DECISION

Aetna Inc. v. Somsak Sooksripanic a/k/a Somsak Sooksripanich

Claim Number: FA0105000097193

PARTIES

Complainant is Aetna Inc., Hartford, CT, USA (“Complainant”) represented by Faye A. Dion, of RC4A.  Respondent is Somsak Sooksripanic, Bankgkabi, Bangkok, Thailand (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "aetnaasia.com" registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 11, 2001; the Forum received a hard copy of the Complaint on May 15, 2001.

On May 14, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "aetnaasia.com" is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 5, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@aetnaasia.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 7, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

· Respondent’s registration of the "aetnaasia.com" name is confusingly similar to Complainant’s marks.

· Respondent has no right or legitimate interest in "aetnaasia.com."

· Respondent registered and is using the domain name in bad faith.

B. Respondent

There has been no response from the Respondent.

FINDINGS

Complainant owns many U.S. federal trademarks, which are registered with the United States Patent and Trademark Office.  Complainant first registered the AETNA mark on October 30, 1923.

Complainant also owns trademark and service mark registrations and applications for AETNA in 34 other countries and/or regions throughout the world.  This includes Thailand and many other locations in Asia.

Since 1853 the Complainant and its predecessor in interest have used its well-known and established “AETNA” name and mark in connection with insurance, financial, and health services in the United States and throughout the world. 

Respondent is not affiliated with the Complainant and has not been licensed or otherwise authorized to use the AETNA name or mark.

Respondent has registered other domain names which infringe upon established marks, including Yahoo! and Louis Vuitton.

On or about March 5, 2001, Respondent registered the domain name "aetnaasia.com."

On or about May 1, 2001, Complainant’s counsel sent a cease and desist letter via e-mail and certified mail to Respondent’s contact information listed on the Whois registration.

In correspondence between Complainant and Respondent between the dates of May 2, 2001 and May 11, 2001, Respondent repeatedly requested compensation for the transfer or cancellation of the domain name.  At first, Respondent offered to create a website for Complainant in exchange for a fee.  When Complainant rejected Respondent’s business offer, Respondent then offered to transfer the domain name for $350 and then lowered his offer to $300.  Respondent claimed this was the amount of money he spent to register the domain name and create a website.  However, the domain name does not resolve to an active website.  Instead, the domain name resolves to a free placeholder webpage provided by a web-hosting company.  This nonspecific website indicates that a free placeholder website was connected to the domain name "aetnaasia.com."  Thus, Respondent did not incur any web hosting costs in connection with the domain name.

The cost associated with registration of one domain name through Network Solutions is approximately $35. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

Identical and/or Confusingly Similar

The domain name "aetnaasia.com" is confusingly similar to the Complainant’s registered marks.  Adding the geographic location, asia, does not weaken the confusing similarity between the domain name "aetnaasia.com" and the Complainant’s AETNA marks.  See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to complainant’s CMGI mark)

Therefore, the Panel concludes that the domain name is confusingly similar to Complainant’s mark, as required by Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has made no use of the domain name in question.  Based on Respondent’s correspondence with the Complainant’s attorney, revealing the Respondent’s willingness to transfer the domain name, it is evident that Respondent had no plans to use the domain name in connection with a bona fide use.  Instead, the Panel concludes that the Respondent registered the domain name to either strong-arm the Complainant into a website development contract with the Respondent or extract payment out of the Complainant in exchange for transferring the domain name.  This is not a bona fide use of a domain name under Policy ¶ 4(c)(i).  See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name); Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant).

Respondent is not commonly known by the domain name "aetnaasia.com."  Policy ¶ 4(c)(ii).

Respondent has not made a legitimate noncommercial or fair use of the domain name.  Policy ¶ 4(c)(iii).

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name, as required by Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent appears to have registered the domain name for the purpose of selling it to the Complainant or a competitor of the Complainant for a price in excess of out of pocket costs.  Policy ¶ 4(b)(i).

When contacted by Complainant regarding purchase of the domain name, Respondent indicated that he is a webmaster.  Respondent offered to create a website for Complainant in exchange for a fee.  When Complainant rejected Respondent’s business offer, Respondent then offered to transfer the domain name for $350 and then lowered his offer to $300.  Respondent claimed this was the amount of money he spent to register the domain name and create a website.  However, the domain name does not resolve to an active website.  Instead, the domain name resolves to a free placeholder webpage provided by a web-hosting company.  Thus, the Panel concludes that Respondent’s fees for registering and maintaining the domain name could not exceed $35.  Respondent’s offer to sell the domain name for $300 - $350 exceeds Respondent’s out of pocket costs almost ten times.  See Sunkist Growers, Inc. v. S G and Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding bad faith where after being contacted by Complainant’s attorney regarding transfer of the domain name, the Respondent offered to sell the domain name for his out of pocket fees, in excess of $7,000, even though the Respondent never created a website connected to the domain name).   

Respondent appears to be engaged in a pattern of registering famous trade and service marks as domain names.  Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others). 

The panel finds that the Complainant has provided sufficient evidence to satisfy paragraphs 4(b)(i) and (ii) of the ICANN Policy.  Therefore, the Panel concludes that the domain name was registered and used in bad faith, as required by Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "aetnaasia.com" be transferred from the Respondent to the Complainant.

Hon. James A. Carmody, Panelist

Dated: June 18, 2001

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