23rd Apr 2013
national arbitration forum
McLaren Health Care Corporation v. Vertical Axis Inc.
Claim Number: FA1212001475557
Complainant is McLaren Health Care Corporation (“Complainant”), represented by Steven L. Permut of Reising Ethington P.C., Michigan, USA. Respondent is Vertical Axis Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mclarin.com>, registered with Fabulous.Com Pty Ltd.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Jeffrey M. Samuels
Honourable Neil Brown, QC
Honorable Carolyn Marks Johnson
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2012; the National Arbitration Forum received payment on December 12, 2012.
On December 12, 2012, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <mclarin.com> domain name is registered with Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd. 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 February 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 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 firstname.lastname@example.org. Also on February 27, 2013, 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 March 19, 2013.
Complainant submitted an Additional Submission on March 22, which was determined to be compliant.
On April 16, 2012, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, Honourable Neil Brown, QC, and Honorable Carolyn Marks Johnson as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant McLaren Health Care Corp. 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 physical services, outpatient centers, urgent care facilities, occupational health centers, skilled nursing homes, home health care services, behavioral health services, etc. Presently, McLaren Health Plan has 140,000 covered lives. McLaren Health Care Corp. has 200 facilities in the State of Michigan and draws patients from outside Michigan.
Complainant was issued U.S. Trademark Registration No. 4,224,362 for the mark McLAREN, as used in connection with retail pharmacy, educational, and medical research services, on October 16, 2012. It has been using the marks McLAREN, McLAREN HEALTH CARE, McLAREN REGIONAL MEDICAL CENTER, McLAREN HEALTH, and McLAREN HEALTH PLAN continuously since 1989 for a wide range of health services to over 2.5 million patients annually.See Complaint, Affidavit of Kevin Tompkins, vice president of marketing for McLaren Health Care Corp.
Complainant alleges that the McLAREN marks were first used as early as 1951, and that the marks, “through their continuous use in health care services, have developed into strong marks and strongly refer to and identify the source of health care services from McLaren Health Care Corporation.” See Tompkins Affidavit, ¶8.
Complainant notes that it has invested large sums in the promotion of its marks and services and now spends $5 million a year promoting its services through TV, radio, magazines, and other advertising media, including over $800,000 directed to advertising and promoting the McLAREN HEALTH PLAN mark.
According to Complainant, the disputed domain name resolves to a site that provides links to third party sites that offer health insurance, health plan and medical services competitive to those offered by Complainant. See Complaint, Exhibits T-Z.
Complainant asserts that the disputed domain name, <mclarin.com>, is confusingly similar to the McLAREN marks. It notes that the domain name wholly incorporates Complainant’s McLAREN mark and represents a misspelling of Complainant’s mark.
Complainant further contends that Respondent has no rights or legitimate interests in the subject domain name. It argues that Respondent’s domain name, mclarin.com, is not used in connection with a bona fide offering of goods or services, that Respondent is generally known as Vertical Axis, Inc. and is not commonly known by the domain name in issue, and that Complainant has not granted Respondent permission to use the McLAREN mark in any way.
With respect to the issue of “bad faith” registration and use, Complainant asserts that the domain name is used in bad faith. According to Complainant, 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. Complainant contends that Respondent’s domain name is connected to websites offering health and medical insurance services, medical and hospital services, as well as medical education services that are disrupting Complainant’s business. “Presumably, Respondent profits from the posting of these sponsored links by collecting click-through fees.”
Complainant maintains that Registrant is offering the mclarin.com domain name for sale to the general public. See Complaint, Exhibits A2 and T. 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.”
Respondent points out that it registered the disputed domain name, <mclarin.com>, on November 26, 2001, and contends that it did so because mclarin.com is comprised solely of a common Irish last name, “McLarin.” Respondent indicates that it has registered thousands of generic dictionary and common word domain names, three and four letter domain names, and common surnames as domain names. Respondent hosts underdeveloped domain names with domain name parking services that pay a share of the advertising revenue they generate, which, according to Respondent, is “an industry-wide accepted practice.” Respondent emphasizes that it does not have any links related to Complainant or its business on its website. “The links are auto-generated by Google and are constantly changing based on Google’s keyword advertising inventory and user search behavior.”
According to the Declaration of Leandra Wilfred-Boyce, the director of finance and operations for Vertical Axis, Inc., (see Response, Exhibit 1), Respondent did not register the domain name with Complainant’s trademark in mind and had no knowledge of Complainant when it purchased the domain name at auction 12 years ago. Respondent contends that 12 years represents “a substantial delay by any measure and an eternity in `Internet time’,” and that such delay bars the complaint under the doctrine of laches.
Turning its attention to the Policy’s three elements, Respondent asserts that the disputed domain name is neither identical nor confusingly similar to the McLAREN mark. The mark and domain name, it points out, are different common Irish last names and consumers would understand that common last names like McLaren and McLarin are not the same.
Respondent further contends that Complainant’s registered trademark, with registration dates subsequent to the registration date of the disputed domain name, provides no enforceable rights under the Policy.
Respondent argues that it has rights or legitimate interests in the mclarin.com domain name. It is indisputable, Respondent asserts, that McLarin is a common last name, subject to substantial third-party use (see Response, Exhibits 2 – 4) and that the disputed domain name is solely comprised of the common name. “Absent any reference to a third-party or to its trademark, the registration of a common surname may itself provide a party with rights and a legitimate interest in the domain name.”
