Aetna Inc. v. Kristanto Siswanto
Claim Number: FA0209000124989
PARTIES
Complainant
is Aetna Inc., Hartford, CT, USA
(“Complainant”). Respondent is Kristanto Siswanto, Perth, AUSTRALIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aetnahealthcare.com>,
registered with OnlineNIC.com.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 10, 2002; the Forum received a hard copy of the
Complaint on September 12, 2002.
On
September 10, 2002, OnlineNIC.com confirmed by e-mail to the Forum that the
domain name <aetnahealthcare.com>
is registered with OnlineNIC.com and that Respondent is the current registrant
of the name. OnlineNIC.com has verified
that Respondent is bound by the OnlineNIC.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
September 12, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 2, 2002 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@aetnahealthcare.com by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
October 24, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<aetnahealthcare.com>
domain name is confusingly similar to Complainant's AETNA and AETNA U.S.
HEALTHCARE marks.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant has used the AETNA mark since
1853 in connection with a variety of insurance, financial and health care
services. Complainant first registered
the AETNA mark with the United States Patent and Trademark Office on October
30, 1923. Complainant’s current
Registration Number for its AETNA mark is 1,939,423. Complainant registered its AETNA U.S. HEALTHCARE mark on October
6, 1998 as Registration Number 2,193,408 in relation to the administration of
prepaid health care plans and indemnity plans, and underwriting medical and
health insurance, and underwriting insurance for health care services as well
as health care services in the nature of a health maintenance
organization. Complainant’s
longstanding use of the AETNA mark has created tremendous goodwill in the
United States and throughout the world.
Complainant currently holds the
registration for numerous domain names that incorporate its AETNA and AETNA
U.S. HEALTHCARE marks including: <aetna.com>, <aetna.us>,
<aetna.biz>, <aetna.info>, <aetnahealthcare.org>,
<aetnahealthcare.net>, <aetnaushealthcare.com>,
<aetnaushealthcare.info>, <aetnaushealthcare.org>,
<aetnahealth.com>, and <aetnahealth.org>. Complainant’s main website located at <aetna.com> received
over 183.5 million hits in 2001, and over 26.4 million hits in July 2002 alone.
Respondent registered the disputed domain
name on December 30, 2001. In a
communication to Complainant, Respondent stated that it had “registered the
<aetnahealthcare.com> domain name because of the traffic and
visitors,” and offered to sell the domain name to Complainant for $750. Complainant refused the offer and Respondent
replied claiming that $750 was a reasonable price because it would cost
Complainant more than $3000 for a WIPO action and take about three months to
determine the case. Respondent also
told Complainant that if it did take any legal action against Respondent, that
it would “simply deregister the domain name and let someone else register it.”
Respondent is using the disputed domain
name as a web directory. Respondent’s
website includes links to other websites, including online casinos, as well as
game and entertainment sites.
Respondent’s website at <aetnahealthcare.com> is also a
portal to other healthcare sites that directly compete with Complainant.
DISCUSSION
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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the AETNA mark and the AETNA U.S. HEALTHCARE mark through
registration with the United States Patent and Trademark Office and continuous
use.
Respondent’s <aetnahealthcare.com>
domain name is confusingly similar to Complainant’s AETNA mark because it incorporates
Complainant’s entire mark and merely adds the descriptive term “healthcare” to
the end. Complainant is involved in the
healthcare field, therefore the addition of the world “healthcare” merely
describes Complainant’s services and does not create a distinct mark capable of
overcoming a Policy ¶ 4(a)(i) confusingly similar analysis. See Space
Imaging LLC v. Brownwell, 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
Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity).
Furthermore,
Respondent’s <aetnahealthcare.com> domain name is also confusingly
similar to Complainant’s AETNA U.S. HEALTHCARE mark because it merely omits the
“U.S.” portion of Complainant’s mark.
Despite this omission, Complainant’s mark is still the dominant portion
of the mark and therefore it is not distinct from Complainant’s AETNA U.S.
HEALTHCARE mark. See
Minn. State Lottery v. Mendes,
FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com>
domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY
registered mark); see also Down
East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum
Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly
similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response. Therefore, the Panel
is permitted to make reasonable inferences in favor of Complainant and accept
Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); 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”).
Furthermore, based on Respondent’s
failure to respond, it is presumed that Respondent lacks all rights and
legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest
in the domain name because Respondent never submitted a Response nor provided
the Panel with evidence to suggest otherwise).
Respondent is using the disputed domain
name in order to divert Internet traffic to its web directory. Respondent has admitted that it registered
<aetnahealthcare.com> primarily for the web traffic it
generates. The use of a domain name in
order to cause a likelihood of confusion that directs Internet users interested
in Complainant to Respondent’s website is not considered to be 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 Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet traffic is not a legitimate use of the
domain name); see also Big Dog
Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no
legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks).
Respondent has not submitted a Response
in this proceeding. Therefore, there is
no evidence on record that establishes that Respondent is commonly known as AETNA,
AETNA HEALTHCARE or <aetnahealthcare.com>. Furthermore, based on the long established
use of the AETNA mark, and Respondent’s communications with Complainant in
regards to the domain name, it can be inferred that Respondent is not commonly
known by any variation of the AETNA or AETNA U.S. HEALTHCARE marks. See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent admitted to Complainant that
it registered the disputed domain name in order to divert Internet users
interested in Complainant to its own website.
It can be inferred that Respondent is making a profit from the Internet
traffic diverted to its website and the websites that are linked to
Respondent’s web directory. Respondent
is therefore using a confusingly similar domain name in order to create a
likelihood of confusion for its own commercial gain, and this type of use is
considered to be evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also 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).
Respondent offered the domain name for
sale to Complainant for $750.
Respondent also threatened to deregister the disputed domain name if
Complainant were to bring legal action against it. It can be inferred from this behavior that Respondent registered
the <aetnahealthcare.com> with the intent to sell its rights to
Complainant. Registration of a domain
name with the intent to sell, rent or transfer is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Little Six, Inc
v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
Respondent's offer to sell the domain name at issue to Complainant was evidence
of bad faith); see also World
Wrestling Fed’n Entmt., Inc. v. Bosman,
D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in
bad faith because he offered to sell the domain name for valuable consideration
in excess of any out of pocket costs).
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 the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <aetnahealthcare.com>
be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: October 30, 2002
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