WIPO Domain Name Decision: D2006-0263

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Humana Inc. v. Domains Ventures

Case No. D2006-0263

1. The Parties

The Complainant is Humana Inc., a company incorporated in Delaware, United States of America, with an address at Louisville, Kentucky, United States of America. It is represented by Greenebaum Doll & Mcdonald PLLC, of Cincinnati, Ohio, United States of America.

The Respondent is Domains Ventures, with an address at Xiamen, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <humana1.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2006. On March 3, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 3, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 31, 2006.

The Center appointed Joan Clark as the sole panelist in this matter on April 13, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

According to the Whois database of Better-Whois.com, Respondent is the registrant of the contested domain name, <humana1.com>, which was created on August 16, 2003, was updated August 8, 2005, and has an expiration date of August 16, 2006.

Complainant is the registered owner of the service marks HUMANA, registered in 1984 with a declared date of first use in 1973, and HUMANAONE registered in 2003 with a declared date of first use in 2002, as well as numerous other marks containing HUMANA as a component part.

5. Parties’ Contentions

A. Complainant

Complainant divides its contentions as follows:

(a) Complainant’s Rights in HUMANA

According to the Complaint and supporting evidence, Complainant adopted and began using the mark HUMANA in 1973, and adopted and began using the mark HUMANAONE in May 2002. Complainant is the registered owner of the United States service marks HUMANA registered on November 13, 1984, for use in connection with “hospital services; healthcare services” and renewed in 2004, HUMANA registered on January 9, 1990, for use in connection with “health administration services; health insurance brokerage services; health insurance underwriting services”, HUMANAONE registered in October, 2003 for use in connection with “underwriting insurance for pre-paid health care; insurance underwriting in the field of health administration of pre-paid health care plans; organizing pre-paid health care plans”, as well as HUMANA GOLD PLAN, HUMANA GOLD PLUS, HUMANA FREEDOM, HUMANA ACTIVE OUTLOOK, HUMANAFIRST, and other marks in which HUMANA is a component part, registered for use in connection with similar services.

Complainant asserts that it is one of the United States’ largest publicly traded health benefits companies offering a diversified portfolio of health insurance products and related services, that its revenues for the year ending December 31, 2004 were U.S. $13.1 billion, and that as of September 30, 2005 it had approximately 7 million members in its medical insurance programmes and 1.7 million members in its specialty products programmes. Complainant also asserts that the HUMANA mark is a coined term, not appearing in any dictionary, and is a strong mark deserving of the greatest protection against infringing uses. It further asserts that the HUMANA mark is promoted widely through advertising in various media, including placements in major U.S. newspapers and in major U.S. magazines, as well as network and cable television spots in over twenty U.S. markets, radio spots and exhibits at numerous annual tradeshows, as well as through Complainant’s own website located at “www.humana.com”. Complainant declared its current advertising expenditures are in excess of U.S. $20 million per year, and further that Complainant owns registrations for well over 100 domain names consisting of or incorporating “humana” as the second level domain, including <humanaone.com> and <humana-one.com>.

(b) The Domain Name in Dispute is Identical or Confusingly Similar to Complainant’s Trademark

Complainant maintains that Respondent’s second level domain <humana1.com> is virtually identical to Complainant’s mark HUMANAONE different only by the substitution of the numeral “1” for the number “one”. Since “humana” and “humanaone” are coined terms, and “humana1” is merely a variant of “humanaone”, Complainant submits that the domain name in dispute is confusingly similar to a trademark in which Complainant has rights.

Complainant notes that its use of its HUMANA trademark predates Respondent’s registration of <humana1.com> by at least thirty years, and that Complainant’s use of its HUMANAONE trademark predates Respondent’s registration of <humana1.com> by more than one year. Complainant confirms it has not authorized Respondent to use or register any of Complainant’s trademarks, and declares that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Instead, according to Complainant, Respondent is using the disputed domain name in connection with a portal site offering links to the sites of Complainant’s competitors. Complainant has cited previous UDRP decisions holding that the use of a trademark as a domain name to divert traffic to a respondent’s own portal site is not a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain name. Complainant further asserts that Respondent, as far as Complainant is informed, does not operate a business under any name consisting of or incorporating “humana” or “humana1”. Complainant concludes that Respondent has no rights or legitimate interests in respect of the domain name in dispute.

(d) Respondent’s Bad Faith

Complainant asserts that Respondent’s use of the <humana1.com> domain name as a portal site offering links to the sites of Complainant’s competitors constitutes registration and use in bad faith. Complainant maintains that Respondent clearly had actual knowledge of Complainant’s rights in its HUMANA mark as Complainant is one of the many businesses referenced on the portal site links, and that Respondent’s site also links to direct competitors of Complainant, as well as to many businesses offering related though not identical goods and services, including Blue Cross Blue Shield and others. Complainant asserts that Respondent’s offering the same services through a portal site takes advantage of Complainant’s reputation, even if Respondent does not offer the same services directly.

Complainant further asserts that Respondent is diverting potential customers of Complainant to Respondent’s website by use of Complainant’s HUMANA trademark which disrupts Complainant’s business.

In addition, Complainant contends that the intentional registration and use of a domain name incorporating another party’s well-known trademark is evidence of an intentional attempt to attract, for commercial gain, visitors to the registrant’s site by creating a likelihood of confusion as to source, sponsorship or affiliation, diverting Internet traffic from Complainant’s websites to Respondent’s website, for Respondent’s own commercial benefit.

