WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Humana Inc. v MGA Enterprises Limited and Domains by Proxy Inc.
Case No.�D2006-1405
1. The Parties
The Complainant is Humana Inc. of Louisville, Kentucky, United�States�of�America, represented by Greenebaum Doll & Mcdonald PLLC, United�States�of�America.
The Respondents are MGA Enterprises Limited of Derby, England, United�Kingdom and Domains by Proxy Inc. of Scottsdale, Arizona, United�States�of�America.
2. The Domain Names and Registrar
The disputed domain names are , , and , all of which are registered with GoDaddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on November�3,�2006. The filed Complaint named Domains by Proxy Inc. as the Respondent, attaching a print out of the applicable “Whois” information dated October 22, 2007 indicating that entity as the listed registrant for the domain names at issue. On November�7,�2006, the Center transmitted by email to GoDaddy Software, Inc. a request for registrar verification in connection with the domain names at issue. On November�9,�2006, GoDaddy Software, Inc. transmitted by email to the Center its verification response indicating MGA Enterprises Limited as the listed registrant for the domain name , and providing contact details. On November�9,�2007 the Center requested a verification response from the registrar in relation to the disputed domain names , , and . On the same day, the registrar transmitted by email to the Center a response indicating MGA Enterprises Limited as the listed registrant for the disputed domain names , and , and providing contact details. In relation to the domain name , the registrar indicated Standard Tactics LLC as registrant, and provided contact details.
On November�13,�2006, the Center sent an email to the Complainant stating that the registrants of record in the above referenced proceeding have been identified by the concerned registrar as being different to the entity named in the Complaint as Respondent, providing the information received, and requesting a corresponding amendment to the Complaint.
On November�16,�2006, the Complainant submitted an amendment to the Complaint by email requesting that MGA Enterprises Limited and Standard Tactics LLC be added as a respondent.
On November�27,�2006, the Complainant transmitted a request for suspension of the proceedings. On November�28,�2006, the Center suspended the proceedings until December�28,�2006. On December�22,�2006, the Complainant submitted a request by facsimile to end the suspension of the proceedings, and indicating that a settlement agreement had been reached in relation to the domain name . In light of this, the Center requested the Complainant submit an appropriate further amendment to the Complaint on January�4,�2007. On the same day, the Complainant submitted an amendment to the Complaint excluding the domain name from the Complaint.
The Center verified that the Complaint, together with the amendments to 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 the Respondents of the Complaint and the proceedings commenced on January�8,�2007. The “Whois” information on January�8,�2007, indicated MGA Enterprises Inc as the listed registrant of record for the disputed domain names. On the same date, the Respondents were also notified by the Center of the recommencement of the proceedings. In accordance with the Rules, paragraph�5(a), the due date for a Response was January�28,�2007. On January�8,�2007 the Respondent sent an email communication to the Center indicating a willingness to the settle the matter, which the Center acknowledged on the same date. No further communications were received from the Respondents. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents’ default on January�29,�2007.
The Center appointed John Swinson as the sole panelist in this matter on February�5,�2007. 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
The Complainant is a large publicly traded United States health benefits company, with approximately 9 million medical members. The Complainant offers coordinated health insurance coverage and related services to employer groups, government-sponsored plans, and individuals. The Complainant owns (or its related entities own) at least the following registered trademarks:
United States Registrations
Registration No.
Year of Registration
Registered Mark
Services Registered
1305479
1984
HUMANA
International Class 42:
Hospital Services, Healthcare Services
1576782
1991
HUMANA
International Classes 36 & 42: Health Insurance Administration Services, Health Insurance Brokerage Services & Health Insurance Underwriting Services, Health Care Services through Health Maintenance Organizations including Physician Services, Hospital Services and other ancillary health care services
3116497
2006
HumanaChoicePPO
International Classes 36 & 44: underwriting, organizing and administration of health insurance plans, dental plans, and drug plans, underwriting, organizing and administration of preferred provider health care plans, dental plans, and drug plans and preferred provider health care plans, dental plans and drug plans for Medicare enrollees
2794503
2003
HUMANA GOLD CHOICE
International Classes 36 & 44: underwriting, organizing, and administration of pre-paid health care, dental, vision and prescription drug services and plans: health, dental and life insurance underwriting services”, “health care services in the nature of health maintenance and preferred provider organizations, dental, vision and prescription drug programs’.