Respondent maintains that its legitimate business interest is bolstered by the fact that it uses the disputed domain in connection with the provision of related pay-per-click generic advertising links appearing on a web site, for which it receives a share of the revenue. Moreover, the fact that it has a link offering the domain for sale is not improper. “To the contrary,” Respondent asserts, “a business based on reselling domain names satisfies the legitimate interest prong of the Policy, provided there is no evidence a trademark is targeted by the registrant.”
Because of the substantial third-party use of the last name “McLarin,” Respondent maintains that Complainant must produce specific evidence that Respondent targeted Complainant’s mark when it registered the disputed domain. “Complainant cannot provide such evidence because Complainant did not even apply for a trademark until September, 2011, eleven (11) years after the registration of the Disputed Domain. On this basis alone, the Complaint must be denied.” Nor, Respondent adds, can it be argued that Respondent should have known of Complainant’s alleged mark when the domain name was registered. According to Respondent, even if the panel were to find common law trademark rights, knowledge of a foreign trademark is not imputed under the UDRP.
Respondent reiterates that the offer to sell a domain name for a significant profit is not improper and is itself an accepted, common industry practice. “Where a party registers a domain name because of its generic character it is not illegitimate for Respondent to sell the domain name to interested third parties.”
Respondent contends that because Complainant knowingly brought forth a case with no basis, using a trademark that is not the same as the disputed domain name and that was registered 12 years after the disputed domain was registered, the Panel should find that Complainant has abused the proceedings and has engaged in reverse domain name hijacking.
C. Additional Submissions
In its Additional Submission, Complainant argues that, in general, laches is not applicable in UDRP proceedings. “It is also emphasized that the Complainant is not objecting to the Respondent’s registration of the domain name of the passive parking of the domain name. The Complainant is objecting to the use of the domain name as a pay-per-click website that diverts potential customers of the Complainant to competitors.”
Complainant maintains that the name “mclarin” is not a common word and not a descriptive word. “It is a surname, for which the Respondent has no legitimate right.”
Complainant also takes issue with Respondent’s contention that the public understands McLaren and McLarin are two different common Irish names, which are not confusingly similar. Complainant contends the mark and domain name are phonetically identical and that confusion is heightened by the Respondent’s use of the name for links to health care services, which compete with Complainant’s services.
With respect to Respondent’s argument that it is a legitimate business model to have pay-per-click generic advertising links and to sell the domain names, Complainant indicates that the cases cited in support of such propositions are all limited to generic or descriptive terms and do not apply to surnames. “To allow Respondent’s model of a business practice to extend to surnames where the Respondent has no legitimate interest in the surname or to other marks would wreak havoc with the internet business community and trademark rights in general.”
Complainant also asserts that the requisite bad faith may be found in this case based on its common law rights which date back to the early 1950’s.
The Panel concludes that Complainant has not met it burden of establishing that the disputed domain name was 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 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.
Identical and/or Confusingly Similar
In view of its finding with respect to the element of registration and use in bad faith, the Panel finds no need to address this issue.
Rights or Legitimate Interests
In view of its finding with respect to the element of registration and use in bad faith, the Panel finds no need to address this issue
Registration and Use in Bad Faith
The Panel concludes that Complainant has not met its burden of establishing that the disputed domain name was registered and is being used in bad faith. Indeed, Complainant seems to have conceded this point by noting, in both its Complaint and Additional Submission, that it has no objection to the registration of the domain name, only its use. However, the Policy requires both bad faith registration and use.
Even without this admission, however, the Panel finds the evidence wanting on the issue of bad faith registration and use. The Panel is not convinced that, at the time the domain name was registered, Respondent knew of Complainant or of its McLAREN mark and targeted such in registering the domain name.
Based upon its review of the evidence, the Panel concludes that it is more probable than not that Respondent registered the disputed domain name as part of its business model of registering common Irish surnames. The evidence indicates, for example, that, in addition to the <mclarin.com> domain name, Respondent also registered <mcsweenys.com>, <mccrae.com>, <mcclan.com>, <mcneills.com>, <mcbains.com>, and <mcnight.com>, as well as many other common Irish surnames.
There is some evidence that the McLAREN mark was first used as early as 1951. However, it appears that use of the McLAREN marks has taken place primarily in Michigan. While there is some evidence of current advertising and promotional expenses, it is not clear that, in November 2001, when the disputed domain name was registered, Complainant’s McLAREN mark, which is comprised of a common Irish surname, had acquired such secondary meaning that we can reasonably assume that Respondent was aware of it at the time the domain name was registered. Contrary to Complainant’s assertion, terms that are primarily merely surnames are descriptive in character. The fact that the McLAREN mark was registered only upon proof that the mark had acquired distinctiveness supports the finding that surnames are considered descriptive in character.
Reverse Domain Name Hijacking
The Panel concludes that while Complainant has failed to establish each element of the Policy, it has not used the Policy in bad faith to attempt to deprive Respondent of its <mclarin.com> domain name. Complainant has both common law and registration rights in the McLAREN mark and the mark and domain name differ by only one letter. Moreover, Respondent’s site links to third-party sites of Complainant’s competitors. While the Panel finds the requisite bad faith registration and use has not been established, it cannot say the Complaint was filed in bad faith as, although the filing of the Complaint might be seen by some as over-optimistic, Complainant may have genuinely believed its trademark was under attack and that it had reasonable grounds for defending it by filing the Complaint. Thus, the Panel declines to find that this is a case of reverse domain name hijacking.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mclarin.com> domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, Honourable Neil Brown, QC, Honorable
Carolyn Marks Johnson
Dated: April 23, 2013