Finally, Complainant refers to decisions of previous panels which have ordered this Respondent to transfer domain name registrations which it registered in bad faith and in which it had no legitimate interest, thus indicating a pattern of behaviour in domain name disputes. Complainant states that this pattern of behaviour also includes transferring or appearing to transfer ownership of the disputed domain name once it has been placed on notice that Complainant was asserting a claim.

According to evidence produced by Complainant, the Whois database indicated Respondent herein to be the registrant of the disputed domain name on December 19, 2005, but on January 30, 2006, after Complainant had received no response to its e-mail cease and desist demand to Respondent, the Whois database indicated the registrant to be not Domains Ventures but Liberty Checks. A further accessing of the Whois database on February 6, 2006 showed the disputed domain name to be registered once again to Domains Ventures.

Complainant concludes that it has established that Respondent registered and used the domain name in bad faith.

Complainant has requested that the disputed domain name be transferred from Respondent to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, Complainant has the burden of proving that all three elements are present in the Complaint, namely:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Panel has no hesitation in finding that the domain name <humana1.com> is confusingly similar to the service mark HUMANA from which it differs only by the addition of the numeral “1”. The Panel also finds that the domain name in dispute is confusingly similar to the service mark HUMANAONE. This service mark and the domain name sound exactly the same when spoken, and in writing the letters ONE have been replaced by the numerical equivalent. It would be very easy for anyone searching for services rendered under the HUMANA or HUMANAONE marks to choose the site of the domain name in dispute instead. There is overwhelming evidence that the marks HUMANA and HUMANAONE belong to Complainant, enjoy wide use and are extensively advertised.

The Panel finds that the domain name <humana1.com> is confusingly similar to service marks in which Complainant has rights, and the first criterion for a finding in favour of Complainant has been satisfied.

B. Rights or Legitimate Interests

There is no indication in the evidence produced by Complainant that Respondent has been commonly known by the disputed domain name.

There is no indication that Respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain.

No evidence has been adduced to the effect that the domain name has been used in connection with a bona fide offering of goods or services. According to a printout of the “www.humana1.com” website produced by Complainant, Respondent’s site is a portal site in which there is no bona fide offering of goods or services but rather links are offered to the sites of Complainant’s competitors, including as an example Blue Cross Blue Shield listed among the “Popular Links” and “Geico Auto Insurance” listed among the “Sponsored Links”. Accordingly, the domain name in dispute is not used by Respondent in connection with a bona fide offering of goods or services available directly from Respondent. See America Online, Inc. v. Tencent Communications Corp., NAF Case No. 93668; Matchnet PLC v. MAC Trading, WIPO Case No. D2000-0205; Oki Data Americas, Inc. v. Albert Jackson, WIPO Case No. D2004-0087; UPIB, Inc. v. Dominion Asia Ventures, WIPO Case No. D2004-0020; American Civil Liberties Union of New Mexico v. Vilma Morales/e:bOOm, S.A., WIPO Case No. D2004-0473.

Notwithstanding the evidence adduced by Complainant indicating Respondent has no rights or legitimate interests in the disputed domain name, Respondent has chosen not to reply and not to refute these assertions. From this, the Panel is justified in drawing a negative inference from Respondent’s failure to respond. See Pivotal Corporation v. Discovery Street Trading Co. Ltd.; WIPO Case No. D2000-0648; Matchnet PLC , supra; Oki Data, supra; UPIB, Inc., supra.

The Panel concludes Complainant has established that Respondent has no rights or legitimate interests in respect of the domain name. The second criterion for a finding in favour of Complainant has been satisfied.

C. Registered and Used in Bad Faith

The Panel finds that, by registering and using the domain name in dispute, which is confusingly similar to Complainant’s service marks aforesaid, Respondent has intentionally attempted to attract to its website Internet viewers believing they were accessing Complainant’s website, and then diverted them to other sites. Using a confusingly similar domain name to direct users to unrelated advertisements is classic bad faith. See Backstreet Productions, Inc. v. John Zuccarini, Cupcake Party, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654 and Society for Human Resource Management v. Local Services ICN, WIPO Case No. D2004-0127. By using the domain name in dispute to resolve to other websites offering services similar to those provided by Complainant, Respondent has intentionally attempted to attract Internet users to another online location, creating a likelihood of confusion with Complainant’s marks as to sponsorship, affiliation or endorsement of its website or location. See Sanofi-Aventis Billionnaire Club, WIPO Case No. D2004-0805; Nokia Corporation v. Private, WIPO Case No. D2000-1271. There is a reasonable presumption, which has not been refuted by Respondent, that this was done for commercial gain.

To the extent Respondent’s registration of its domain name, which is confusingly similar to Complainant’s service marks, has been successful in directing Internet users to Respondent’s web site, Respondent has disrupted Complainant’s business. This is further indication that the domain name was registered and used in bad faith.

Respondent’s registration of its domain name, confusingly similar to Complainant’s service marks, prevents Complainant from reflecting its marks in a corresponding domain name. There have been cases in the past where Respondent has been held to have registered in bad faith domain names confusingly similar to third parties’ marks, from which the Panel infers a pattern of such conduct. See Winshape Centre, Inc. v. Domains Ventures, WIPO Case No. D2005-0885; Universal City Studios LLLP v. domains, Ventures, WIPO Case No. D2005-0964; My Diamond Place, Ltd. v. Domains Ventures, WIPO Case No. D2005-1276. This pattern of conduct is consistent with the finding that the domain name in this case was registered and used in bad faith. See Backstreet Productions, Inc., supra.

The Panel concludes that Respondent has registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <humana1.com> be transferred to Complainant.

Joan Clark
Sole Panelist

Dated: April 27, 2006