national arbitration forum

DECISION

The TriZetto Group, Inc. v. HealthWeb

Claim Number: FA0607000743735

PARTIES

Complainant is The TriZetto Group, Inc. (“Complainant”), represented by Bryan Haynes of Locke Liddell & Sapp LLP, 2200 Ross Avenue, Suite 2200, Dallas, TX, 75201. Respondent is HealthWeb (“Respondent”), 11801 Rockville Pike #1511, Rockville, MD, 20852.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <healthweb.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically June 30, 2006; the National Arbitration Forum received a hard copy of the Complaint July 3, 2006.

On July 5, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <healthweb.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On July 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 27, 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@healthweb.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On August 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. The disputed domain name that Respondent registered, <healthweb.com>, is identical to Complainant’s HEALTHWEB mark.

2. Respondent has no rights to or legitimate interests in the <healthweb.com> domain name.

3. Respondent registered and used the <healthweb.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, The TriZetto Group, Inc., provides computer consulting and software design for the healthcare industry through the offering of various goods and services. Since at least September 1997, Complainant has been using its HEALTHWEB mark in connection with the goods and services it provides. Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for its HEALTHWEB mark (Reg. No. 2,378,396 issued August 22, 2000). Additionally, Complainant operates a website at the <healthweb.net> domain name.

Respondent registered the disputed domain name, <healthweb.com>, in 1994 but it does not currently resolve to an active website.

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 Complainant to 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 to 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 to and/or Confusingly Similar

The Panel finds that Complainant’s registration with the USPTO establishes Complainant’s rights in the HEALTHWEB mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

The Panel also finds that Respondent’s <healthweb.com> domain name is identical to Complainant’s mark as it contains Complainant’s HEALTHWEB mark in its entirety combined with the generic top-level domain (“gTLD”) “.com.” In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), the panel found the <pomellato.com> domain name identical to the complainant’s mark because the generic top-level domain “.com” after the name POMELLATO was found to be not relevant. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

However, in the instant case, Complainant’s service mark registration dates back to 2000, and Complainant asserts that its first use of the HEALTHWEB mark was in September 1997.

Respondent registered the disputed domain name in October 1994. Complainant made no offering of proof or assertions as to whether Respondent is the original registrant of the mark or a subsequent holder or registrant.

The Panel finds that Complainant failed to assert rights in the domain name that supersede the discrepancy in dates. Other cases dealt with similar situations where a respondent or an unknown third party registered a disputed domain name prior to a complainant’s establishing rights in a mark. In Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003), the panel noted that as the respondent’s registration of the <razorbox.com> domain name predated the complainant’s alleged rights (the respondent registered the disputed domain name more than two years prior to the complainant’s stated first use in commerce) the complainant did not have standing to bring a claim under the UDRP.

The Panel thus finds that since the domain name registration predates Complainant’s use of the mark in question, and since Complainant came forward with no proof to controvert Respondent’s rights based on this earlier date in time, that Complainant has not shown standing to bring the Complaint. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied).

The Panel thus finds that although the disputed domain name that Respondent registered is identical to Complainant’s HEALTHWEB mark under Policy ¶ 4(a)(i), Complainant failed to satisfy Policy ¶ 4(a)(i) by showing rights in the mark that predates Respondent’s registration of the domain name. Therefore, Complainant failed to show standing to bring the Complaint.

Having ruled in this manner on the first part of Complainant’s burden, the Panel does not reach the remaining two prongs of the burden.

DECISION

Complainant’s having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that this proceeding be and hereby is DISMISSED.

Hon. Carolyn Marks Johnson, Panelist

Date: August 17, 2006.

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