national arbitration forum

 

DECISION

 

UnitedHealth Group Incorporated v. Webmaster

Claim Number: FA0705000991993

 

PARTIES

 

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 Webmaster (“Respondent”), # 708 Charming Opulence 145-4, Daemyeong 5-dong, Nam-gu, Daegu 705801, KR.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <unitedhealthpacificare.com>, registered with Cydentity, Inc. d/b/a Cypack.com.

 

PANEL

 

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 23, 2007.  The Complaint was submitted in both Korean and English.

 

On May 25, 2007, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the National Arbitration Forum that the <unitedhealthpacificare.com> domain name is registered with Cydentity, Inc. d/b/a Cypack.com and that Respondent is the current registrant of the name.  Cydentity, Inc. d/b/a Cypack.com has verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.com 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 5, 2007, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 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@unitedhealthpacificare.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 28, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

 

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

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <unitedhealthpacificare.com> domain name is confusingly similar to Complainant’s UNITEDHEALTH and PACIFICARE marks.

 

2.      Respondent does not have any rights or legitimate interests in the <unitedhealthpacificare.com> domain name.

 

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

 

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

 

FINDINGS

 

Complainant, UnitedHealth Group Incorporated, is the 37th largest corporation in the United States according to Fortune magazine’s 2006 listing of the Fortune 500 companies.  Since 1984, Complainant has continuously and extensively used the UNITEDHEALTHCARE mark in connection with health and well-being products and services.  Complainant currently serves over 59 million Americans and annually earns over $45 billion in revenue.  Complainant has also used the UNITEDHEALTH GROUP mark since 1999 in connection with the same products and services.  Websites at the <unitedhealthcare.com> and <unitedhealthgroup.com> domain names have been in existence since 1996 and 1998, respectively.

 

In 2005, Complainant merged with PacifiCare Health Systems, Inc., creating a wholly-owned subsidiary under that name.  Through its predecessors-in-interest, Complainant has continuously and extensively used the PACIFICARE mark in reference to health care products and services since at least 1978 and has maintained a website at the <pacificare.com> domain name since 1995.

 

Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for a variety of marks containing the term “UNITEDHEALTH,” including UNITEDHEALTH GROUP (Reg. No. 2,635,728 issued October 15, 2002), UNITEDHEALTHCARE (Reg. No. 1,967,622 issued April 16, 1996), UNITEDHEALTHCARE ONLINE (Reg. No. 2,693,943 issued March 4, 2003), and UNITEDHEALTH PASSPORT (Reg. No. 2,248,887 issued June 1, 1999).  Complainant also holds registrations for the PACIFICARE mark (Reg. No. 1,323,908 issued March 5, 1985; Reg. No. 2,671,296 issued January 7, 2003) and related marks in which “PACIFICARE” is the predominant term.

 

Complainant announced its merger with PacificCare Health Systems, Inc. on July 6, 2005.  Respondent registered the <unitedhealthpacificare.com> domain name on the same day.  The disputed domain name resolves to a website offering it for sale for $5,000.  The website displays text stating:

 

We are a domain agent.  This domain is on sale for just $5000 USD now.  You can buy it for just that price without any conditions.  In case of lawsuit, it will take about 3-4 years and you have to consider more TWENTY times the money.

 

