Vertical Axis Inc. which was represented by Ari Goldberger of Esqwire.com, just beat back a UDRP on the domain name Mclarin.com.

The complaint was filed by McLaren Health Care Corporation  which won all 11 previously filed UDRP cases including 10 it won so far in 2013 after getting a registered trademark back in October 2012.

The domain name was registered November 26, 2001.

“”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., 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.

“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.”

“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.