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Generic Top Level Domain Name (gTLD) Decisions |
Aetna Inc. v. Jacoby Partners 1999-2,
L.L.C.
Claim Number: FA0209000125816
PARTIES
Complainant
is Aetna Inc., Hartford, CT
(“Complainant”). Respondent is Jacoby Partners 1999-2, L.L.C., Mill
Valley, CA (“Respondent”) represented by Ben
F. Jacoby.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aetna.net>,
registered with Network Solutions.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 25, 2002; the Forum
received a hard copy of the
Complaint on September 30, 2002.
On
September 27, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <aetna.net> is
registered with Network Solutions and that the Respondent is the current
registrant of the name. Network Solutions
has verified that Respondent is bound by the Network Solutions 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
October 4, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of October 24,
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@aetna.net by e-mail.
A
timely Response was received and determined to be complete on October 23, 2002.
Complainant
filed an untimely Additional Submission and it is within the Panel’s discretion
what weight to afford it. The Panel received
information which was not
submitted in accordance with the rules and did not consider that material.
On November 8, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is Aetna, Inc. of Hartford, Connecticut. 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 is well known and established in
the United States and throughout the world, and has created substantial
goodwill in the
AETNA name and marks.
Complainant
first registered the AETNA mark with the United States Patent and Trademark
Office on October 30, 1923. Complainant
currently owns many U. S. federal trademarks that are duly registered,
including AETNA, Reg. No. 1,939,423, registered
December 5, 1995 in
international class 42 for “health care services provided through preferred
provider or exclusive provider organizations,
health maintenance organizations
and point of service plans”
Complainant
owns trademark registrations and applications for its AETNA marks in
thirty-four other countries and/or regions.
Complainant
owns directly or through a wholly-owned subsidiary, many domain name registrations, that correspond with its famous
marks, including but not limited to: <aetna.com>, <aetna.us>,
<aetna.biz>, <aetha.info>, and <aetnainc.com>.
Complainant’s
public websites received over 26.4 million “hits” in July 2002.
On
or about November 2, 1999, Respondent registered <aetna.net> for a
period of two years.
On
or about December 31, 1999, Respondent sent an electronic message to
Complainant informing Complainant that Respondent was owner
of the domain name
<aetna.net>. Respondent’s
website at the time consisted of a single page with the words “Alternative
Educational Training for New Arrivals.”
On
January 4, 2000, Complainant sent a cease and desist letter to Respondent via
certified mail.
On
or about January 13, 2000, Respondent agreed in a telephone conversation to
transfer the domain name registration to Complainant
and Complainant agreed to
pay a fee of $70.00.
On
or about April 28, 2000, Complainant sent Respondent the Registrant Name Change
Agreement to transfer the domain name <aetna.net> from Respondent
to Complainant.
On
or about September 13, 2000, under cover demanding Complainant to cease and
forever waive its right to pursue any civil or criminal
action related to the
<aetna.net> domain name, Respondent returned the signed Transfer
Form to Complainant, absent page 3 and the required notarization. On September 22, 2000, Complainant sent
another Transfer Form to Respondent confirming that Complainant will not pursue
any legal
action once the Transfer Form is properly completed and received by
Complainant. Respondent did not send a
properly completed Transfer Form.
On
about June 22, 2001, Respondent renewed the domain name registration for <aetna.net>
through November 2, 2006.
At
some point after September 3, 2002, Respondent removed the “Under Construction”
page and redirected <aetna.net> to “Greek mythology” search
results on <google.com>.
The
domain name <aetna.net> is identical and confusingly similar to
Complainant’s corporate name and the AETNA marks registered with the United
States Patent
and Trademark Office and other trademark registries throughout
the world.
Respondent
has no rights or legitimate interests in the domain name.
Respondent
first registered and used the domain name in bad faith in 1999.
Respondent’s
renewal of the domain name, with full knowledge of the dispute between the
parties and Complainant’s trademarks, was
done in bad faith and Respondent’s
use of the domain name is in bad faith.
B.
Respondent
Respondent
is Ben F. Jacoby and Devorah E. Jacoby, d/b/a Jacoby Partners of Mill Valley,
California.
Respondent
does not dispute Complainant’s statement with respect to the date upon which
<aetna.net> was registered or the term for which it was
registered.
