Universal American Corp. v. TaeYoung.Jung
Claim Number: FA0909001283406
Complainant is Universal American Corp. (“Complainant”), represented by Karen A. Kovacs, of Dickinson Wright, PLLC, Washington, D.C., USA. Respondent is TaeYoung.Jung (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <todaysoption.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 9, 2009. The Complainant was submitted in both English and Korean.
On September 9, 2009, Korea Information Certificate Authority, Inc. d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <todaysoption.com> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com and that Respondent is the current registrant of the name. Korea Information Certificate Authority, Inc. d/b/a Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.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 22, 2009, a Korean Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 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@todaysoption.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2009, 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.
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <todaysoption.com> domain name is confusingly similar to Complainant’s TODAY’S OPTIONS mark.
2. Respondent does not have any rights or legitimate interests in the <todaysoption.com> domain name.
3. Respondent registered and used the <todaysoption.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Universal American Corp., operates a health insurance company. Complainant uses its TODAY’S OPTIONS mark to administer a private fee-for-service health insurance plan. Complainant holds a registration of its TODAY’S OPTIONS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,977,674 issued July 26, 2005).
Respondent, TaeYoung.Jung, registered the disputed domain name on August 23, 2006. The disputed domain name resolves to a website that displays links to Complainant’s competitors as well as Complainant’s TODAY’S OPTIONS mark and the name of Complainant’s subsidiary.
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 owns a trademark registration for TODAY’S
OPTIONS mark with the USPTO (Reg. No. 2,977,674 issued July 26, 2005). The Panel finds that Complainant has
established rights in the TODAY’S OPTIONS mark for purposes of Policy ¶
4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum
July 12, 2006) (finding that the complainants had established rights in marks
where the marks were registered with a trademark authority); see also Paisley Park Enters. v. Lawson, FA
384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had
established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through
registration of the mark with the USPTO).
Respondent’s disputed domain name is confusingly similar to Complainant’s TODAY’S OPTIONS mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains Complainant’s mark in its entirety, omits the space, the apostrophe, and the letter “s,” as well as adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations do not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the Complaint, the Panel finds that Complainant has established a prima facie case in support of its assertions and Respondent has failed to submit a response to these proceedings. Nevertheless, the Panel will examine the record in light of Policy ¶ 4(c) to determine if Respondent has rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
The WHOIS information lists Respondent as TaeYoung.Jung, evidence that Respondent is not commonly known by the disputed domain name. Complainant contends Respondent is not authorized in any manner to use its TODAY’S OPTIONS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
Respondent’s disputed domain name
resolves to a website offering third-party links to websites competing with
Complainant. The Panel finds that
Respondent’s use of the disputed domain name is not a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s]
SAFLOK mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
Respondent’s website resolving
from the disputed domain name contains marks and logos for Complainant and
Complainant’s subsidiary. The Panel
finds this is an attempt by Respondent to pass itself off as Complainant,
further evidence Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v.
Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the
respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name); see also Nokia
Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008)
(finding the respondent’s use of the disputed domain name to pass itself off as
the complainant in order to advertise and sell unauthorized products of the
complainant was not a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed
domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s operation of a website displaying links to third-party websites in direct competition with Complainant’s insurance business is a disruption of Complainant’s business; this constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); 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)).
Respondent’s is using the confusingly similar disputed domain name in order to intentionally attract Internet users to its website by creating a strong likelihood of confusion with Complainant’s TODAY’S OPTIONS mark. The Panel finds Respondent presumably profits from this use through the receipt of click-through fees for the links to third-party websites on the resolving website. Thus, Respondent is attempting to profit from the likelihood of confusion through bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Furthermore, Respondent is attempting to profit by passing itself off as Complaint through its use of Complainant’s logos, marks and subsidiary company names on the resolving website. The Panel finds that Respondent’s attempt to pass itself off as Complainant is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The Panel finds 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 <todaysoption.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 26, 2009
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