Group Health Cooperative v.
ClaimLynx, Inc.
Claim Number: FA0808001220023
PARTIES
Complainant is Group Health Cooperative (“Complainant”), represented by Jesse
Matt, of Group Health Cooperative,
Respondent is ClaimLynx, Inc. (“Respondent”), represented by Christopher
R. Smith, of Lindquist & Vennum P.L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grouphealth.com>, registered with Network
Solutions, Inc.
PANEL
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.
Hugues G. Richard, as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 11, 2008; the
National Arbitration Forum received a hard copy of the Complaint on August 12, 2008.
On August 12, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <grouphealth.com> domain name is
registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions,
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 August 15, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 4, 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@grouphealth.com by e-mail.
A timely Response was received and determined to be complete on September 3, 2008.
An Additional Submission was received from Complainant on September 8,
2008 and determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Submission was received from Respondent on September 11,
2008 and determined to be timely and complete pursuant to Supplemental Rule 7.
On September 11, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hugues G. Richard as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
Respondent requests that the Panel deny the remedy requested by
Complainant in its entirety.
PARTIES’ CONTENTIONS
A. Complainant made the following assertions:
1. Respondent’s domain name <grouphealth.com> is identical or confusingly similar
to Complainant’s GROUP HEALTH mark since it contains the whole of Complainant’s
mark in its domain name.
2. Respondent has no rights or legitimate interests in the name <grouphealth.com> because Respondent proposes only a referral
site that is not commonly known as the Complainant’s mark. Respondent uses the GROUP
HEALTH name to create confusion with Complainant’s in order to attract visitors
to his website.
3. Respondent’s domain name <grouphealth.com> has been registered and is used in bad
faith, primarily in order to disrupt Complainant’s business. Respondent has
intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s web site by creating a likelihood of confusion with the
Complainant’s mark.
B. Respondent made the following assertions:
1. The term “group health” is usually used in the insurance industry to
describe a type of medical insurance underwritten for groups of people.
Therefore, it is a generic term describing a general category of insurance
coverage. Moreover, the distinctiveness of the name <grouphealth.com> is weak, and many third parties, as
well as the US Code, use the term.
2. Respondent has a legitimate interest in obtaining advertising revenue
on a commonly used generic term.
3. Respondent did not register his domain name for the purpose of
disrupting the business of Complainant since both parties are not competitors.
Respondent did not intentionally register its domain name in consideration of
Complainant’s mark, but instead to trade upon the domain name’s inherent
descriptiveness of the insurance industry. Finally, Respondent did not know
about Complainant’s use of the trademark.
C. Additional Submissions
1. Complainant points out that the two words “Group Health” do not appear alone as a generic term throughout
Respondent’s exhibits. The phrase is always associated with a third term.
Complainant also reaffirms its continuous use of the name for 60 years.
2. Respondent’s website is merely a referral site with no interest in
the group health insurance business
3. Respondent’s claim that it was unaware of Complainant’s GROUP HEALTH
mark before 2008 is not credible given the fact that Complainant is an
internationally recognized health care provider.
FINDINGS
Complainant is a non-profit health care organization, founded in 1947,
that provides health care services and health care coverage in the states of
Respondent registered <grouphealth.com>
domain name on October 7, 1996 (Complainant Enclosure 2). The disputed domain
name resolves to a website which features a search engine providing customized
connections for health care electronic commerce, health care plans comparisons.
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:
(i) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(ii) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad
faith.
Complainant argues that its trademark GROUP
HEALTH and ClaimLynx, Inc.’s domain name <grouphealth.com> are confusingly
similar because the domain name contains the whole Complainant’s trademark
Respondent replies that there is no
infringement on Complainant’s activities because it has no business in
The argument about Respondent having no
business in
As for the generic meaning of the phrase
“Group Health,” the Panel thinks that both words are very common in the health
care industry, and may be understood as a generic phrase by someone with a
normal degree of attention.
However, the very slight difference between
the trademark GROUP HEALTH and the domain name <grouphealth.com> is
enough to generate a likelihood of confusion. A customer with an average
attention span can easily be confused and think that the trademark and the
domain name belong to the same person. The two words of the trademark are
contained in the domain name, and the adjunction of “.com” to the website does
not add any meaning. See
Gardline Surveys Ltd. v. Domain
Fin. Ltd., FA 153545 (Nat.
Arb. Forum May 27, 2003). Thus, the Panel agrees that the GROUP HEALTH trademark and the <grouphealth.com>
domain name are confusingly similar.
Therefore, the Panel finds that Policy 4(a)(i) has been satisfied.