Respondent
disagrees with Complainant’s interpretation of Respondent’s December 31, 1999
e-mail. There was never any confusion
between <aetna.net> and <aetna.com>. Such confusion was impossible based upon the
physical appearance of the websites and the products and services offered on
the sites. Complainant shows no
evidence of confusion.
Respondent
received the cease and desist letter.
Respondent received the transfer documents from Complainant but never
completely filled out the documents.
Respondent rejected the transfer and no transfer ever happened.
Respondent
registered <aetna.net> on or about November 2, 1999 for the
purpose of developing a non-commercial website devoted to Greek Mythology. At the time Respondent registered the domain
name, it was not aware of Complainant’s trademark rights.
Shortly
after registering the domain name, Respondent became aware of the general
controversy regarding domain name disputes.
Respondent then conducted a search through the Internet of the name
“aetna” and discovered it was in widespread use. Respondent then contacted Complainant so as to avoid any
potential future confusion surrounding the use of the domain name <aetna.net>.
Complainant’s
cease and desist letter forced Respondent to delay development of the website
pending resolution of this domain name
dispute.
Respondent
concedes that the <aetna.net> domain name is confusingly similar
to a trademark in which Complainant has rights, however, these rights do not
belong exclusively
to Complainant. The
rights are shared by Complainant, other companies using “aetna” as or as part
of their corporate name and the general public as
a result of the origin of the
“aetna” name. Respondent, other third
parties, and the general public at large all have legitimate interests in
respect of the name “aetna” as a
result of the origins of said name. The name has origins in Greek mythology.
Prior
to any notice from Complainant, Respondent made demonstrable preparations to
use <aetna.net> but such preparations were disrupted by
Complainant as result of their cease and desist letter. Respondent has redirected the URL, <aetna.net>,
to a google search of Greek mythology after approximately three years of active
research and preparations for its website so
as to demonstrate its legitimate
intent.
Respondent
intends to devote the URL to a non-commercial use focused on Greek mythology.
Respondent
has rights and legitimate interests in the domain names.
Respondent
did not register or use the domain name in bad faith.
C.
Additional Submissions
The
Panel received information which was not in accordance with the rules and did
not consider that material.
FINDINGS
1. Complainant is a large insurance company
that has been in existence since 1853 and has continuously used the name AETNA
for many years
resulting in considerable name recognition and goodwill in the
AETNA name.
2. Complainant owns the AETNA trademark
which was first registered in 1923.
3. Complainant owns or controls domain name
registrations that correspond with its famous mark including <aetna.com>,
<aetna.us>,
<aetna.biz> and <aetna.info>.
4. Respondent registered the domain name
<aetna.net> on November 2, 1999.
5. Respondent opened its website with a
one-page display containing the words “Alternative Educational Training for New
Arrivals”.
6. On December 31, 1999, Respondent notified
Complainant that it had registered <aetna.net>.
7. Complainant sent a cease and desist
letter to Respondent on January 4, 2000.
8. Thereafter, Complainant and Respondent
entered into a series of communications which resulted in the parties agreeing
to the transfer
of the domain name registration to Complainant in consideration
for an agreement by Complainant not to take action against Respondent
as result
of the controversy.
9. During this interval, Respondent changed
the website content to show that the website was “under construction”.
10. Respondent failed to fully complete the
transfer documents so that the domain name registration was never transferred
as agreed upon
by the parties.
11. On June 22, 2001, Respondent renewed the
domain name registration for <aetna.net> through November 2, 2006.
12. After registration, Respondent removed
the “under construction” page and redirected <aetna.net> to “Greek
mythology” search results on <google.com>.
13. The domain name <aetna.net>
is identical to Complainant’s trademark, AETNA.
14. Respondent has no rights or legitimate
interests in respect of the domain name.
15. The domain name <aetna.net>
has been registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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
Respondent concedes that the domain name
<aetna.net> is identical or confusingly similar to Complainant’s
trademark, AETNA. That is obvious. See
BMW AG v. Loophole, D2000-1156 (WIPO Oct 26, 2000); Pomellato S.p.A. v.
Tonetti, D2000-0493 (WIPO July 7, 2000).
