UnitedHealth Group Incorporated v. Silmaril Ltd.
Claim Number: FA0702000919451
Complainant is UnitedHealth Group Incorporated (“Complainant”), represented by Timothy
M. Kenny, of Fulbright & Jaworski, 2100 IDS
Center,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <unitedhealthcareoneline.com>, registered with Go Daddy Software, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2007.
On February 19, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <unitedhealthcareoneline.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 February 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 2007 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@unitedhealthcareoneline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2007, 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 a leader in
the health and well-being industry and currently serves over 55 million
Americans.
Complainant has revenues
exceeding $45 billion annually and is currently ranked 37th on the Fortune 500 list of
Complainant holds numerous
trademark and service marks registrations for its various UNITEDHEALTHCARE
marks, including with the United States Patent and Trademark Office (“USPTO”)
for the UNITEDHEALTHCARE ONLINE service mark (Reg. No. 2,693,943 issued March
4, 2003).
Respondent registered the disputed <unitedhealthcareoneline.com> domain name on May 19, 2004.
Respondent’s disputed domain name resolves to a website which displays hyperlinks to various third-party websites in competition with the business of Complainant.
Respondent’s <unitedhealthcareoneline.com> domain name is confusingly similar to Complainant’s UNITEDHEALTHCARE ONLINE mark.
Respondent does not have any rights or legitimate interests in the domain name <unitedhealthcareoneline.com>.
Respondent registered and uses the <unitedhealthcareoneline.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 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 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:
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’s trademark registration with the USPTO
sufficiently establishes Complainant’s rights in the UNITEDHEALTHCARE ONLINE
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 VICORP
Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005):
“Complainant has established rights in the
Complainant alleges, and we agree, that Respondent’s <unitedhealthcareoneline.com> domain name is confusingly similar to Complainant’s UNITEDHEALTHCARE ONLINE mark as it merely changes the second word of the mark from “online” to “oneline.” The addition of the letter “e” does not sufficiently distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i), nor does the addition of the generic top-level domain “.com.” See Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that a respondent’s <newbergerberman.com> domain name was confusingly similar to a complainant’s NEUBERGER BERMAN mark despite a slight difference in spelling); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the domain names <barnesandnobles.info> and <barnesandnobles.biz> are confusingly similar to a complainant’s BARNESANDNOBLE.COM mark because the additions of the letter “s” and generic top-level domain to the dominant features of a mark do not negate the confusingly similar aspects of the domain names under Policy ¶ 4(a)(i)).
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interests in the <unitedhealthcareoneline.com> domain name. Once Complainant makes 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 Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel is entitled to and does assume that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant has asserted that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the mere assertion by the complainant that a respondent does not have rights or legitimate interests in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists). However, the Panel will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <unitedhealthcareoneline.com> domain name. Moreover, the WHOIS information for the disputed domain identifies Respondent as “Silmaril Ltd.,” and the Panel finds no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Therefore, we may safely conclude that Respondent is not commonly known by the domain name <unitedhealthcareoneline.com> within the meaning of 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
We next turn to Complainant’s uncontroverted assertion that Respondent
is using the <unitedhealthcareoneline.com>
domain name to display hyperlinks to various third-party websites in
competition with the business of Complainant.
We conclude that Respondent is using Complainant’s UNITEDHEALTHCARE
ONLINE mark for its own commercial benefit, and that such use does not
constitute 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 TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that a respondent’s diversionary use of a complainant’s marks to send Internet
users to a website which displayed links, some of which linked to that
complainant’s competitors, was not a bona fide offering of goods or
services); see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2004): “Respondent’s
appropriation of the SAFLOK mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services”
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <unitedhealthcareoneline.com> domain name, which is confusingly similar to Complainant’s UNITEDHEALTHCARE ONLINE mark, is likely to cause confusion among customers searching for Complainant’s products and services. Specifically, customers may become confused as to the possible affiliation, endorsement or sponsorship of the services advertised by the links on Respondent’s website. Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to commercially benefit from such confusion between Respondent’s domain name and the goodwill associated with Complainant’s mark. We conclude that Respondent’s registration and use of the <unitedhealthcareoneline.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007): “The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.” See also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of a domain name to resolve to a website where similar services are offered to Internet users is likely to confuse users into believing that a complainant is the source of or is sponsoring the services offered at the site).
In addition, it appears that Respondent registered the <unitedhealthcareoneline.com> domain name with at least constructive knowledge of
Complainant’s rights in the UNITEDHEALTHCARE ONLINE service mark by virtue of Complainant’s prior registration of
that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <unitedhealthcareoneline.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 2, 2007
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