C., Michigan, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maclaran.com>, registered with Internet.bs Corp.
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 electronically on December 14, 2012; the National Arbitration Forum received payment on December 14, 2012.
On December 26, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <maclaran.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 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@maclaran.com. Also on December 28, 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 28, 2013, pursuant to Complainant's request to have the dispute decided 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
Complainant has provided health care services under the McLAREN mark continuously since 1951.
Complainant holds a United States Patent & Trademark Office (“USPTO”) registration for the McLAREN service mark, Reg. No. 4,224,362, registered Oct. 16, 2012.
Since 2002 Complainant has operated the <mclaren.org> domain name in doing business under the McLAREN mark.
Complainant invests $5,000,000 per year promoting the services it provides under the McLAREN mark.
The McLAREN mark is used in the business of health care through nine hospital facilities with 15,000 employees who in 2011 provided care for 326,455 emerg-ency room visitors, as well as 2,424,023 outpatients and 97,795 inpatients.
Complainant therefore owns common law rights in the McLAREN mark.
The disputed <maclaran.com> domain name was registered October 13, 2004.
The domain name is confusingly similar to Complainant’s McLAREN mark.
Respondent has not been commonly known by the disputed domain name and does not possess rights in the McLAREN mark.
Respondent’s use of the domain name is commercial, but it is not employed in a bona fide offering of goods or services.
Respondent’s <maclaran.com> domain name resolves to a website providing links to third-party websites that offer services that compete with the business of Complainant.
Respondent’s registration and use of the domain name is a form of typosquat-ting and is not a legitimate use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has engaged in a pattern of bad faith registration and use of domain names, as is evidenced by prior UDRP proceedings in which domain names held by Respondent were transferred to complainants.
Respondent employs the contested domain name to host hyperlinks in order to attract commercial gain in the form of click-through fees tracing to the visits of Internet users who are confused into believing that the <maclaran.com> domain name is affiliated with Complainant and its MCLAREN mark.
Respondent has registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark 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 cancelled 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 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 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 service mark for purposes of Policy 4(a)(i) by reason of its registration of the mark with the USPTO. See, for example, Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a UDRP complainant had established rights in the GOOGLE mark through its holding of a trademark registration with one or more national trade-mark authorities).
This is true without regard to whether Complainant’s rights in its MCLAREN mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Chile). See Kon-inklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demon-strate rights in a mark in some jurisdiction).
Complainant also owns common law rights in the McLAREN mark for purposes of Policy ¶ 4(a)(i)on the strength of its undenied continuous use of the mark in commerce in the health care industry which predates Respondent’s 2004 registration of the disputed domain name. See Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding that a UDRP complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶ 4(a)(i) where that complainant had invested substantial resources in promoting the goods and services available under the mark).
Turning then to the central question arising under Policy ¶ 4(a)(i), we are persuaded from a review of the record that Respondent’s <maclaran.com> domain name is confusingly similar to Complainant’s McLAREN mark. The domain name is merely a common misspelling of the mark combined with the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in form-ing the domain name, do not avoid a finding of confusing similarity under the standards of the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis);See also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but instead renders the resulting domain name confusingly similar to a complain-ant’s mark). Moreover, the domain name is confusingly similar to the mark in that it is phoentically identical. See, for example, Hewlett-Packard Co. v. Cup-cake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name phonetically identical to a UDRP complainant’s mark satisfies Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent 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 allegations 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 Complaint, 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 <maclaran.com> domain name and does not possess rights in the McLAREN mark. Moreover, the pertin-ent WHOIS information identifies the registrant of the domain name only as “PPA Media Services / Ryan G. Foo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (concluding that the fact that “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” was a factor in determining that Policy ¶ 4(c)(ii) did not apply).
We next observe that Complainant contends, without objection from Respondent, that Respondent’s use of the domain name is commercial in that the domain name resolves to a website providing links to third-party websites that offer services in competition with the business of Complainant and that Respondent seeks to profit from the operation of the resolving website. This employment of the domain name is neither a bona fide offering of goods or services nor a legit-imate noncommercial or fair use. 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 website resolving from a domain name which was confusingly sim-ilar to the mark of another was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
We are also in agreement with Complainant’s assertion that Respondent’s domain name illustrates an instance of typo-squatting, i.e.: the creation of a domain name which is a common misspelling of the mark of another in order to take ad-vantage of mistakes made by Internet users in attempting to enter the mark in a web browser. Typo-squatting is further evidence that Respondent has neither any rights to nor any legitimate interests in the <maclaran.com> domain name. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and legitimate interests in dis-puted domain names where it engaged in the practice of typo-squatting by taking advantage of Internet users who attempt to access a complainant's website but mistakenly misspelled that complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are convinced from the evidence that Respondent has engaged in a pattern of bad faith registration and use of domain names, as evidenced by prior UDRP proceedings in which domain names claimed by Respondent have been transferred to different complainants. See Inter-Continental Hotels Corp v. Fundacion Private Whois Domain Admin. / PPA Media Servs. Ryan G. Foo, D2012–1095 (WIPO July 12, 2012); see also EasyGroup IP Licensing Ltd. v. PPA Media Servs., Ryan G Foo / Fundacion Private Whois, D2012–1093 (WIPO July 20, 2012). Under Policy ¶ 4(b)(ii), this stands as evidence that Respondent has registered and uses the instant domain name in bad faith. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding that prior UDRP proceedings were evidence of a pattern of bad faith registrations).
We are likewise convinced from the record that Respondent employs the contested <maclaran.com> domain name, which is confusingly similar to Complainant’s MCLAREN mark, to generate revenue tracing to the visits of Internet users to the websites links to which are displayed on the resolving website. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website that offered links to third-party websites featuring services similar to those of a UDRP complainant).
For these reasons, 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 <maclaran.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 8, 2013
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