Respondent takes the position that
Complainant does not have rights in the mark, AETNA, as required under Policy,
¶ 4(a)(i). This is the case, Respondent
contends, because the rights “do not belong exclusively to Complainant”. Respondent points out that there are
organizations in existence that use the word “Aetna” as part of a name. Respondent did an Internet search and discovered
“Aetna Insulated Wire”, “Aetna Building Corp.”, “Aetna Plastics Corporation”,
“Aetna
Manufacturing Canada Limited”, “Aetna Capital”, “Aetna Mobile Home
Park”, and others. Respondent notes
that there are cities in the United States named “Aetna” and also notes that
there is a mountain with that name and
a figure in mythology with the name.
Where a complainant does not have
“exclusive rights” to a name, it cannot prevail under Policy ¶ 4(a)(i). See
NM Rothschild & Sons Ltd. v. Corp. Internet Design Ltd. and Michael Decker,
D2001-0854 (WIPO Aug. 29, 2001).
As a general rule, Panels have found that
when a complainant shows a registered trademark that has acquired
“incontestable status”
under United States law, this alone constitutes
sufficient rights to satisfy the requirements of Policy ¶ 4(a)(i). See Senco
Prods., Inc. v. Camp Creek Co., Inc., D2000-0590 (WIPO Sept. 11, 2000); Robetel
Electronique Inc. v. KapCom, Inc., D2001-0038 (WIPO Feb. 26, 2001). Complainant has offered clear and
substantial proof of its trademark registrations in this case.
Respondent does not contend that the
mark, AETNA, is a generic term nor does Respondent’s proof suggest that the
term is generic.
Proof is necessary on this issue such as was presented in Tough
Traveler, Ltd. v. Kelty Pack, Inc., Mike Scherer, and Inking Pen Co.,
D2000-0783 (WIPO Sept. 28, 2000).
Respondent makes no such showing.
Comparing this dispute with the one decided in Viacom Int’l Inc. v.
Bryan Dulsky, D2000-0961 (WIPO Dec. 5, 2000) makes it clear that Respondent
has failed to show sufficient reason to justify a finding for Respondent
under
Policy ¶ 4(a)(i).
Complainant has satisfied the
requirements of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant shows that it has never
authorized or licensed Respondent to use Complainant’s registered marks. Neither Complainant nor Respondent contends
that Respondent has any registered trademarks or service marks of any
kind. There is no evidence in the
pleadings to suggest that Respondent has ever been known by the domain name at
issue in this proceeding. Complainant contends
that it has exclusive rights to use its registered marks. See Am. Online v.
Tencent Communications Corp., FA93668 (Nat. Arb. Forum Mar. 21, 2000). As a result of Complainant’s showing, and
Respondent’s apparent lack of rights and legitimate interests in the domain
name, the burden
must shift to Respondent to demonstrate Respondent’s rights
and legitimate interests in the domain name. See Clerical Med. Inv. Group
Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate its rights and
legitimate interests in the domain name by any of the methods wet out in Policy
paragraph
4(c).
Respondent contends that, prior to any
notice from Complainant, it made demonstrable preparations to use <aetna.net>,
but such preparations were disrupted by Complainant as a result of their cease
and desist letter. “Respondent submits that its
almost three year dialogue with
Complainant, and it having endured heavy-handed tactics by Complainant (to
which Complainant itself
admits) is evidence of its demonstrable preparations,
and evidence that it intends to pursue a bona fide offering of non-commercial
services should it prevail in this proceeding.” Other than to state that it intended to devote <aetna.net>
to a non-commercial use focused on Greek mythology, Respondent produces no
evidence of any kind to illustrate demonstrable preparations
to use the domain
name prior to registration or before receiving the cease and desist letter from
Complainant. Respondent is required to
present “concrete evidence” on such issues, not “mere personal assertions.” See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) wherein
it was stated as follows: “Where a
complainant has asserted that the respondent has no rights or legitimate
interests in respect of the domain name, it is incumbent
upon the respondent to
come forward with concrete evidence rebutting this assertion. This information is uniquely within the
knowledge and control of the respondent.
Failure of a respondent to come forward with such evidence is tantamount
to admitting the truth of complainant’s assertions in this
regard.”
The actions of Respondent after receipt
of the cease and desist letter included a series of letters and communications
between the
parties which resolved itself into an agreement to transfer the
domain name to Complainant in consideration for Complainant waiving
any legal
action regarding the registration of the domain name by Respondent. There is concrete evidence represented by
the letters and e-mails between the parties.