2677290
2003
HUMANA GOLD CLASSIC
International Class 44: Health Care Services, Health Care Services in the Nature of Health Maintenance and Preferred Provider Organization, Prescription Drug Programs and Health Management Organizations.
1566321
1989
HUMANA GOLD PLAN
International Class 36: Insurance administration services, insurance brokerage services, health insurance underwriting services.
Note originally registered in respect of International Class 42 but this has been cancelled.
2180789
1998
HUMANA GOLD PLUS
International Class 42: Health Care Services in the nature of health maintenance organizations as a substitution or replacement for Medicare.
3207633
2007
HUMANA MILITARY
International Classes 35 & 44: Management of the health benefit plans for others, physical referrals and providing health care information, and providing information about nutrition, wellness, fitness and health habits, health maintenance organizations and preferred provider organizations services to beneficiaries and providers in the field of health care and prescription drugs, disease management services.
5. Parties’ Contentions
A. Complainant
In summary, the Complainant contends that:
(a) The Respondents have improperly registered the domain names the subject of this dispute.
(b) The Complainant has been using the trademark HUMANA since 1973 in the United States and HUMANA is a strong mark deserving of the greatest protection.
(c) The term HUMANA has no dictionary meaning and is a coined word.
(d) In respect of the domain name , the addition of the words “drug plan” are purely generic in nature.
(e) The Complainant has used the mark HUMANA GOLD CLASSIC since 1999.
(f) The domain name is identical to the Complainant’s HUMANA GOLD CLASSIC mark and also incorporates the well known mark HUMANA.
(g) The Complainant has used the term HUMANA MILITARY as a mark in commerce since 1993. An entity related to the Complainant, Humana Military Healthcare Services, Inc., owns the trademark registration for HUMANA MILITARY (listed above). The domain name is almost identical to this mark and the company name Humana Military Healthcare Services, Inc. In addition, the domain name incorporates the Complainant’s HUMANA marks.
(h) The domain name incorporates the HUMANA mark. The term “pdpcomplete” (prescription drug plan complete) is an inessential aspect of the domain name.
(i) The Complainant has been using the HUMANA mark for at least 32 years longer than the registration of the domain names. Similarly, the use of the other marks all predate the registration of the disputed domain names.
(j) No authorization has been provided on the part of the Complainant for the Respondents to use any of the Complainant’s trademarks.
(k) The Respondents have not used the disputed domain names for a bona fide offering of goods or services, but rather to provide a site that provides for links to the Complainant’s competitors. Accordingly, this is not a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the disputed domain names.
(l) The Respondents did not operate any businesses under any name that consisted of any of the disputed domain names.
(m) The Respondents have used the disputed domain names in bad faith. The websites at the disputed domain names provide links to the Complainant’s competitors.
(n) The Respondents were aware of the strong reputation of the HUMANA brand.
(o) The Respondents took advantage of the Complainant’s good reputation and that even if confusion was generated, this also benefited the Respondents by generating click-through commissions.
(p) The registration of the disputed domain names was predominantly to achieve disruption of the business of a competitor. Internet traffic was diverted through confusion and that is itself evidence of bad faith.
(q) The use of the word HUMANA in the disputed domain names with only generic matter added to it diverts internet traffic from the Complainant’s websites to MGA Enterprises Limited’s websites. This was solely for MGA Enterprises Limited’s commercial benefit and opportunistic bad faith.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph�4(a) of the Policy have been satisfied:
(i) the domain names in dispute are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has valid trademark rights in respect of HUMANA, HUMANA GOLD CLASSIC and a family of marks with the word HUMANA relating to healthcare.
The Complainant has demonstrated that its HUMANA mark has a well established reputation in the United States, having been used since 1973. Additionally, evidence was tendered of the major consumer recognition of the HUMANA brand as a health benefit company, providing a portfolio of insurance products to employer groups, government-sponsored programs and individuals. The company has profits of 14.4�billion per year and currently has 9.3 million members in medical insurance programs and 1.9 million members in specialty products programs. The HUMANA brand is heavily promoted through various media across the United States.
The domain name is identical to a registered mark of the Complainant except for the addition of “.com”.
In respect of , the use of the Complainant’s mark HUMANA is married with the more generic words “drug” and “plan”. The domain name is confusingly similar to the HUMANA mark. See Dell Inc. v. Esprit7258, WIPO Case No.�D2004-1026.
In the instance of , this disputed domain name incorporates the Complainant’s mark HUMANA with the generic words “military” and “healthcare”. This disputed domain name is confusingly similar to the Complainant’s HUMANA mark.
