The Complainant is Aetna Inc. of Hartford, Connecticut, United States of America (“United States”), represented by The GigaLaw Firm, United States.
The Respondent is Patrick Beeman / InsideTheBoards of Belleville, Illinois, United States.1 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Lexsynergy Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2018. On January 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 9, 2018, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2018. In response to the Respondent’s email request of January 30, 2018, the Center extended the Response due date until February 4, 2018 in accordance with the Rules, paragraph 5(b). The Respondent did not submit any formal response. The Center notified the Parties of the Panel appointment on February 5, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February 16, 2018. 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, founded in 1853, is one of the leading diversified health care benefits companies in the United States, serving an estimated 44.6 million people with information and resources to help them make better informed decisions about their health care. Publicly traded and based in Pennsylvania, United States, the Complainant owns 137 trademark registrations in 38 jurisdictions worldwide that include or incorporate the name “AETNA” (collectively, the “AETNA Mark”). Since 1853, the Complainant and its affiliates have used the AETNA Mark continuously and extensively in connection with a wide variety of insurance, financial and health care services and first registered an AETNA Mark for health care services as early as October 30, 1923. The Complainant currently owns United States registrations for AETNA, including, but not limited to, United States Registration No. 1,939,424, registered on December 5, 1995 for insurance underwriting services in the field of life, health and property-casualty insurance; United States Registration No. 1,939, 423, registered on December 5, 1995 for health care services; and United States Registration No. 4,330,567, registered on May 7, 2013 for website services featuring technology that enables the provision of personalized information to health plan participants.
The Complainant’s subsidiary registered the domain name on November 2, 1993, which domain resolves to the Complainant’s official website, “www.”, through which it promotes its health care facilities and services.
The Disputed Domain Name was registered on September 6, 2017 by the Respondent. At the time of registration, the generic Top-Level Domain (“gTLD”) “.health” was restricted to qualified health industry brands, organizations, and individuals. The Respondent, a physician who operated a website to help medical students study for the medical boards, does not own a qualified health industry brand or organization. The Disputed Domain Name is not currently being used as an active website. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Respondent registered and is using the Disputed Domain Name in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not submit a formal reply to the Complainant’s contentions. In response to an email communication dated January 30, 2018 from the Respondent requesting an additional four calendar days in which to respond to the Complaint, the Center granted the Respondent’s request and set the new due date for Response as February 4, 2018. The Respondent also informed the Center that he had moved and included his new physical and email addresses. The Respondent, however, did not submit a Response by the February 4, 2018 due date. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name 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 Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the AETNA Mark based on longstanding use as well as its trademark registrations for the AETNA Mark in the United States and in other jurisdictions worldwide. The Disputed Domain Name consists of the AETNA Mark in its entirety followed by the gTLD “.health”. It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Here, the Disputed Domain Name contains the Complainant’s entire AETNA Mark and thus, the Disputed Domain Name is identical to the AETNA Mark.
Finally, the addition of a gTLD such as “.health” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. This is especially true in the present case given that the gTLD “.health” is directly related to the Complainant’s business and therefore, only increases confusing similarity between the Disputed Domain Name and the AETNA Mark. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its AETNA Mark, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Based on the passive use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP Policy sets out the following examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name:
(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name; or
(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant's website or location.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s AETNA Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant’s AETNA Mark. The use of a domain name to intentionally attempt to attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith.
Second, bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the AETNA Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent, a physician, knew or should have known of the AETNA Mark and the Complainant’s business when registering the Disputed Domain Name. See Six Continents Hotels, Inc. v. Lin hongyu, Cheng Qi Lin,WIPO Case No. D2017-2033. See also WIPO Overview 3.0, section 3.2.2.
The Respondent registered the Disputed Domain Name long after the Complainant obtained its trademark registrations for the AETNA Mark in the United States. The fame of the AETNA Mark makes it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademarks).
Third, the Respondent’s registration and use of the Disputed Domain Name that is confusingly similar to the Complainant’s well-known trademark suggests bad faith registration and use. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
In addition, the Respondent selected a “.health” gTLD that is directly related to the Complainant and its business. This indicates an additional element of bad faith registration and use. See WIPO Overview 3.0, Section 3.2.1; see also Comerica Bank v. Eli Tomlinson, Eli’s Software Encyclopedia, WIPO Case No. D2016-0044 (finding bad faith where the disputed domain name includes the gTLD “.mortgage” which references the complainant’s business and therefore further indicates that the respondent was aware of the complainant and its rights in the COMERICA trademark).
Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v ChinaV,WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate Internet purpose may indicate that the Disputed Domain Name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574. Here the Panel has considered and found bad faith use by the Respondent due to the passive holding of the Disputed Domain Name.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, , be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: March 1, 2018
1 According to a January 30, 2018 email communication received by the Center from the Respondent, the Respondent indicated that he had moved to Lorain, Ohio, United States.
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