But none of this concrete evidence proves or even suggests any
demonstrable preparations for use of the domain name in connection
with a bona
fide offering of goods or services as contemplated by Policy ¶ 4(c)(i). Respondent presents no evidence of the type
required under the reasoning of Do The Hustle, LLC v. Tropic Web, supra.
Respondent next contends that it was
making a legitimate noncommercial or fair use of the domain name without intent
for commercial
gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue. See Policy ¶ 4(c)(iii). The evidence on this issue is as
follows. Respondent, after
registration, presented a web page on the site of <aetna.net>
consisting of one page on which appeared the following language: “Alternative Educational Training for New
Arrivals”, “Welcome to our new web site”.
“Watch this web page for our new FREE ESL referral”. “For additional information contact us at
the e-mail address listed below”. “Contact information” “benjacoby@earthlink.net”. “Domain Parking Affinity hosting”. “This Site Parked At Affinity Hosting.” There is nothing in this language that
indicates to this Panel that the site was intended as a “Greek mythology”
website. After the cease and desist
letter was received by Respondent the website was listed as “Under
Construction”.
“It is true that Paragraph 4(c)(iii) of
the Policy provides that ‘making a legitimate noncommercial or fair use of the
domain name’
is among the circumstances that can demonstrate a respondent’s
rights or legitimate interests in the domain name if-but only if-such
circumstance ‘is found by the Panel to be proved based on its evaluation of all
evidence presented.’ However, Respondent’s conclusory
assertion about its …intended
use…is insufficient to support the finding required by Paragraph 4(c).” see
Senco Prods., Inc. v. Camp Creek Co., Inc., D2000-0590 (WIPO Sept 11,
2000). The Panel cannot conclude, based
upon the evidence presented, that Respondent has proved by concrete evidence,
that Respondent has
ever made a legitimate noncommercial or fair use of the
domain name <aetna.net>.
Complainant has satisfied the
requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Policy places the burden of proof upon
Complainant to show that Respondent registered the domain name in bad faith and
used the
domain name in bad faith. Policy paragraph 4(a)(iii). Complainant may do so by any of the
methods set out in Policy paragraph 4(b).
Complainant presents two grounds upon
which it relies to prove bad faith on the part of Respondent. The first contention is that “registration,
passive holding and renewal of the domain name deprives Complainant of its
right as a
trademark owner to reflect its trademark in a corresponding domain
name.” The second contention is that
“Respondent was aware of Complainant’s famous mark at the time Respondent
registered the domain name
in November 1999, and even if Respondent was not
aware of Complainant’s famous mark in November 1999…Respondent was most
certainly
aware of it in June 2001 when Respondent renewed the registration of
<aetna.net> for five additional years.”
Complainant argues resolutely that the
renewal of the domain name in June 2001, with full knowledge of Complainant’s marks
and objection
to use of the domain name, is evidence of bad faith registration
and use. This argument cannot be
sustained. The issue of bad faith
renewal was carefully considered in Weatherall Green & Smith v.
Everymedia.com, D2000-1528 (WIPO Feb. 19, 2001) where the Panel found that
even though the respondent renewed the registration in bad faith and
was at
that time using the domain name in bad faith, these circumstances were of no
consequence because it was not the intent of
the Policy to extend the
definition of abusive registration to include domain names originally
registered in good faith but which
later became infringing. The Panel
stated: “But a registration of a domain
name that at inception did not breach Rule 4(a)(iii) but is found later to be
used in bad faith does
not fall foul of Rule 4(a)(iii).” This reasoning was followed in Spirit
Airlines, Inc. v. Spirit Airlines Pty, Ltd., D2000-0748 (WIPO July 25,
2001) where it was stated: “Renewal of a domain name registration in this
respect is no different from
renewal of a trade mark registration, it
represents a continuation of the original registration. Were Complainant’s argument to succeed, all
‘innocent’ registrants of domain names would be at risk of becoming branded
‘cybersquatters’
as a result of a letter of notification coming in out of the
blue.” The reasoning of Weatherall
was followed in Substance Abuse Mgmt., Inc. v. Screen Actors Modesl [sic]
Int’l, Inc. (SAMI), D2001-0782) wherein it was found that renewal is a mere
“ministerial function” not covered under the Policy which could have
been
drafted to address both bad faith registration and bad faith renewal, but which
does not, referring only to a registration having
been obtained in bad
faith. Thus, under the prior Panel
decisions, Complainant’s bad faith renewal argument cannot be considered as
evidence of bad faith registration.