Respondent has not made any use of the disputed domain name other than to offer it for sale on this website.  When Complainant sent a cease-and-desist letter to Respondent, Respondent allegedly replied that it was willing to sell the disputed domain name to Complainant for $5,000, and that it would take legal action against Complainant in a Korean court if Complainant initiated any legal actions against Respondent.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant’s numerous trademark registrations with the USPTO for its family of UNITEDHEALTH and PACIFICARE marks sufficiently establishes its rights in the marks pursuant to Policy ¶ 4(a)(i).  See FIA Card Servs., Nat’l Ass’n v. Impulse Mktg. Group, Net OPS, FA 944261 (Nat. Arb. Forum June 18, 2007) (holding that the complainant’s trademark registrations for the PLATINUM PLUS and WORLD CLASS PLATINUM PLUS marks, which it held with the USPTO, demonstrated its rights in the marks pursuant to Policy ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Respondent’s <unitedhealthpacficare.com> domain name contains the predominant portion of Complainant’s UNITEDHEALTHCARE mark and merely omits the term “care.”  The disputed domain name also contains Complainant’s registered PACIFICARE mark and the generic top-level domain (“gTLD”) “.com.”  In Seagate Technologies LLC v. Zhanfeng, FA 635276 (Nat. Arb. Forum Mar. 10, 2006), the respondent registered the <seagate-maxtor.com> domain name on the same day that the complainant, which used the SEAGATE mark, announced a merger with a company operating under the MAXTOR mark.  The panel found that the combination of the two marks did not sufficiently distinguish the disputed domain name from the marks.  The facts of this case are similar.  Respondent registered a combination of the marks of Complainant and its merger partner as a domain name on the same day that Complainant announced the merger.  Moreover, the addition of the gTLD “.com” is a functional difference required of every domain name and therefore is irrelevant to a Poilcy ¶ 4(a)(i) analysis.  The Panel thus finds that Respondent has not sufficiently differentiated its domain name from Complainant’s marks.  As a result, the <unitedhealthpacificare.com> domain name is confusingly similar to the marks pursuant to Policy ¶ 4(a)(i).  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the <pokemonpikachu.com> domain name was confusingly similar to the complainant’s POKEMON and PIKACHU marks because the respondent combined both marks in order to form the domain name); see also Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Feb. 23, 2007) (“When assessing the similarities between the domain name and the trademark, the domain name suffix “.com” should be disregarded.”).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

According to Policy ¶ 4(a)(ii), Complainant bears the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the <unitedhealthpacificare.com> domain name.  Once Complainant establishes a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant has established a prima facie case in the instant proceeding.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations).

 

Respondent has not responded to this Complaint.  The Panel considers this as evidence that it lacks rights and legitimate interests in the <unitedhealthpacificare.com> domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”).  Nevertheless, the Panel will still consider all of the evidence in the record with respect to the elements of Policy ¶ 4(c) before it decides that Respondent does not have rights or legitimate interests.

 

There is no evidence in the record indicating that Respondent is commonly known by the <unitedhealthpacificare.com> domain name.  The WHOIS database lists “Webmaster” as the registrant, and Complainant asserts that it has not authorized or licensed Respondent to register this domain name.  Consequently, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Educ. 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).

 

Complainant contends that Respondent has not used the <unitedhealthpacificare.com> domain name since registering it in 2005 other than to offer it for sale for $5,000.  In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel held that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name.  Moreover, the panel in Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) stated, “An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”  Following the line of reasoning of the panels in these cases, the Panel in this case finds that Respondent’s offer to sell the <unitedhealthpacificare.com> domain name registration for more than its out-of-pocket registration costs 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 concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is offering the <unitedhealthpacificare.com> domain name registration for sale for $5,000, and allegedly threatened legal action against Complainant if Complainant instituted its own legal action against Respondent for the disputed domain name.  The Panel finds that Respondent’s offer to sell the disputed domain name registration to Complainant for more than its out-of-pocket registration costs, as well as its threats to Complainant, demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).

 

The Panel also finds that Respondent opportunistically engaged in bad faith registration and use by registering the <unitedhealthpacificare.com> domain name on the same day of Complainant’s formal announcement of a merger.  In Cree, Inc. v. The Domain Name You Have Entered is For Sale, FA 94790 (Nat. Arb. Forum May 25, 2000), the respondent registered domain names on the date of the complainant’s press release regarding a merger and business expansion, and the respondent immediately began offering them for sale.  The panel found that the respondent’s conduct demonstrated bad faith registration and use.  Id.  Likewise, in Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), a respondent also registered domain names combining the marks of two companies on the same day they announced a merger.  The panel stated:

 

If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that Respondent has to refute and which he has failed to do.  The Panel finds a negative inference from this.

 

In this case, therefore, Respondent’s registration and use of the <unitedhealthpacificare.com> domain name on the same day that Complainant announced a merger with PacifiCare Health Systems, Inc., now a wholly-owned subsidiary of Complainant, constitutes opportunistic bad faith under Policy ¶ 4(a)(iii).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

 

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <unitedhealthpacificare.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist

Dated: July 5, 2007

 

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