Finally, in respect of the disputed domain , this disputed domain name incorporates the Complainant’s mark HUMANA with the term “pdp” and the word “complete”. The term “pdp” stands inter alia for “prescription drug plan”. This disputed domain name is confusingly similar to the Complainant’s HUMANA mark.
Therefore, the Panel finds that the Complainant has established the first element of the Policy for each of the disputed domain names.
B. Rights or Legitimate Interests
The Respondents had the opportunity to respond and present evidence but chose not to do so. The Complainant is not entitled to relief simply by default, but the Panel can and does draw evidentiary inferences from the failure to respond.
In light of the failure by either respondent to submit a Response, the Panel has considered the available evidence to determine if the Respondents lack rights and a legitimate interest in the domain name.
There is no available evidence that the Respondents are commonly known by either HUMANA, HUMANAGOLDCLASSIC, HUMANAMILITARY, HUMANADRUGPLAN or HUMANAPDPCOMPLETE. The current registrant of the disputed domain names is MGA Enterprises Limited. The registrant at the time the Complaint was first submitted was Domains by Proxy Inc. The disputed domain names bear no resemblance to the name of either Respondent.
The Complainant has not authorized the Respondents to use the trademarks in which it has rights.
The Panel visited the websites the subject of this dispute on February�14,�2007, and again on February�22,�2007. There was no website displayed for . In the case of the other disputed domain names, a webpage was displayed that contained links to third-party websites and other content. A vast majority of the links were to websites containing offers for health insurance, pharmaceuticals and the like. The links in some instances were to websites of companies in competition with the Complainant. The Panel presumes that the Respondents receive fees from advertising these third-party links or from when a user clicks on these links.
The Panel finds that this is not a bona fide offering of goods and services pursuant to the Policy, nor is it a legitimate non commercial fair use within the meaning of paragraph�4(c)(iii) of the Policy. See Teledyne Technologies Incorporated v. Digi Real Estate Foundation, WIPO Case No.�D2006-1054.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in relation to the disputed domain names.
C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph�4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith.
At the time the Complainant submitted the Complaint to the Center, Domains by Proxy Inc. was listed as the registered owner. However when the Center sought verification of this information from the concerned registrar, the registered owner was listed as MGA Enterprises Limited.
Transfer of the registration of a disputed domain name after the commencement of an administrative proceeding is “cyberflighting” and is indicative of bad faith. This may amount to a breach of paragraph�8(a) of the Policy which forbids transfers during a UDRP proceeding. See Merck KGaA v. Taha Chhipa, WIPO case No.�D2004-0905.
In this case, there appears to have been a transfer of the disputed domain names between the time of the Center receiving notification of the Complaint and the time of verifying the Complaint. Although the change in registrant information apparently occurred prior to formal commencement of the proceedings, the timing of the change suggests something more than mere coincidence. On balance, the Panel considers it likely that the change was made in response to the filing of the Complaint with the Center, and/or subsequent emails copied to the parties regarding the Complaint.
While the precise nature of the relationship between Domains by Proxy Inc. and MGA Enterprises Limited remains unclear, previous panels have, in similar situations, been prepared to proceed on the basis that both are respondents. The Panel in this case will proceed on that basis. Accordingly, the Panel finds that Domains by Proxy Inc. (“the transferor”) and MGA Enterprises Limited (“the transferee”) should both be joined as Respondents for the purpose of the administrative proceeding.
MGA Enterprises Limited’s use of the disputed domain names , and , relies in all probability on the expectation that a proportion of internet users who searched the internet using the Complainant’s trademarks would be tricked into visiting a website at one of these disputed domain names. Visitors are then directed to other websites offering competing goods and services. It is inferred that MGA Enterprises Limited gains a financial revenue stream from this activity. See The Vanguard Group, Inc. v. Lorna King, WIPO Case No.�D2002-1064.
The lack of active use of will not prevent a finding of bad faith in this case. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003. The Complainant’s mark has a strong reputation and is widely known in the United States. The Respondents have provided no evidence whatsoever of any actual or contemplated good faith use. On this basis, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by MGA Enterprises Limited that would be legitimate and not bad faith.
The Panel finds that the Respondents have registered and MGA Enterprises Limited is using the disputed domain names in bad faith. Accordingly, the Panel finds that the Complainant has satisfied paragraph�4(c) of the Policy in relation to the disputed domain names.
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 names , , and , be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: February�23,�2007
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