UnitedHealth Group Incorporated v. Consumer Choice Group Services
Claim Number: FA0904001257952
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 <optumchoice.com>, registered with Network Solutions, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 17, 2009.
On April 16, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <optumchoice.com> domain name is registered with Network Solutions, Inc. and that 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 April 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 11, 2009 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@optumchoice.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the owner of multiple federally registered marks, including the OPTUM service mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,801,041, issued October 26, 1993).
Complainant uses the OPTUM mark in connection with healthcare cost management services and insurance benefit plans.
Respondent registered the <optumchoice.com> domain name on March 23,
2008.
Respondent
is using the domain name as a parked website, which for Respondent’s
commercial, by means of click-through fees, displays links that lead Internet
users to websites offering goods and services in competition with the business
of Complainant.
Respondent has no affiliation with Complainant or its OPTUM mark.
Respondent’s <optumchoice.com> domain name is confusingly similar to Complainant’s OPTUM mark.
Respondent does not have any rights to or legitimate interests in the <optumchoice.com> domain name.
Respondent registered and uses the <optumchoice.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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 has established rights in the OPTUM service mark under Policy ¶ 4(a)(i) based on the registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
See also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s domain name incorporates Complainant’s entire
OPTUM service mark, with the mere addition of the generic word “choice.” The addition of a generic term to a mark is
not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). Similarly, the
addition of the top-level domain name “.com” is irrelevant—its addition fails
to alleviate the confusing similarity between the disputed domain name and
Complainant’s OPTUM mark. See Arthur Guinness Son & Co. (
Thus the Panel finds that Respondent’s domain name is
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <optumchoice.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the domain, usually by reference to the criteria set out in Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It
is well established that, once a complainant has made out a prima facie case in
support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
See also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that, once a prima facie case has been established by a complainant, the burden then shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name).
Complainant has presented a prima facie case, while Respondent, for its part, has failed to respond to the Complaint. We are therefore entitled to conclude that Respondent does not have any rights to or legitimate interests in the disputed domain name. See, for example, Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, a respondent has failed to invoke any circumstance that would demonstrate its rights to or legitimate interests in a disputed domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent has no rights to or legitimate interests in a domain name because that respondent never submitted a response or provided the panel with evidence to suggest otherwise).
Respondent’s default notwithstanding, we elect to examine the record before us to determine if there is any basis for concluding that Respondent has rights to or interests in the contested domain name sufficient for purposes of the Policy. We approach this task be reference to the criteria set out in Policy ¶ 4(c).
In this connection, we first note that there is no evidence
in the record suggesting that Respondent is commonly known by the <optumchoice.com> domain name. Moreover, Complainant asserts, and Respondent
does not deny, that Respondent has no legitimate connection with Complpainant or
authorization to use the OPTUM mark. And,
according to Respondent’s WHOIS information, Registrant is known as “consumer
choice group services.” Thus we conclude
that Respondent is not commonly known by the <optumchoice.com> domain
name pursuant to Policy ¶ 4(c)(ii). See M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a
respondent was not commonly known by the <cigaraficionada.com> domain name
under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in
the record); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that a respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the pertinent WHOIS
information, suggesting that that respondent was commonly known by the disputed
domain name).
We next observe that there is no dispute as to Complainant’s allegation to the effect that Respondent maintains a website at the <optumchoice.com> domain name which features links to third-party websites offering services that compete with Complainant’s business. Respondent also does not deny Complainant’s allegation that Respondent benefits commercially from these links through the receipt of “click-through” fees. Such use of the <optumchoice.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See, for example, Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to direct Internet users to a financial services website which competed with the business of a complainant 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 a respondent’s use of a contested domain name to operate a pay-per-click search engine, in competition with the business of a complainant, was not a bona fide offering of goods or services).
Complainant has thus satisfied Policy ¶ 4(a)(ii).
Respondent’s use of Complainant’s OPTUM mark in the <optumchoice.com> domain name that resolves to
a parked domain with links to Complainant’s business competitors’ websites
constitutes bad faith registration and use of the domain under Policy ¶
4(b)(iii). See David Hall Rare Coins v.
Complainant alleges, and Respondent does not deny, that
Respondent is using the OPTUM mark in the disputed domain name to attract
Internet users for commercial gain in the form of click-through fees.
Such use constitutes bad faith under Policy ¶ 4(b)(iv) because Respondent
has profitted by intentionally creating a likelihood of confusion as to
Complainant’s possible endorsement of or affiliation with the disputed domain
name and resolving website. See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral fees.
Such use for Respondent’s own commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <optumchoice.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 29, 2009
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