Two Parked Pages: McLaren.net Lost In A UDRP; McLaren.biz Saved in UDRP
In two separate UDRP decision are out today, one on the domain name McLaren.net the other on the domain name McLaren.biz, the two separate UDRP panels awarded one of the domains and refused to transfer the other to the same complainant,
Of course the most famous trademark holder of the term “Mclaren”, is the car maker, but they didn’t bring the complaints.
Instead the complaints were brought by McLaren Health Care Corporation whose federally registered trademark was just issued last year:
Complainant has registered the MCLAREN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,224,362 filed September 7, 2011; registered October 16, 2012).
Complainant has continuously operated active websites at the mclaren.org, mclarenhealthcare.org, and mclarenhealthcare.org domains since October 10, 2002.
In both cases the domain names were parked
However in the case of the .Net the domain holder did not respond.
In the case of the .Biz not only did the domain holder respond but they proved to the Panel that although the domain was parked they were not making the revenue from the ads and that they had made preparation and strides to put up a website on the domain and the name of the owner on the whois was another McLaren
Here is what the panel found in the case of the .Net:
“Complainant provides the Panel with evidence of its registration of the MCLAREN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,224,362 filed September 7, 2011; registered October 16, 2012). The Panel finds that Complainant’s trademark registration confers rights in the mark dating back to the date Complainant filed for trademark protection”.
“Complainant argues that its longstanding use of the MCLAREN mark in connection with the provision of health care-related services has lead the mark to achieve secondary meaning”.
“Complainant claims that it has continuously provided health care services under the MCLAREN mark since at least as early as 1951″.
“Complainant claims to have continuously operated active websites at the <mclaren.org>, <mclarenhealthcare.org>, and <mclarenhealthcare.org> domains since October 10, 2002, and claims to now spend $5,000,000 per year promoting its services through: television, newspapers, magazines, newsletters, brochures, radio, outdoor billboards, internet and direct mailing. Complainant states that it employed 15,000 employees, engaged or employed 4,200 physicians and 500 resident and fellowship individuals, and raised $4.3 million in donations during its 2011 fiscal year. Complainant also states that its facilities had 326,455 emergency room visits, 2,424,023 outpatient visits, and 97,795 inpatient admissions, including 4,438 newborns, during that time”.
“The Panel determines that Complainant has provided sufficient evidence to show that the MCLAREN mark has accrued secondary meaning for the purposes of Policy ”
“As a result, the Panel further finds that Complainant has established common law rights in the MCLAREN mark dating back to 1951″. ”
The Panel notes that Respondent is identified as “Domains, Profile” in the WHOIS information on record.”
“The Panel also notes that Respondent has failed to submit a Response in this case, meaning that there is no evidence in the record to suggest that Respondent is in fact commonly known by the disputed domain name.”
“In light of these findings, the Panel concludes that Respondent is not commonly known by mclaren.net domain name within the meaning of Policy”
Complainant avers that Respondent’s use of the mclaren.net domain name to resolve to a website featuring links to health care services that directly compete with those provided by Complainant suggests that Respondent’s use of the disputed domain name can be considered neither a bona fide offering of goods or services pursuant to Policy”
“The Panel holds that Respondent has registered and used the <mclaren.net> domain name in bad faith pursuant to Policy”
“The Panel finds that Respondent’s registration and use of an identical domain name was a ploy to create confusion with Complainant and draw Internet traffic to its website in order to commercially benefit from the collection of click-through revenues.”
In the case of the .Biz the domain holder responded.
Here is what the one member panel found:
“The Respondent has made steps towards web content for the Disputed Domain Name. The evidence demonstrates that the Respondent has contacted different professionals in web design and information technology for the domain name mclaren.biz”
“Moreover, the evidence does not demonstrate conclusively that the Respondent has made any financial gains through the links sponsored on the website”.
“After consideration of the evidence, the Panel finds that the Complainant has failed to establish: 1) that the Respondent has no right or legitimate interest in mclaren.biz Domain Name; and 2) that the Respondent registered and is using the mclaren.biz>Domain Name in bad faith.
“The Complainant has failed to meet all of the three elements required under Policy ¶ 4(a). The relief is therefore denied”.
“Under Policy ¶ 4(a)(ii), the Complainant must first make a prima face case that the Respondent lacks rights and legitimate interests in the Disputed Domain Name.”
“”The Complainant argues that the Respondent’s mclaren.biz Domain Name provides hyperlinks that connect to other businesses in the health and medical insurance services industry, which are in competition with the Complainant’s business. ”
“In its Additional Submission, the Complainant also contends that the retail optical outlet using the McLaren name does not relate to the website found under the mclaren.biz domain name.
See Complainant’s Exhibits Q – V. This satisfies the burden that the Complainant must meet under Policy ¶ 4(a)(ii).
“The Respondent has demonstrated to the Panel’s satisfaction that he had rights and legitimate interests in the mclaren.biz Domain Name following the circumstances set out in Policy”
“The Panel finds that the steps the Respondent has taken to establish a website under the mclaren.biz Domain Name and the use of the Respondent’s surname demonstrate the Respondent’s rights and legitimate interest. They are discussed in detail below.
The Respondent, as far back as June 29, 2010, has made preparations in order to provide web content under the domain name.
“There have been exchanges with different web design and IT professionals regarding the website to be used under mclaren.biz on June 29, 2010; March 5, 2012; August 3, 2012; and May 30, 2012.
Contrary to the Complainant’s contentions, the Panel finds that the Respondent has made demonstrable preparations to use the <mclaren.biz> domain name with bona fide offering of goods or services under Policy”
Furthermore, the Respondent is commonly known under the McLaren name.
This name is also reflected in the Respondent’s business.
The Respondent can demonstrate its rights and legitimate interest in the Disputed Domain Name under Policy”
“The evidence demonstrates that the Respondent’s surname is indeed McLaren, which is also associated with the Respondent’s business. However, the Complainant alleges that the fact that the surname is McLaren does not give the Respondent unfettered rights and legitimate interests in such a Domain Name when used for illegitimate and bad faith purposes”.
“According to the Complainant, the purpose is presumably the making of profits from the posting of sponsored listings by collecting click-through fees. The Complainant brings no evidence to support this “presumption.” On the other hand the Respondent forcefully denies this allegation and states that he has not made any money from the mclaren.biz Domain Name.
“Under the circumstances, the Panel cannot conclude that the Respondent’s purpose, when registering and using the Domain Name was the making of profits from the posting of sponsored listings by collecting click-through fees”.
Considering that the Respondent has demonstrated circumstances that show his rights and legitimate interests for the purposes of Policy ¶ 4(a)(ii), the Panel finds that the Complainant has failed to satisfy Policy ¶ 4(a)(ii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mclaren.biz> Domain Name REMAIN WITH the Respondent.