McLaren Health Care Corporation v. Boyd International Limited
Claim Number: FA1212001476161
Complainant is McLaren Health Care Corporation (“Complainant”), represented by Steven L. Permut of Reising Ethington P.C., Michigan, USA. Respondent is Boyd International Limited (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mclaren12c.com>, registered with Mesh Digital Limited.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2012; the National Arbitration Forum received payment on December 17, 2012.
On December 21, 2012, Mesh Digital Limited confirmed by e-mail to the National Arbitration Forum that the <mclaren12c.com> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited 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 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 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@mclaren12c.com. Also on December 27, 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.
A timely Response was received and determined to be complete on January 3, 2013.
On January 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. 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.
On January 17, 2013, the Parties, having been advised that a Panel had been appointed, but that the Decision in this matter had not yet been published, requested that the Administrative Proceeding for the above referenced Complaint be stayed for a one-time period of forty-five (45) days until March 3, 2013, pursuant to Supp. Rule 6(b)(i).
On January 18, 2013, the Panel issued the following Order:
If this matter is not settled and the Complaint withdrawn, one of the Parties must submit a request to the Forum to continue the Administrative Proceeding by March 3, 2013, or the Forum will consider this to be a request by the parties to withdraw the Complaint. Supp. Rule 6(b)(ii).
This Stay has been granted after the expiration of the response period. Therefore, any Party requesting to have the Stay lifted and the Administrative Proceeding continued will result in the case proceeding to a Panel Decision.
On March 4, 2013, Complainant submitted a request that pursuant to Supp. Rule 6(b)(ii) the Stay of Administrative Proceeding be removed and the Complaint be reinstated pursuant to Supp. Rule 6(b)(ii).
On March 12, 2013, the Panel ordered that the stay be lifted and the administrative proceeding be continued.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has rights in the MCLAREN mark.
· The mark is used in connection with retail pharmacy services, educational services, pharmacy benefit management services, and insurance services.
· Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the MCLAREN mark (Reg. No. 4,224,362 filed Sept. 7, 2011; registered Oct. 16, 2012).
· Complainant has established secondary meaning in the MCLAREN mark. Complainant has operated its business since at least 1951 under the MCLAREN and MCLAREN REGIONAL MEDICAL CENTER marks with a business name of McLaren General Hospital. Complainant has invested large sums of money in the promotion of the mark, and now spends $5 million per year promoting its services through television, newspapers, magazines, newsletters, brochures, radio, outdoor billboards, Internet, and direct mailing for the mark. Complainant has operated active websites at a variety of domains including <mclaren.org>, <mclarenhealthcare.org>, and <mclarenhealthplan.org>. Complainant has employed 15,000 employees, 4,200 physicians, and 500 resident and fellowship individuals. Complainant has hosted 326,455 emergency room visits, 2,424,023 outpatient visits, and 97,795 inpatient admissions including 4,438 newborns. Complainant has invested significant resources such as time and money into advertising and developing the MCLAREN mark.
b) The <mclaren12c.com> domain name is confusingly similar to the MCLAREN mark.
· Respondent wholly incorporates Complainant’s mark and merely adds “12c” and the generic top-level domain (“gTLD”) “.com” to the mark.
c) Respondent does not have rights or legitimate interests in the <mclaren12c.com> domain name.
· Respondent is not commonly known by the <mclaren12c.com> domain name. The WHOIS record identifies Respondent as “Boyd International Limited” thus demonstrating that Respondent is not known by the <mclaren12c.com> domain name. Additionally, Respondent has not obtained permission to use the MCLAREN mark.
· The <mclaren12c.com> domain name resolves to a website that provides links to third-party websites that offer medical education, health insurance, health plan, hospital, and health care services.
· Respondent typosquatted the MCLAREN mark in the <mclaren12c.com> domain name.
d) Respondent registered and uses the <mclaren12c.com> domain name in bad faith.
· Respondent has intentionally attempted to attract, for commercial gain, Internet users to the <mclaren12c.com> domain name by creating a likelihood of confusion with the MCLAREN mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The disputed domain name resolves to a website where Respondent displays competing third-party links. Presumably, Respondent profits from the posting of these links by collection of click-through revenue. Respondent is making a similar use of a confusingly similar mark, and the domain name diverts Internet users from Complainant’s website to Respondent’s website.
B. Respondent
Respondent submits:
a) Respondent purchased the <mclaren12c.com> domain name because Respondent is a great admirer of McLaren MP4-12C motor cars.
b) The intended use for the <mclaren12c.com> domain name was for a fan site dedicated to McLaren MP4-12C motor cars. The domain currently is just at a holding page for the domain registrar. The fan website was a future endeavor.
c) The <mclaren12c.com> domain name was not intended to compete with Complainant’s services.
d) Complainant may have the disputed domain name.
Because Complainant and Respondent are both requesting the same relief, Complainant is entitled to the relief sought, i.e. transfer of the domain name.
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 this case, the Panel need not analyze these three elements because the case never gets that far. Respondent consents to transfer the <mclaren12c.com> domain name to Complainant. Respondent contends it purchased the <mclaren12c.com> domain name because Respondent’s business director is a great admirer of McLaren MP4-12C motor cars, and intended to use the <mclaren12c.com> domain name for a fan site dedicated to McLaren MP4-12C motor cars. Respondent says it is disgruntled by Complainant’s hunt for domain names incorporating the McLaren mark and notes that the domain currently is just at a holding page for the domain registrar because the fan website was a future endeavor and was not intended to compete with Complainant’s services.
Respondent goes on to say:
You are welcome to the domain if you wish to have it, please forward your details for transfer of the domain and it will be done.
As such, Respondent does not care to continue in the dispute and instead requests the necessary information for a domain name transfer. However, after the initiation of this proceeding, Mesh Digital Limited placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. In a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, a Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
This is one of those cases. Respondent has effectively stipulated to the transfer of the <mclaren12c.com> domain name. Complainant and Respondent have both essentially asked for the same relief, i.e., that the domain name be transferred. Under such circumstances where the Respondent has agreed to the transfer, the Panel deems it expedient to forego the traditional UDRP analysis and order transfer of the <mclaren12c.com> domain name from Respondent to Complainant.
The Respondent having agreed to the transfer of the disputed domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mclaren12c.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: March 13, 2013
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