In order to counter Complainant’s claims,
Policies 4(c)(i), (ii) and (iii) state that Respondent
must demonstrate its rights or legitimate interests in the domain name by
proving :
(i)
that the
use of the domain name was made with a bona
fide offering of goods or services
(ii)
that the
Respondent has been commonly known by the domain name, even if Respondent had
acquired no trademark or service mark rights
(iii)
Respondent
makes a legitimate non-commercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
Complainant argues that Respondent lacks all
rights and legitimate interests because the <grouphealth.com> domain
is a mere referral site that provides a search engine for other websites, and
is not a bona fide offering of goods
or services. Some of the websites in the search engine are Complainant’s
competitors. The use of Complainant’s name is intended to divert customers,
which is an illegitimate and unfair use of the domain name. Furthermore,
according to Complainant, ClaimLynx, Inc. (Respondent) has never been commonly
known by the domain name <grouphealth.com>. For that reason, <grouphealth.com>
is more apt to be the domain name of Complainant.
Respondent contends that <grouphealth.com> was
initially registered as a common, descriptive name that would operate to
promote its insurance-related business. Respondent’s domain name was later
transformed into a website displaying links to goods and services related to
group health insurance. Nothing in the website proves that Respondent
intentionally tried to misleadingly divert consumers.
Indeed, the Panel agrees that Respondent has
not been commonly known by the domain name under Policy 4(c)(ii).
However, there is no evidence that Respondent
is not using <grouphealth.com> with a bona fide offering of goods or services, or that Respondent is
making use of the domain name with intent to misleadingly divert consumers or
to tarnish the trademark. Respondent website refers to health care
coverage-related websites, including the Complainant’s, with a neutral
approach, and nothing in Respondent’s website tends to prove an intention to
mislead consumers or to tarnish Complainant’s marks or services. The phrase <grouphealth.com>
seems appropriate and legitimate to the Panel for the purpose of a search
engine website. See
FilmNet Inc. v. Onetz, FA
96196 (Nat. Arb.
Forum Feb. 12, 2001) (finding
that the complainant’s trademark is not fanciful or arbitrary, and is wholly
comprised of generic words that could be used by the respondent for a
legitimate purpose). Thus, the Panel agrees that Respondent’s search engine
website is a bona fide service
provided to customers, according to Policy 4(c)(i).
Accordingly, the Panel finds that Policy 4(a)(ii) has not been satisfied.
As to the alleged bad faith, Complainant argues that Respondent has registered the domain name <grouphealth.com> primarily for the purpose of disrupting Complainant’s business, as mentioned in ICANN Policy 4(b)(iii). Complainant underlines that the GROUP HEALTH trademarks are associated, nationally and internationally, with Complainant’s health care coverage-related products. The similarity between the domain name and the trademarks is enough to generate confusion between both, and such diversion constitutes in essence a disruption, since Respondent had “constructive notice” of Complainant’s marks. To support that assertion, Complainant makes reference to Choice Hotel Int’l Inc. v. Domain Administrator, FA 1174413 (Nat. Arb. Forum May 8, 2008), finding that the similarity between the domain name disrupts Complainant’s business, and is enough evidence of registration in bad faith (the complainant being a hotel company and the respondent using the same name to promote a competing site).
However, to presume someone’s bad
faith, Complainant must prove that Respondent had actual knowledge of the
existence of Complainant’s name prior to the domain name creation. That
knowledge is presumed under the rule of “constructive notice.” Complainant’s
reputation and national recognition, however wide, are not sufficient to prove
that Respondent had “constructive notice” (or “constructive knowledge”) of a
prior use of the name without a trademark registration. See
Complainant also contends that Respondent has intentionally attempted to attract, for commercial gains, Internet users to Respondent’s website by creating a likelihood of confusion, as mentioned in Policy 4(b)(iv). However, Complainant has not brought evidence of that intention, and mere allegations of bad faith are not sufficient. See Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that the respondent acted in bad faith).
There is a probability that the choice of <grouphealth.com>
by Respondent was a random occurrence. The contested domain name is not formed
of an invented word, coined by Complainant. It is formed of two words that are
relatively common, generic and descriptive, perfectly apt for the services
provided by Respondent’s website. Moreover, one can consider that the large
delay between the domain name registration and Group Health Cooperative’s
complaint neutralizes the bad faith accusation, according to the “Doctrine of
Laches.” See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Complainant’s delay in seeking relief is
relevant to a determination of whether Respondent has been able to build up
legitimate rights in the domain name in the interim, and whether it is using
the domain name in bad faith”).
It must also be remembered that domain name
registrations are made based on the “first come, first served” principle. If Complainant wanted to register this domain
name, it should have done so prior to October 7, 1996, because the two words of
which it is constituted belong to the English language and were available to
the world to register.
Thus, the Panel finds that Policy 4(a)(iii) has not been satisfied.
DECISION
Complainant has not established the second and third elements required under
the ICANN Policy. Accordingly, the Panel concludes that relief shall be DENIED.
Hugues G. Richard, Panelist
Dated: September 25, 2008
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