Optum, Inc. v. United Health Group
Claim Number: FA0201000104102
The Complainant is Optum, Inc., Costa Mesa, CA (“Complainant”). The Respondent is United Health Group, Minneapolis, MN (“Respondent”).
The domain name at issue is <optum.biz>, registered with Network Solutions.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on January 23, 2002; the Forum received a hard copy of the Complaint on January 23, 2002.
On January 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on February 15, 2002.
On February 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr., as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Optum, Inc, a Delaware corporation owns a registered trademark for the word Optum.
<optum.biz> is used identically within the bounds of the .biz domain registration.
Respondent, United Health Care does not hold rights to the word “optum."
Respondent is not commonly known or associated with the word, nor is the health care industry commonly or formally known to use the word “optum.”
Respondent has attempted to register <optum.biz> subject only to these proceedings.
Respondent is the owner of U.S. Trademark Registration No. 1,801,041 for the mark OPTUM, registered on October 26, 1993 and first used by Respondent at least as early as August 15, 1992.
The Registration is in full force and effect and is incontestable.
Although the Registration issued in the name of United HealthCare Corporation, the Registration was assigned to Respondent. The assignment was completed and recorded with the U.S. Patent and Trademark Office prior to Respondent’s registration of the subject domain name.
Both use of and registration of the mark OPTUM by Respondent pre-dates that of the Complainant.
The mark of the Registration is identical to the domain name that is the subject of this proceeding.
1. Complainant is a corporation organized under the laws of the State of Delaware with principal offices in Costa Mesa, California.
2. Complainant is a company that develops and markets computer software for optimizing supply chain utilization.
3. The name of the corporation is OPTUM, INC.
4. Complainant registered OPTUM with the United States Patent and Trademark Office, on the Trademark Service Mark Principal Register, as Registration No. 2,171,601 showing Registration date of July 7, 1998.
5. Complainant uses OPTUM as its trademark.
6. Respondent registered the domain name <optum.biz> on November 19, 2001.
7. The organization and purpose of Respondent is not revealed in the pleadings. The inference is made that Respondent is a business organization properly formed and in legal existence in the place of its operation.
8. UNITED HEALTHCARE CORPORATION, a Minnesota Corporation, filed with the United States Patent and Trademark Office, on the Service Mark Principal Register, the mark OPTUM, which was registered on October 26, 1993, as Registration No. 1,801,041.
9. Respondent alleges and offers some proof that UNITED HEALTHCARE CORPORATION assigned its trademark registration No. 1,801,041 for OPTUM to UNITEDHEALTH GROUP INCORPORATED in the year 2000. Respondent contends that it, United Health Group, is the same as UNITEDHEALTH GROUP INCORPORATED, the assignee of OPTUM. Complainant does not dispute these allegations. They will be taken as true for the purposes of this proceeding.
10. Complainant has rights and interests in the mark, OPTUM.
11. Respondent has rights and interests in the mark, OPTUM.
12. No evidence of bad faith is presented and none is found.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant has rights and legitimate interests in the mark, OPTUM based upon its ownership of Registration No. 2,171,601 with the United States Patent and Trademark Office. This satisfies the requirements of Paragraph 4(a)(i) of the Start-Up Trademark Opposition Policy and Rules of .BIZ.
Respondent has rights and legitimate interests in the mark, OPTUM, based upon the assignment of the ownership of Registration No. 1,801,041, with the United States Patent and Trademark Office, for the Service Mark, OPTUM, from the original registrant to Respondent. The Respondent has rights to and legitimate interests in the domain name when Respondent illustrates that it is “the owner or beneficiary of a trade or service mark that is identical to the domain name.” see Paragraph 4(c)(i) of the Start-Up Trademark Opposition Policy and Rules for .BIZ. The assignment of the mark represents the ownership interest necessary to prevail. see Fitter Int’l Inc. v. Eenable Inc. and Balance Designs, Inc., D2001-0979 (WIPO Oct. 12, 2001).
The submissions by both parties to this proceeding are incomplete. The parties have not complied with Rules 3 and 5. However, a Panel must decide a complaint on the basis of the statements and documents submitted. see Rule 15, Start-Up Trademark Opposition Policy and Rules for .BIZ. On that basis, it must be found that Complainant has failed to prove its case.
No allegations of bad faith or evidence of bad faith was presented by Complainant.
IT IS THE DECISION OF THE PANEL THAT THE COMPLAINT BE
Tyrus R. Atkinson, Jr., Panelist
Dated: March 8, 2002
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