WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Humana Inc. v. CDN Properties Incorporated Case No. D2008-1688 1. The Parties
The Complainant is Humana Inc., of Louisville, United States of America, represented by Greenebaum Doll & Mcdonald PLLC, United States of America.
The Respondent is CDN Properties Incorporated, of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2008. On November 6, 2008, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On November 6, 2008, Dotster, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 10, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent CDN Properties Incorporated of the Complaint, and the proceedings commenced on November 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 10, 2008.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 18. 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 health insurance company based in the United States which uses the trademark HUMANA in connection with its services.
The Complainant has incontestable rights, for its United States trademark Registration No. 1,305,479 for HUMANA, in connection with “hospital and healthcare services”, in International Class 42; and for United States trademark Registration No. 1,576,782 for HUMANA in connection with “health insurance administration services; health insurance brokerage services; health insurance underwriting services” in International Class 36, and “health care services through health maintenance organizations including physician services, hospital services and other ancillary health care services” in International Class 42.
The Complainant owns U.S. Trademark Registration No. 3,144, 451 for HUMANA, in connection with publications, in international class 16, and under international class 41 for educational services. The Complainant also owns several other registrations for variations of its HUMANA mark with design in the United States and in other jurisdictions such as Puerto Rico, and the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name was initially registered on October 6, 2003. 5. Parties' Contentions A. Complainant
The Complainant contends that it is one of the United States' largest publicly traded health benefit companies, which offers a variety of health insurance products and services. The Complainant states its revenue for the year ending December 31, 2007, was approximately USD 25.3 billion and it has about 11.5 million members in its medical insurance programs as of September 30, 2008.
The Complainant claims the use of its HUMANA mark can be traced back from the year 1973. The mark, asserts the Complainant, is a strong mark deserving a high level of protection, as HUMANA is a coined term and not a dictionary word.
The Complainant states its HUMANA mark is widely promoted through advertising in various media, including, newspapers in the United States such as The Chicago Tribune, Denver Post, Atlanta Journal, Dallas Morning News, Wall Street Journal; regional placements in the United States magazines such as Business Week , Forbes, Fortune, Small Business, Inc., and Money; network and cable television spots in Atlanta, Chicago, Huston, Indianapolis, Louisville; and exhibits at about 35 tradeshows annually, with over 10,000 attendees and through its own website located at .
The Complainant states its advertising expenditure is in excess of USD 91 million per year and the HUMANA mark is also publicized through co-promotions with other organizations such as the PGA Tour, Champions Tour, and National Thoroughbred Racing Association, and Actors Theatre of Louisville.
In addition to Complainant's own promotion of its mark, the mark gets media attention both in the United States and globally through unsolicited media coverage such as press releases, radio, and television. The Complainant states it is the owner of over three hundred domain names consisting of its HUMANA mark, which include among others, and . The Complainant claims its website , has received as many as 20,877,528 visits.
The Complainant argues that the disputed domain name is confusingly similar to famous mark, in which it has rights. The only difference between the mark and the domain name is the prefix “www”, which has been found to be non-distinctive in previous cases: Berlitz Inv. Corporation v. Marcus Santamaria,WIPO Case No. D2006-1082 and CTV Television Incorporated v. ICANANDA CO.WIPO Case No. D2000-1407.
The Complainant contends that the Respondent lacks rights or legitimate interests in the domain name for the reasons. The Complainant's use of the HUMANA trademark predates the Respondent's registration of the domain name by about thirty four years. The Complainant has not authorized the Respondent to use or register its trademarks. The Complainant believes the Respondent has no business entity under the name of “Humana” or “wwwhumana” and does not use the disputed domain name in connection with a bona fide offering of goods or services, or for any noncommercial, fair use purposes, but uses it to divert Internet users to its own portal site, which is not a legitimate use of the domain name.
The Complainant states the Respondent has registered and used the domain name in bad faith, as the Respondent's website has links to divert users to other competitor sites and to pornographic sites. The Complainant further states that the Respondent has attempted to disrupt its business by diverting Internet traffic through a likelihood of confusion with the Complainant's mark and thereby gains from click-through commissions. The Complainant refers to several cases in which the former registrant, Zerbo, has been named as Respondent and found to have registered numerous domain names by adding the prefix “www” to well-known trademarks. The Complainant cites a previous UDRP dispute where the present registrant has been involved, and states that both the former registrant and the current registrant of the disputed domain name, have engaged in a pattern of registering domain names that prevent the trademarks owners from registering and using such corresponding domain names. The Complainant requests for the transfer of the domain name. Complainants' contentions in the amended complaint
The Complainant contends it first came to know of the disputed domain name in July 2008, when it was registered under the name SZK.COM. It was transferred from SZK.COM to Zerbo in August 2008. On the date of filing the Complaint, November 4, 2008, the registrant of the disputed domain name Zebro, was served with a copy of the complaint on the very same day (by Federal Express courier). On November 6, 2008, the records showed that the disputed domain name had been transferred to CDN Properties Inc.
The Complainant alleges that CDN Properties Inc., and Zebro have engaged in cyberflight. The Policy paragraph 8(a) prohibits the registrant of the domain name from transferring the domain name during a pending administrative proceeding. When a complaint has been filed and a copy served to the interested parties, a proceeding is considered to be pending, and according to the Complainant, the registrar is obligated to maintain status quo of the domain name registration. Group Kaitu, LLC , Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Industries, Inc., WIPO Case No. D2005-1087.
The Complainant argues that “cyberflight” can result in the cancellation of the domain name transfer and that it constitutes evidence of bad faith registration and use of the domain name. The Complainant has referred to the cases: PNY Technologies, Inc. v. Domain Buyer,WIPO Case No. D2007-1690; Kostritzer Schwartzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Cyberflight
“Cyberflight” is described as an attempt to delay a UDRP proceeding by changing the domain name registration details or registrar after learning of the complaint. See PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM),WIPO Case No. D2006-0917. Cyberflight can occur either before the filing of a complaint, or after filing of the complaint and the interested parties to the dispute have been served copies of the case documents. The first type of cyberflight could typically be in direct response to a cease and desist letter, such as in Fifth Third Bancorp v. Secure Whois information Services, WIPO Case No. D2006-0696. Such cyberflight is likely to indicate bad faith, although it is not in direct violation of paragraph 8(a) of the Policy. In the present case, the transfer between SZK.COM and Zerbo, is an example of the first type of cyberflight.
The second type of cyber flying occurs when the domain name is transferred during a pending proceeding and is in direct violation of the Policy paragraph 8 (a). Although there is no a bright line rule regarding what constitutes a “pending proceeding”, prior cases have found that process starts from the filing of the complaint rather than from the formal commencement of the proceedings. See PREPADOM v. Domain Drop S.A.,WIPO Case No. D2006-0916 or Imperial Chemical Industries, PCL. v. Oxford University,WIPO Case No. D2001-0292.
Under paragraph 8(a) of the Policy, the registrant is expressly prohibited from transferring the domain name during a pending proceeding. Yet, cyberflight has been found in cases when registrant changes have occurred after the complaint is filed but before the registrar's verification of contact information to the service provider. See CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited/ SA c/o FP, WIPO Case No. D2008-0687 and R India Ltd. v. Laksh Internet Solutions Private Limited, WIPO Case No. D2008-0804. Despite such serious violations of the Policy, a panel under the UDRP does not have the power to cancel such transfers. See Kostritzer Schwartzbierbrauerei, supra.
On assessing the facts put forward by the Complainant, all of which have been supported by documentary evidence, the Panel is convinced that it clearly establishes the latter variety of cyberflight. The transfer of the domain name, in the present case was made upon receipt of filing the Complaint and after the documents were served on the interested parties, which is in gross violation of the provisions of the Policy, paragraph 8(a). The Panel is convinced that bad faith has been established due to cyberflight in the present case, for the reasons discussed below and as the transfer to another party was made after having received a copy of the Complaint. See A.H. Belo Corporation v. King TV and 5 Kings,WIPO Case No. D2000-1336. The Panel would also query why the registrar apparently allowed the transfer of the disputed domain name registration after having confirmed to the Center that the domain name was on lock status. For purposes of discussion of the Policy elements, the Panel shall therefore treat both the former registrant and the present registrant as Respondents in this proceeding.
Turning to the merits of the case, the Complainant is required to prove three essential elements under paragraph 4(a) of the Policy to obtain the requested remedy of the disputed domain name. These are:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant, under paragraph 4(a)(i) of the Policy has to establish that the disputed domain name is identical or confusingly similar to a mark in which it has rights.
The Panel finds that the Complainant has furnished ample evidence of its use of the HUMANA mark from the year 1973. The Complainant has also furnished trademark registration certificates for its marks, which is conclusive proof of its rights in the HUMANA marks.
The Panel recognizes that the Respondent has created a domain name which uses the Complainant's mark in a deceptively similar manner. The only difference between the mark and the domain name is the addition of the prefix “www” and the gTLD identifier “.com.” The gTLD designator is generally disregarded while assessing the confusing similarity of the domain name to a mark.
The Panel finds that, the adding or deleting of punctuation marks in a domain name that wholly incorporates the trademark is not sufficient to dispel the confusing similarity. The use or absence of punctuation marks does not influence the consideration of similarity or alter the fact that the domain name is identical to the mark. See The Channel Tunnel Group Ltd. v. John Powell,WIPO Case No. D2000-0038; and Chernow Communications, Inc., v. Jonathan D. Kimball,WIPO Case No. D2000-0119.
The Panel finds the Complainant has made a compelling argument regarding the confusing similarity of the domain name to its mark by the mere addition of “www” and the omission of a dot. An Internet user who accidentally omits the dot would be misdirected to the Respondent's site. The omission of a dot between “www” and the trademark has been found a typical case of typo-squatting in several prior decisions. See Sportsman's Guide. Inc. v. Vipercom, WIPO Case No. D2003-0145 (deliberate omission of the dot makes for a strong case of typo-squatting); and Alfa Laval AB, Alfa Laval Corporate AB v. Web Advertising, Corp,WIPO Case No. D2007-1895, where this conduct has been recognized as specifically targeting trademarks to divert Internet users.
The Panel finds the disputed domain name which uses the prefix “www” with the HUMANA mark is confusingly similar to the Complainant's mark and has the potential to confuse and misdirect Internet users. The Panel finds, the Complainant has satisfied the first criterion under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant under paragraph 4(a)(ii), is required to put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not filed a response in these proceedings and the Panel can proceed to render a decision based on the Complaint under paragraph 14(a) of the Rules.
The Panel finds that the Respondent is not affiliated, authorized or licensed to use the Complainant's mark. Neither is there any material on record to show that the Respondent is commonly known by the “Humana” name or other similar name. Further there is no evidence which shows that the Respondent has used the domain name in connection with a bona fide offering of goods and services. The Panel finds the domain name is being used for redirecting users to various other sites. Using third party trademarks in domain names to divert Internet traffic is not a bona fide offering of goods or services. See Credit Suisse Group v. Kingdomdatanet Network, Inc. WIPO Case No. D2004-0846.
The Complainant has provided overwhelming evidence showing its rights and ownership in the HUMANA mark and its strong identification with it. There is nothing on record which gives any indication that the Respondent is using the domain name in a legitimate manner for noncommercial or fair use purposes. The Respondent is clearly trying to derive commercial gain from the fame of the Complainant's mark by diverting users trying to reach the Complainant's web site. The Panel therefore holds, based on all the evidence on record, that the Respondent has no rights or legitimate interests in the domain name.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has to establish that the domain name is registered and is being used in bad faith under Paragraph 4(a)(iii) of the Policy.
The Panel finds the Respondent has created the domain name by using the Complainant's well known HUMANA mark and prefixing “www”. The addition of the prefix “www” to a trademark has been recognized as a form of typo-squatting, such typosquatting by itself constitutes strong evidence of bad faith registration and use of a domain name. See for instance Joanne Rowling v. Alvaro Collazo,WIPO Case No. D2004-0787.
The Panel accepts the Complainants submissions that incorporating its HUMANA trademark in the disputed domain name, adding the generic abbreviation “www” for the “world wide web” would misdirect Internet traffic looking for the Complainant's website. Placing or prefixing “www” along with a well known mark is recognized as a typical form of abusive domain name registration and is a classic example of typo-squatting which shows bad faith. See, for example, InfoS Inc., v. Registrar Administrator Lew Blanck,WIPO Case No. D2000-0069.
The Complainant has also drawn the Panel's attention to several other domain names which the Respondent has registered using other well known trademarks. The documents furnished by the Complainant show the Respondent has registered domain names such as , , , , and others. Registration of such domain names in bulk is known as “domain name warehousing”, and the use of third party trademarks in such domain names is considered evidence of bad faith registration and use. See Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan,WIPO Case No. D2004-0214.
The Panel finds validity in the Complainant's argument that the Respondent has used the disputed domain name to offer links to disrupt the business of the Complainant. The disputed domain name creates a likelihood of confusion with the HUMANA mark and has a potential to disrupt the Complainant's business by misdirecting its customers to the Respondent's website who are likely to be redirected to other competitor's sites.
Finally, the Panel notes there is evidence that the Respondent was involved in a previous UDRP case (Possis Medical, Inc.v. CDN Properties Inc., NAF Claim No. FA964416) and has a prior history of registering and using the domain names in bad faith. The transfer to another party after having received a copy of a complaint is yet another indication of bad faith on the part of the Respondent; see A.H.Belo Corporation, supra.
The Panel concludes that the Complainant has satisfied the requirements under Paragraph 4(a)(iii) of the Policy. 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 be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: January 1, 2009
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