Generic Top Level Domain Name (gTLD) Decisions

DECISION

Aetna, Inc. v. Dotsan a/k/a R.S. Potdar

Claim Number: FA0205000114457

PARTIES

Complainant is Aetna, Inc., Hartford, CT, USA (“Complainant”).  Respondent is Dotsan a/k/a R.S. Potdar, Mumbai, INDIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aetnaus.com>, <aetnaush.com>, <aetnaushe.com> and <aetnashc.com>, registered with BulkRegister.com.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 31, 2002; the Forum received a hard copy of the Complaint on June 3, 2002.

On June 3, 2002, BulkRegister.com confirmed by e-mail to the Forum that the domain names <aetnaus.com>, <aetnaush.com>, <aetnaushe.com> and <aetnashc.com> are registered with BulkRegister.com and that Respondent is the current registrant of the names.  BulkRegister.com has verified that Respondent is bound by the BulkRegister.com 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 June 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 2002 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@aetnaus.com, postmaster@aetnaush.com, postmaster@aetnaushe.com and postmaster@aetnashc.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 July 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A.  Complainant

1.   Respondent’s <aetnaus.com>, <aetnaush.com>, <aetnaushe.com> and <aetnashc.com> domain names are confusingly similar to Complainant’s registered AETNA mark.

2.   Respondent does not have any rights or legitimate interests in the disputed domain names.

3.   Respondent registered and used the disputed domain names in bad faith.

B.   Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns numerous trademarks, including U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,744,804, for its AETNA mark listed on the Principal Register on January 5, 1993. Complainant first registered a service mark including the AETNA mark on October 30, 1923. Since 1853, Complainant and its affiliates have continuously used the AETNA name and mark in connection with a wide variety of insurance, financial and health care services. Complainant also owns trademark and service mark registrations and applications for its AETNA family of marks in thirty-five countries, including India, Respondent’s domicile.

Complainant currently holds the domain name registrations for the following domain names: <aetna.com>, <aetna.us>, <aetnausch.com>, <aetna.info>, <aetnainidia.net> and <aetnaushc.com>, among others. Complainant’s primary website, <aetna.com>, receives on average 25.89 million “hits” per month.

Respondent registered the disputed domain names between September and October 2001. Respondent is currently using the subject domain names to redirect Internet traffic to <gito.com> and <ownbox.com/treasure/search.html>, which are directory websites that provide links to other websites, including online gambling and websites containing sexual content.

Complainant’s investigation of Respondent revealed that Respondent does not hold any trademark rights in the AETNA mark. Complainant also asserts that Respondent is a known cybersquatter and typosquatter with a history of registering domain names incorporating well-known names and trademarks of others, including variations of ORBITZ, TONY ORLANDO and EXPEDIA, among others.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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

Complainant has established rights in the AETNA family of marks based on its international registration and continuous use of the AETNA mark in relation to providing insurance, financial and health care services since 1853.

Respondent’s <aetnaus.com>, <aetnaush.com>, <aetnaushe.com> and <aetnashc.com> domain names are confusingly similar to Complainant’s registered AETNA mark. The addition of an undecipherable combination of letters fails to detract from the overall impression of the dominant part of the name in each case, namely, the trademark AETNA. Thus, Policy ¶ 4(a)(i) is satisfied. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders it confusingly similar to Complainant’s marks); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the disputed domain names. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Complainant’s investigation has revealed that Respondent’s primary purpose in registering the disputed domain names was to divert Internet traffic to its unrelated websites, located at <gito.com> and <ownbox.com/treasure/search.html>. Respondent’s opportunistic attempt to benefit from the goodwill associated with Complainant’s AETNA family of marks by diverting Internet users to websites that tarnish Complainant’s reputation is not related to a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial use of the domain names under Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website).

There is no evidence that suggests Respondent is commonly known by the disputed domain names, or a corresponding moniker. The fame and recognition associated with Complainant’s established AETNA mark creates a presumption that Respondent does not have any rights or legitimate interests in the AETNA mark pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant and its affiliates have been continually using the AETNA mark to identify Complainant’s insurance and financial services. Furthermore, Complainant owns trademark registrations in thirty-five countries, including Respondent’s domicile, India. Because of Complainant’s extensive development of its AETNA mark, it has become distinct and famous. Due to the mark’s fame and Complainant’s registration of the AETNA mark in India, Respondent had notice of Complainant’s rights when registering the disputed domain names. Respondent’s registration and use of the disputed domain names, despite knowledge of Complainant’s preexisting rights, evidences bad faith pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Respondent’s registration of infringing domain names with the intention of directing Internet users to unconnected third-party websites constitutes bad faith under Policy ¶ 4(b)(iv). Respondent is attempting to attract, for commercial gain, Internet users who are searching for Complainant’s products to its own websites by creating confusion as to the source of the domain names. Furthermore, Respondent offers services, such as gambling and websites containing sexual content, which could tarnish Complainant’s AETNA mark. Respondent’s registration of numerous domain names that incorporate Complainant’s famous AETNA mark represents a classic example of typosquatting. See Encyclopedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <aetnaus.com>, <aetnaush.com>, <aetnaushe.com> and <aetnashc.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: July 25, 2002

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