UnitedHealth Group Incorporated v. St Kitts Registry
Claim Number: FA0801001138704
Complainant is UnitedHealth Group Incorporated (“Complainant”), represented by Timothy
M. Kenny, of Fulbright & Jaworski,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <difinityhealth.com>, registered with Moniker Online Services, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 14, 2008 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@difinityhealth.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <difinityhealth.com> domain name is confusingly similar to Complainant’s DEFINITY HEALTH mark.
2. Respondent does not have any rights or legitimate interests in the <difinityhealth.com> domain name.
3. Respondent registered and used the <difinityhealth.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, UnitedHealth Group, Incorporated,
is a nationwide leader in the health and well-being industry. Complainant is ranked 21st on the
Fortune 500 list of
Respondent registered the <difinityhealth.com> domain name on
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 asserts rights in the DEFINITY HEALTH mark
through its registration of the mark with the USPTO. However, neither the registration date nor
the filing date of this registration predates Respondent’s registration of the <difinityhealth.com> domain
name. In SeekAmerica Networks Inc. v. Masood, the panel found that the Rules
do not require that the complainant's trademark or service mark be registered
by a government authority or agency for such rights to exist. D2000-0131 (WIPO
Complainant also asserts common law rights in the DEFINITY HEALTH mark by virtue of its continuous and extensive use of the mark since 1998 in connection with its Definity Health company. Complainant has become a leader in the consumer-driven healthcare industry, and continues to lead the market today through products and services offered under the DEFINITY HEALTH mark. Complainant’s registration of the mark with the USPTO also indicates Complainant’s rights in the mark. The Panel thus finds that the DEFINITY HEALTH mark has acquired secondary meaning sufficient to establish Complainant’s common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <difinityhealth.com>
domain name is confusingly similar to Complainant’s DEFINITY HEALTH mark,
as the disputed domain name merely misspells the word “definity,” substituting
the letter “i” for the letter “e” in the mark.
Previous UDRP panels have found, and this Panel so finds, that such a
slight misspelling is not sufficient to distinguish the disputed domain name
from Complainant’s mark. Moreover, while the disputed domain name also adds the
generic top-level domain “.com” to the mark, it is well-established under the
UDRP that the addition of a top-level domain is irrelevant for the purposes of
Policy ¶ 4(a)(i).
Accordingly, the Panel concludes that the <difinityhealth.com> domain name is confusingly similar to
Complainant’s DEFINITY HEALTH mark pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA
97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain
name confusingly similar to the complainant's BELKIN mark because the name
merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan.
15, 2001) (finding that the domain names <tdwatergouse.com> and
<dwaterhouse.com> are virtually identical to the complainant’s TD
WATERHOUSE name and mark); 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); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063
(Nat. Arb. Forum
The Panel thus finds that Policy ¶ 4(a)(i)
has been satisfied.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <difinityhealth.com> domain name. However, once Complainant has made such a showing, the burden shifts to Respondent to show that it does have rights or legitimate interests. In this proceeding, the Panel finds that Complainant has established a prima facie case as required by Policy ¶ 4(a)(ii). See 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 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).
Respondent failed to file a Response to the Complaint in
this proceeding. As a result of this
default, the Panel is allowed to presume that Respondent lacks rights and
legitimate interests in the <difinityhealth.com>
domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO
Complainant asserts that Respondent is not commonly known by
the <difinityhealth.com> domain
name, which can indicate a lack of rights and legitimate interests pursuant to
Policy ¶ 4(c)(ii).
The WHOIS information for the disputed domain indicates that Respondent
is “St Kitts Registry,” and there is no further evidence in the record to
suggest that Respondent is known by the <difinityhealth.com>
domain name. The Panel also accepts
Complainant’s assertion that it has never given Respondent permission to use
its DEFINITY HEALTH mark. Therefore, the
Panel finds that Respondent lacks rights and legitimate interests in the <difinityhealth.com> domain name
as described by Policy ¶ 4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum
In addition, Respondent’s use of the <difinityhealth.com> domain name also suggests Respondent’s
lack of rights and legitimate interests in the disputed domain name. The disputed domain name resolves to a
website featuring links to third-party websites offering healthcare services in
direct competition with Complainant, and the Panel presumes that Respondent earns
click-through fees from these links. The
Panel finds that such use constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also Yahoo! Inc. v. Web
Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the
respondent’s use of a confusingly similar domain name to operate a
pay-per-click search engine, in competition with the complainant, was not a bona
fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, Complainant contends that Respondent registered and is using the <difinityhealth.com> domain name in bad faith under Policy ¶ 4(a)(iii), and the Panel agrees with Complainant. First, the disputed domain name resolves to a website that features links in direct competition with Complainant’s business. Pursuant to Policy ¶ 4(b)(iii), the Panel finds that this constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use. See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also 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)).
As mentioned above, the Panel presumes that Respondent profits when Internet users click on the competing links that appear on the website that resolves from the <difinityhealth.com> domain name. Respondent is thus capitalizing on the likelihood that users, presumably seeking Complainant’s business, will be confused as to the source of the disputed domain name and Complainant’s affiliation with the corresponding website. The Panel finds that to be further evidence that Respondent registered and is using the <difinityhealth.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel thus finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <difinityhealth.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
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