Medica Health Plans v. Medica c/o Domain Administrator
Claim Number: FA0702000919468
PARTIES
Complainant is Medica Health Plans (“Complainant”), represented by Eric D. Paulsrud, of Leonard, Street and Deinard, 150 South 5th Street, Suite 2300, Minneapolis, MN 55402. Respondent is Medica c/o Domain Administrator (“Respondent”), represented by Eric D. Paulsrud, of Leonard, Street and Deinard Professional Association 150 South Fifth Street, Suite 2300, Minneapolis, MN 55402.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <medicahealthplans.com>, registered with Nameview, Inc.
PANEL
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2007.
On February 21, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <medicahealthplans.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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@medicahealthplans.com by e-mail.
A timely Response was received and determined to be complete on March 8, 2007.
On
March 13, 2007, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed
Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Headquartered in Minnetoka, Minnesota, Complainant is a non-profit corporation, operating as both an insurance company and a managed care organization.
- Complainant first used the MEDICA mark (a coined term not found in the English language) in commerce in 1991, obtaining a United States trademark registration for the mark in 1993.
- Complainant uses it the websites found at its domain name <medica.com> and other related domain names to provide substantial services to many internet customers. Those services involve general information relating to medicine, clinical practice and patient care.
- Respondent uses the disputed domain name to create a website which will be confused with Complainant’s sites to generate click through revenue for Respondent.
- The disputed domain name in confusingly similar to Complainant’s trademark. The name combines Complainant’s mark with the generic term “health plan.”
- Respondent has no rights or legitimate interests in the mark, MEDICA, or the disputed domain name. Complainant has not licensed or permitted Respondent to use Complainant’s trademark. Respondent is not commonly known by the name. Failing to offer any good or services of its own, Respondent employs the disputed domain name to merely redirect internet traffic to other websites, which does not constitute a bona fide offering of goods or services. Those other websites are owned by direct competitors of Complainant, and it can be inferred that Respondent’s redirection is done for profit.
- Respondent has registered and is using the disputed domain name in bad faith by attracting internet users, for commercial gain, through the likelihood of confusion with Complainant’s trademark as the source.
- Complainant has created significant public recognition and goodwill with respect to its trademark. Given its actual knowledge of the mark, Respondent’s registration of an infringing domain name is evidence of bad faith.
- Respondent’s actions harm Complainant’s business.
B. Respondent
- Respondent agrees with all facts and allegations set forth in the Complaint.
FINDINGS
Complainant is a large Minnesota non-profit corporation that provides services in the fields of insurance and health care. It has used the MEDICA mark for more than fifteen years and owns a United States trademark registration in that mark (Registration No. 2,858,475, June 29, 2004), as well as other related marks.
The disputed domain name <medicahealthplans.com> was registered on March 17, 2006 by Respondent. The name is used by Respondent for a website that redirects Internet users to websites of Complainant’s competitors.
Subsequent to the filing of this Complaint, Respondent changed its name and contact information in the registrar’s database with respect to the disputed domain name to indicate that Complainant is now the owner of the same. It is unclear who Respondent is, but Complainant does not exert any control over the disputed domain name and did not register it. Respondent has apparently altered the identity of ownership in reaction to this Complaint and to frustrate a determination in this administrative proceeding. As a result, Complainant, nominally the respondent in place of the actual Respondent initially served in this proceeding, has filed a response which serves as an affirmation of this Complaint.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraphs 4(a)(i-iii) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
Complainant has presented the Panel with sufficient evidence of Complainant’s long use and valid United States registration (see Exhibit 4) of the trademark MEDICA so that the Panel has no difficulty in concluding that Complainant has rights in that trademark.
The disputed domain name, <medicahealthplans.com>, incorporates Complainant’s full mark and adds to it the generic words “health plans.” Those words are precisely descriptive of Complainant’s main business. Countless prior panels operating under the Policy have held that the addition of such words to a valid trademark do not significantly (if at all) diminish the confusing similarity between the domain name created by that addition and the trademark. See Lilly ICOS LLC v. Tailor, D2005-0580 (WIPO Aug. 16, 2005); The Gillette Co. v. RFK Assocs, FA 492867 (Nat. Arb. Forum July 28, 2005); Eastman Chemical Co. v. Manila Indus. Inc., FA 450806 (Nat. Arb. Forum May 6, 2005); Dr. Ing. h.c. F. Porsche AG v. Terkin, D2003-0888 (WIPO Jan. 6, 2004); and Space Imaging LLC v. Brownell, AF-2098 (eResolution Sept. 22, 2000). Consistent with the reasoning set forth in those prior decisions, the Panel rules that the disputed domain name is confusingly similar to Complainant’s trademark.
Thus, Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
Complainant has demonstrated its ownership of a trademark to which the disputed domain name is confusingly similar and has alleged, without contradiction, that no license or permission has been granted to Respondent to use that trademark. Having put forth the elements of a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, Complainant shifts the burden under Policy paragraph 4(a)(ii) to Respondent to prove otherwise. See Hanna-Barbera Prod., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
The Response renders Respondent no assistance in discharging its burden. Moreover, the Panel discovers no evidence elsewhere in the record that Paragraph 4(c) of the Policy – which lists conditions that might address Respondent’s burden of proof – applies in favor of Respondent on this issue. As Respondent has concealed its true identity, the Panel cannot find that the disputed domain name mirrors a name by which Respondent is commonly known, per Paragraph 4(c)(ii). Since the website located at the disputed domain name redirects Internet browsers to competitors of Complainant, the Panel finds reasonable Complainant’s uncontested allegation that Respondent charges what are akin to referral fees for doing so. Thus, Policy Paragraph 4(c)(iii), positing “non-commercial or fair use” of the disputed domain name as a rationale to sustain Respondent’s burden, fails to apply in this case. Finally, Paragraph 4(c)(i) is inapplicable because using a disputed domain name to simply redirect Internet traffic to third party competing websites is not a “bona fide offering of services or goods” for purposes of that Paragraph, as has been noted by all too many previous Policy panels. See The Royal Bank of Scotland Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006); see also Robert Bosch GmbH v. Asia Ventures, Inc., D2005-0946 (WIPO Nov.2, 2005).
For the reasons cited above, Complainant has satisfied the requirements of Policy Paragraph 4(a)(ii)
Although Paragraph 4(b) of the Policy provides four nonexclusive criteria that might sustain a finding of bad faith registration and use of a domain name, the Panel needs not consult that Paragraph since it can find no better evidence of such bad faith than Respondent’s actions in deceptively altering the record of registration in an effort to frustrate a fair proceeding to determine proper ownership of the disputed domain name. See General Commc’n, Inc. v. General Commc’n Inc., FA 778968 (Nat. Arb. Forum Oct. 4, 2006).
The Panel holds that Complainant has satisfied the requirements of Policy Paragraph 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medicahealthplans.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: March 27, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum