Molina Healthcare, Inc. v. Oleksandr Korhun
Claim Number: FA1102001375064
Complainant is Molina Healthcare, Inc. (“Complainant”), represented by Gary M. Zeiss of Molina Healthcare, Inc., California, USA. Respondent is Oleksandr Korhun (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <molinamedical.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2011; the National Arbitration Forum received payment on February 25, 2011.
On February 28, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <molinamedical.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@molinamedical.com. Also on February 28, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
1. Respondent’s <molinamedical.com> domain name is identical to Complainant’s MOLINA MEDICAL mark.
2. Respondent does not have any rights or legitimate interests in the <molinamedical.com> domain name.
3. Respondent registered and used the <molinamedical.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Molina Healthcare, Inc., owns a United States Patent and Trademark Office (“USPTO”) trademark registration for the MOLINA MEDICAL mark (Reg. No. 3,694,941 filed September 24, 2008, Pioneer Plaza, Suite 1710
900 Fort Street Mall
Honolulu, HI 96813
and issued October 13, 2009). Complainant uses this trademark in connection with its health clinics in several states throughout the U.S.
Respondent, Oleksandr Korhun, registered the <molinamedical.com> domain name on November 1, 1996. Respondent is not making any use of the disputed domain name and has offered the disputed domain name for sale for $20,000.
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 USPTO trademark registration for the MOLINA MEDICAL mark (Reg. No. 3,694,941 filed September 24, 2008 and issued October 13, 2009). The Panel finds that a USPTO trademark registration is sufficient under Policy ¶ 4(a)(i) to prove Complainant’s rights in the MOLINA MARK. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel finds the USPTO registration proves Complainant’s rights even when Respondent lives or operates outside the U.S. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that the <molinamedical.com> domain name is identical to Complainant’s MOLINA MEDICAL mark because the elimination of the space between the terms and the addition of the generic top-level domain (“gTLD”) are inconsequential changes. The Panel finds that those minor modifications do not prevent a finding that Respondent’s disputed domain name is identical to Complainant’s MOLINA MEDICAL mark. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The Panel thus concludes that Respondent’s <molinamedical.com> domain name is identical to Complainant’s MOLINA MEDICAL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In asserting that Respondent has no rights and legitimate interests in the disputed domain name, Policy ¶ 4(a)(ii) places the burden on Complainant to put forth a prima facie case against Respondent. As Respondent has effectively met this obligation, Policy ¶ 4(a)(ii) has shifted the responsibility to Respondent to show rights and legitimate interests. By defaulting, however, Respondent has presented no evidence to establish rights and legitimate interests and has not countered any of Complainant’s allegations. The Panel accordingly determines that Complainant’s allegations may be accepted as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). In the interest of making a complete determination of Respondent’s rights and legitimate interests, however, the Panel will consider all the evidence relevant to the Policy ¶ 4(c) factors.
Complainant asserts there is no evidence that Respondent uses the name MOLINA, Complainant’s trademark, or the disputed domain name in Ukraine. The WHOIS information for the disputed domain name lists the registrant as “Oleksandr Korhun,” a name which does not appear to be associated with the disputed domain name. The Panel concludes that Respondent is not commonly known by the <molinamedical.com> domain name under Policy ¶ 4(c)(ii). See Education Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also America W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant alleges that Respondent is not making any use of the <molinamedical.com> domain name. The Panel finds that Respondent’s failure to use the disputed domain name in connection with an active website indicates a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii) as it is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant also contends that Respondent offered to sell the <molinamedical.com> domain name via email correspondence for $20,000, an amount exceeding the registration costs. The Panel finds that such an offer to sell is further evidence of Respondent’s lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant filed its USPTO registration for the MOLINA MEDICAL mark on September 24, 2008. Respondent, however, registered the <molinamedical.com> domain name on November 1, 1996. Although Complainant states it has been using the MOLINA MEDICAL mark since 1980, that assertion alone is insufficient to establish secondary meaning in the mark; thus, Complainant has not shown common law rights in the mark predating Respondent’s registration of the domain name. Accordingly, Respondent’s registration of the <molinamedical.com> domain name that substantially predates Complainant’s filing and registration of its MOLINA MEDICAL mark precludes a finding of bad faith on the part of Respondent pursuant to Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
The Panel finds Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
Accordingly, it is Ordered that the <molinamedical.com> domain name REMAIN WITH Respondent.
Bruce E. Meyerson, Panelist
Dated: March 30, 2011
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