National Arbitration Forum

 

DECISION

 

UnitedHealth Group Incorporated v. MM c/o M. Morgan

Claim Number: FA0802001152594

 

PARTIES

Complainant is UnitedHealth Group Incorporated (“Complainant”), represented by Timothy M. Kenny, of Fulbright & Jaworski, Minnesota, USA.  Respondent is MM c/o M. Morgan (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <unitedhealth.org>, registered with eNom, Inc.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 22, 2008.

 

On February 20, 2008, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <unitedhealth.org> domain name is registered with eNom, Inc. and that the Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 March 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 24, 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@unitedhealth.org by e-mail.

 

A timely Response was received by e-mail on March 24, 2008.  However, the Response was deemed deficient pursuant to ICANN Rule 5 because a hard copy of the Response was not received prior to the Response deadline.

 

 

On March 28, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

            A.  Complainant makes the following assertions:

 

1.      Respondent’s <unitedhealth.org> domain name is confusingly similar to Complainant’s UNITEDHEALTH marks.

 

2.      Respondent does not have any rights or legitimate interests in the <unitedhealth.org> domain name.

 

3.      Respondent registered and used the <unitedhealth.org> domain name in bad faith.

 

B.  The deficient Response consisted of this single line:  I have already indicated that I wish to transfer the name. 

 

FINDINGS

Complainant owns a family of well-known marks with the root UNITEDHEALTH, such as UNITEDHEALTHCARE, UNITEDHEALTH GROUP and UNITED HEALTH RX (“UNITEDHEALTH marks”).  Complainant began using the UNITEDHEALTHCARE mark as early as 1984 for health care services, and holds 23 U. S. Trademark Registrations, and 25 additional registrations worldwide.  It appears that Respondent created the domain name <unitedhealth.org> on July 22, 2006.  The Panel largely ignores the deficient Response, except to note that there is no opposition to Complainant’s contentions.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

Complainant has provided the Panel with evidence of the registration of its numerous UNITEDHEALTH marks.  The Panel finds this is sufficient to conclude Complainant has established rights in the marks pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office.  This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Respondent’s <unitedhealth.org> domain name fully incorporates the root of Complainant’s marks with the mere addition of the generic top-level domain (“gTLD”) “.org”, not considered relevant when evaluating whether a disputed domain name is confusingly similar to a mark.  Therefore, the Panel finds Respondent’s <unitedhealth.org> domain name is confusingly similar to Complainant’s UNITEDHEALTH marks pursuant to Policy ¶ 4(a)(i).  See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks all rights and legitimate interests in the <unitedhealth.org> domain name.  Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case against Respondent, and then the burden shifts to Respondent to show evidence that it does have rights and legitimate interests in the disputed domain name.  The Panel finds that Complainant has made a prima facie case pursuant to Policy ¶ 4(a)(ii).  See 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’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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Respondent’s disputed domain name resolves to a website which displays links to Complainant’s competitors who also provide health services.  The Panel finds Respondent’s uses of the disputed domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

Complainant contends that Respondent is not commonly known as <unitedhealth.org>.  There is no evidence in the WHOIS record that Respondent is known as <unitedhealth.org>.  Since Respondent has failed to present evidence to the contrary, the Panel concludes that Respondent is not commonly known as <unitedhealth.org> pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”). 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the <unitedhealth.org> domain name to advertise competing financial websites, receiving profit by redirecting Internet users to these competing websites.  Respondent’s use of the disputed domain name is capable of creating confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name.  The panel in G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) found 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 here also finds that the use of the disputed domain name to attract Internet users to its website is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv).  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

In addition, previous panels have found evidence of registration and use in bad faith under Policy ¶ 4(b)(iii) when competing products or services are advertised on the website that resolves from the disputed domain name.  Therefore, the Panel finds Respondent’s use of the disputed domain name to display links to competing financial services further demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <unitedhealth.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist
Dated: April 11, 2008

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum