WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Humana Inc. v. HYRO FZ-LLC Case No. D2008-1695 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 HYRO FZ-LLC, of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc. d/b/a Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2008. On November 6, 2008, the Center transmitted by email to PSI-USA, Inc. d/b/a Domain Robot a request for registrar verification in connection with the disputed domain name. On November 7, 2008, PSI-USA, Inc. d/b/a Domain Robot transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 of the Complaint, and the proceedings commenced on November 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 5, 2008.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 12, 2008. 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 services; 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 registered by the Respondent on August 19, 2007. 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 USD25.3 billion and as of September 30, 2008, it has about 11.5 million members in its medical insurance programs.
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 HUMANA mark is widely promoted according to the Complainant, through advertising in various media, including, newspapers in the United States such as Chicago Tribune, Denver Post, Atlanta Journal, Dallas Morning News, Wall Street Journal and regional placements in 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, 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, 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 owns registrations for 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 its 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 such as Berlitz Inv. Corp v. Marcus Santamaria,WIPO Case No. D2006-1082 and CTV Television Incorporated v. ICANANDA Co.,WIPO Case No. D2000-1407.
The Respondent lacks rights or legitimate Interests in the domain name for the reasons that the Complainant's use of the HUMANA trademark predates Respondent's registration of the domain name by at least thirty four years. Complainant has not authorized the Respondent to use or register its trademarks. The Respondent apparently has no business entity under the name of “Humana” or “www-humana” 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 offer links to competitor's of the Complainant which is not a legitimate use of the domain name.
The Complainant states the Respondent has registered and uses the domain name in bad faith, as the links on the Respondents' site divert its potential customers and in doing so, the Respondent seeks to disrupt the business of the Complainant. The Complainant further states that the Respondent has registered hundreds of domain names in a similar manner by adding the prefix “www- ” to well known trademarks, and has thereby engaged in a pattern of preventing owners of the trademarks from registering corresponding domain names.
The Complainant requests for the transfer of the domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant is required to prove three essential elements under paragraph 4(a) of the Policy to obtain the remedy of transfer 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 evidence of its use of the HUMANA mark from the year 1973. It has also provided data regarding its financial turnover and has filed extensive documentary evidence to show its ownership, use and the promotion of its mark, all of which clearly shows its continuous and extensive use of the HUMANA mark in commerce. The Complainant has also furnished the 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 use or absence of punctuation marks such as hyphens 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 concurs with the Complainant's submission that the disputed domain name is confusingly similar to its mark, and that the prefix “www”, does not dispel the confusing similarity. There are numerous prior cases, such as Société Air France v. Kim Hyungho,WIPO Case No. D2005-0442, where domain name , and Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816, where , have held that adding the prefix “www” to a trademark is an attempt to exploit the trademark for the purpose of diverting Internet traffic. Similarly, in the present case the disputed domain which uses the prefix “www” and a hyphen with the HUMANA mark is found confusingly similar to the HUMANA mark and has the potential to confuse and misdirect Internet users.
The Panel finds, the disputed domain name is confusingly similar to a mark in which it has rights and that 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 Policy provides the Respondent an opportunity to put forward any claims or rights over the disputed domain name e.g., under paragraph 4(c).
The Respondent has not availed itself of the opportunity of filing a response in these proceedings to contest the allegations made by the Complainant. In the case of a default, under the Rules, paragraph 14(a), the Panel can proceed to render a decision based on Complaint.
The Panel finds that the Respondent is not affiliated, authorized or licensed to use the Complainant's mark. Neither is there any evidence 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 here 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” 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 adidas-Salomon AG v. Domain Locations,WIPO Case No. D2003-0489, regarding the domain name .
The Panel accepts the Complainant's submissions that incorporating its HUMANA trademark in the disputed domain name, adding the generic abbreviation “www” for the “world wide web” with a hyphen 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 InfoS Inc., v. Registrar Administrator Lew Blanck,WIPO Case No. D2000-0069.
The Complainant has also drawn the Panel's attention to hundreds of 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 many 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. 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 registered the domain name to disrupt the business of the Complainant. As the Panel has noted in the first ground discussed above, the domain name creates a likelihood of confusion with the well known HUMANA mark. The Panel accepts the Complainant's argument that a domain name that so closely resembles its trademark has a potential to disrupt its business. The disruption to its business could likely be in terms of losing its potential customers who are looking for the Complainant's online location and are misdirected to the Respondent's website and are redirected to other competitor's sites.
The Panel finds, for all the reasons discussed, that the domain name has been registered and is being used in bad faith.
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: December 26, 2008
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