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”.…