As to the registration in 1999,
Complainant contends that Respondent either knew or should have known of
Complainant’s famous mark
at the time of registration. Respondent says that at the time of
registration, it was not aware of any of Complainant’s trademark rights in the
AETNA mark. Respondent first posted a
web page wherein the word AETNA never appears.
What appeared was “Alternative Educational Training for New
Arrivals.” The registration of the
domain name was in November 1999. In
December 1999, Respondent sent the following e-mail to Complainant. “To Whom it
May Concern: We are the registered owners of aetna.net.
and have been confused
with your site. We are willing to
include a link to your site on our homepage (which is currently under
construction), if you would do the same.
We would also consider other alternatives to clearing up this problem,
and would be interested in any ideas you may have. Please advise
us with whom
we should speak regarding this situation. Sincerely, The Management of
aetna.net.” The Panel finds Respondent’s conduct
suspect. It is difficult to accept that a resident of
the United States has never heard of AETNA as an insurance company which has
been in
business and promoting the name since 1853. One need only open a
telephone directory for a listing of AETNA agents, as Respondent
illustrates by
including a California telephone book listing which was included in the
Response to show a contended lack of rights
on part of Complainant. Respondent never explains why it listed
“Alternative Educational Training for New Arrivals” on the first web page at
<aetna.net>. The Panel
finds nothing in this title to suggest either a “Greek mythology” purpose or
any purpose other than as a possible justification
for shortening the name to
AETNA. The timing of the e-mail in which Respondent announces “confusion” and
asks Complainant for “alternatives
to clearing up this problem” can easily be
interpreted as an invitation by Respondent for Complainant to offer some sum of
money
to purchase the domain name registration.
Complainant immediately, upon receiving
the e-mail, issued a cease and desist letter to Respondent with no offer other
than to pay
the ordinary transfer fee.
Respondent, in response to the cease and desist letter, through a series
of correspondence, agreed to transfer the domain name to
Complainant. This agreement was never completed because
Complainant would not initial a document prepared by Respondent to the effect
that Complainant
waived any legal action against Respondent, though Complainant
had agreed in writing to forward such a written agreement upon receipt
of the
fully completed transfer documents. The
matter plodded along until time for renewal transpired at which time Respondent
renewed the domain name, after earlier agreeing
to transfer the name to
Complainant. The inference can be drawn
that Respondent thinks there is something yet to be gained from Complainant by
retaining the domain name.
The Panel finds Respondent’s conduct,
though carefully done, consistent with the conduct discouraged in Policy ¶
4(b)(i).
Further the passive holding of the domain
name for three years, under the facts and circumstances of this case can be
viewed as evidence
of bad faith. Though
both parties agreed to hold the domain name as an “under construction” site
during the negotiations to transfer the domain
name to Complainant, Respondent
was under no obligation to keep it in that mode. If Respondent really intended to operate the site as a
non-commercial “Greek mythology” operation, it could have done so under the
authority of Policy ¶ 4(c)(iii) for the full duration of the three-year period
without fear of Complainant’s objections.
Passive holding of a domain name, under certain circumstances, can be
taken as evidence of bad faith. See Telstra Corp. Ltd. v. Nuclear
Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
If the domain name was to be operated as
a non-commercial “Greek mythology” site by Respondent, under Policy ¶
4(c)(iii), then Respondent
was under no obligation to entertain the idea of
transferring the domain name to Complainant.
The Panel concludes that Respondent’s
agreement to transfer the domain name to Complainant is an admission that
Respondent had no
rights in the domain name, that its use would create
“confusion” between the domain name and Complainant’s trademark, and that
Complainant
should be the rightful owner of the domain name <aetna.net>. In a court of law this agreement would be
enforced since there was a complete meeting of minds on the subject matter of
the agreement.
Taking all of the facts and circumstances
and proper inferences arising there from, the Panel is of the opinion that the
domain name
<aetna.net> was registered and thereafter used in bad
faith. See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000); Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000); Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000).
Complainant has satisfied the
requirements of Policy ¶ 4(a)(iii).
It is the decision of this Panel that the
domain name <aetna.net> now registered to Respondent, Ben F.
Jacoby, Devorah E. Jacoby, d/b/a Jacoby Partners 1999-2, L.L.C., be TRANSFERRED
to Complainant, Aetna, Inc.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 22, 2002
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