UnitedHealth Group Incorporated v. NAC Marketing Company, LLC
Claim Number: FA0708001065186
Complainant is UnitedHealth Group Incorporated (“Complainant”), represented by Timothy
M. Kenny, of Fulbright & Jaworski L.L.P., 2100
IDS Center,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <unitedhealthproducts.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 17, 2007.
On August 16, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <unitedhealthproducts.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 12, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@unitedhealthproducts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 17, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <unitedhealthproducts.com> domain name is confusingly similar to Complainant’s UNITEDHEALTH PRODUCTS mark.
2. Respondent does not have any rights or legitimate interests in the <unitedhealthproducts.com> domain name.
3. Respondent registered and used the <unitedhealthproducts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, UnitedHealth Group Incorporated, is a family of companies in the health and well-being industry. Complainant holds numerous registrations for the UNITEDHEALTH GROUP mark worldwide, including with the United States Patent and Trademark Office (“USPTO”)(Reg. No. 2,635,728 issued October 15, 2002).
Respondent’s <unitedhealthproducts.com> domain name was registered on February 25, 2003. It currently redirects Internet uses to the <newvitality.com> domain name, which resolves to a website that offers goods in direct competition with those offered under Complainant’s UNITEDHEALTH GROUP mark.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has sufficiently established its rights pursuant
to Policy ¶ 4(a)(i) in the UNITEDHEALTH GROUP mark
through registration with the USPTO. See
Respondent’s <unitedhealthproducts.com> domain name consists of the dominant features of Complainant’s UNITEDHEALTH GROUP mark omitting the word “group,” adding the generic term “products,” and including the generic top-level domain (“gTLD”) “.com.” It is well established that the omission and addition of a generic term and the addition of a gTLD does not negate a finding of confusing similarity. As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group, Inc. v. United Hosing Sers. SA, FA 717327 (Nat. Arb. Forum June 7, 2006) (finding the <unitedhealthquotes.com> and <unitedhealthrx.com> domain names to be confusingly similar to the complainant’s UNITEDHEALTH GROUP mark pursuant to Policy ¶ 4(a)(i), because the domain names consisted of the dominant features of the complainant’s UNITEDHEALTH GROUP mark with the addition of the terms “quotes” and “rx,” respectively, and the [gTLD] “.com”); see also Am. W. Airlines v. domainchronicle, FA 222038 (Nat. Arb. Forum Feb. 11, 2004) (finding that the respondent’s <americawestairways.com> domain name was confusingly similar to the complainant’s AMERICA WEST AIRLINES mark because the respondent’s domain name still described the complainant and its specific air travel services); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out a prima facie case that Respondent has no rights or legitimate interests. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Complainant has made this showing and thus the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.
see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent).
Respondent has failed to submit a response to the Complaint. This Panel thus presumes that Respondent has no rights or legitimate interests in the <unitedhealthproducts.com> domain name, but will still consider all available evidence relevant to the other factors in Policy ¶ 4(b)(c) before making its final determination. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Nowhere in Respondent’s WHOIS information does it indicate that Respondent is commonly known by the <unitedhealthproducts.com> domain name. Moreover, the evidence on record provides no indication that Respondent has sought or obtained a license or permission from Complainant to use the UNITEDHEALTH GROUP mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent is using the <unitedhealthproducts.com>
domain name to redirect Internet users to the <newvitality.com> domain name,
which resolves to a website that offers goods in direct competition with those
offered under Complainant’s UNITEDHEALTH GROUP mark. The Panel finds this to not be a bona fide offering of goods or service
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the
complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to their business was not a bona fide offering of goods or services).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s use of the <unitedhealthproducts.com>
domain name, to redirect Internet users to another website in competition with
Complainant, creates the presumption that Respondent intends to disrupt
Complainant’s business. Absent any
evidence to the contrary, the Panel finds that Respondent registered and is
using the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12,
2000) (finding that the respondent has diverted business from the complainant
to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EthnicGrocer.com, Inc. v.
Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith
where the respondent’s sites pass users through to the respondent’s competing
business).
Moreover, it is presumed that Respondent is financially
benefiting from the redirected traffic to its commercial website. The Panel finds this to be further evidence
of bad faith pursuant to Policy ¶ 4(b)(iv).
See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <unitedhealthproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 28, 2007
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