UnitedHealth Group Incorporated v. United Hosting Services SA
Claim Number: FA0605000717327
Complainant is UnitedHealth Group Incorporated (“Complainant”), represented by Timothy M. Kenny, of Fulbright & Jaworski, 2100 IDS Center, 80 S. Eighth Street, Minneapolis, MN 55402. Respondent is United Hosting Services SA (“Respondent”), MZ H Lote 19 Enace, Carabayllo, Lima LIMA06, PE.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <unitedhealthquotes.com> and <unitedhealthrx.com>, registered with Domaindiscover.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2006.
On May 30, 2006, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <unitedhealthquotes.com> and <unitedhealthrx.com> domain names are registered with Domaindiscover and that Respondent is the current registrant of the names. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 June 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 22, 2006 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@unitedhealthquotes.com and postmaster@unitedhealthrx.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <unitedhealthquotes.com> and <unitedhealthrx.com> domain names are confusingly similar to Complainant’s UNITEDHEALTH GROUP mark.
2. Respondent does not have any rights or legitimate interests in the <unitedhealthquotes.com> and <unitedhealthrx.com> domain names.
3. Respondent registered and used the <unitedhealthquotes.com> and <unitedhealthrx.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, UnitedHealth Group Incorporated, consists of a highly diversified family of companies offering health and well-being services, and currently serves over fifty-five million people in the United States. Complainant utilizes several registered marks in connection with its offering of health care services, including the UNITEDHEALTH GROUP mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on October 15, 2002 (Reg. No. 2,635,728). Complainant also holds a valid trademark registration for the UNITEDHEALTH GROUP mark in Peru, the country in which Respondent resides.
Respondent, United Hosting Services SA, registered the <unitedhealthquotes.com> domain name on June 27, 2003, and registered the <unitedhealthrx.com> domain name on September 23, 2004. Respondent’s <unitedhealthquotes.com> domain name previously resolved to a website declaring that the website was the “placeholder” for the disputed domain name. Currently, the <unitedhealthquotes.com> domain name resolves to a website that is inaccessible to Internet users. Respondent’s <unitedhealthrx.com> domain name does not resolve to an active website.
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 asserts and provides evidence of federal trademark registrations for the UNITEDHEALTH GROUP mark with the USPTO, as well as trademark registrations for the mark in Peru, the country in which Respondent resides. Consequently, the Panel finds that Complainant’s trademark registrations establish its rights in the UNITEDHEALTH GROUP mark pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Universing, D2002-0723 (WIPO Sept. 20, 2002) (finding that the complainant had rights in the UNITEDHEALTH GROUP mark under Policy ¶ 4(a)(i) in light of the complainant’s trademark registration and use of the mark in connection with healthcare services); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the Untied States Patent and Trademark office (‘USPTO’)… .”).
The Panel finds that Respondent’s <unitedhealthquotes.com> and <unitedhealthrx.com> domain names are confusingly similar to Complainant’s UNITEDHEALTH GROUP mark pursuant to Policy ¶ 4(a)(i). Both of Respondent’s disputed domain names consist of the dominant features of Complainant’s UNITEDHEALTH GROUP mark with the addition of the terms “quotes” and “rx,” respectively, and the generic top-level domain (“gTLD”) “.com.” In Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000), the panel found that given the similarity of the complainant’s marks with the domain name, consumers will presume the domain name was affiliated with the complainant. As a result, the panel held that the respondent was attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, or endorsement of the respondent’s website. Moreover, in Am. W. Airlines v. domainchronicle, FA 222038 (Nat. Arb. Forum Feb. 11, 2004), the panel found that the respondent’s <americawestairways.com> domain name was confusingly similar to the complainant’s AMERICA WEST AIRLINES mark because the respondent’s domain name still described the complainant and its specific air travel services. Last, according to the panel in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the Panel finds that Respondent’s <unitedhealthquotes.com> and <unitedhealthrx.com> domain names are confusingly similar to Complainant’s UNITEDHEALTH GROUP mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially bear the burden of demonstrating that Respondent lacks rights and legitimate interests in the disputed domain names. Nevertheless, once Complainant sufficiently demonstrates a prima facie case, the burden then shifts to Respondent to prove that it has rights or legitimate interests in accord with Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has established a prima facie case and will determine whether Respondent has rights or legitimate interests with regard to the <unitedhealthquotes.com> and <unitedhealthrx.com> domain names pursuant to Policy ¶ 4(c) based on the evidence on record.
The Panel finds that the evidence on record does not indicate that Respondent is commonly known by the <unitedhealthquotes.com> or <unitedhealthrx.com> domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information for the disputed domain names suggests that Respondent is known as “United Hosting Services SA.” Moreover, the evidence on record is devoid of any indication that Respondent is a licensee of Complainant, or an authorized user of Complainant’s UNITEDHEALTH GROUP mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See U.S. Postal Serv. v. Rocky Prod., FA 679542 (Nat. Arb. Forum May 22, 2006) (finding that the respondent’s WHOIS information, and the absence of any authorization or license for the respondent to register domain names utilizing the complainant’s registered mark, indicate that the respondent was not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii)); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Respondent’s <unitedhealthrx.com> domain name does not resolve to an active website. Moreover, Respondent’s <unitedhealthquotes.com> domain name formerly resolved to a non-descript website indicating that it was the “placeholder” for the disputed domain name, and currently resolves to a website that is inaccessible. In Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000), the panel did not find any 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. Similarly, the panel in Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000), found that the respondent did not have rights or legitimate interests in the domain name where there was no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent was not commonly known by the domain name. Thus, in the instant case, the Panel finds that Respondent’s nonuse of the <unitedhealthquotes.com> and <unitedhealthrx.com> domain names does not constitute 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has held the domain name registration for the <unitedhealthquotes.com> domain name for one-and-a-half years, and the domain name registration for the <unitedhealthrx.com> domain name for at least three years. Additionally, Complainant avers and provides evidence indicating that Respondent has not used, nor made any demonstrable preparations to use the <unitedhealthquotes.com> and <unitedhealthrx.com> domain names. According to the panel in Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000), a respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii). Moreover, the panel in Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), found that merely holding an infringing domain name without active use can constitute use in bad faith for a respondent. Therefore, in light of Respondent’s nonuse and passive holding of the disputed domain name registrations, the Panel finds that Respondent registered and used the <unitedhealthquotes.com> and <unitedhealthrx.com> domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that 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 <unitedhealthquotes.com> and <unitedhealthrx.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 7, 2006
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