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Generic Top Level Domain Name (gTLD) Decisions |
Optum, Inc. v. United Health Group
Claim Number: FA0201000104102
PARTIES
The
Complainant is Optum, Inc., Costa
Mesa, CA (“Complainant”). The
Respondent is United Health Group,
Minneapolis, MN (“Respondent”).
The
domain name at issue is <optum.biz>,
registered with Network Solutions.
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.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on January 23, 2002; the
Forum received a hard copy of the Complaint
on January 23, 2002.
On
January 28, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 18, 2002 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent
in compliance with paragraph 2(a) of
the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on February 15, 2002.
On February 25, 2002, pursuant to STOP Rule 6(b), the
Forum appointed Tyrus R. Atkinson, Jr.,
as the single Panelist.
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
A.
Complainant
Optum,
Inc, a Delaware corporation owns a registered trademark for the word Optum.
<optum.biz>
is used identically within the bounds of the .biz domain registration.
Respondent,
United Health Care does not hold rights to the word “optum."
Respondent
is not commonly known or associated with the word, nor is the health care
industry commonly or formally known to use the
word “optum.”
Respondent
has attempted to register <optum.biz> subject only to these
proceedings.
B.
Respondent
Respondent
is the owner of U.S. Trademark Registration No. 1,801,041 for the mark OPTUM,
registered on October 26, 1993 and first
used by Respondent at least as early
as August 15, 1992.
The
Registration is in full force and effect and is incontestable.
Although
the Registration issued in the name of United HealthCare Corporation, the
Registration was assigned to Respondent.
The assignment was completed and recorded with the U.S. Patent and
Trademark Office prior to Respondent’s registration of the subject
domain name.
Both
use of and registration of the mark OPTUM by Respondent pre-dates that of the
Complainant.
The
mark of the Registration is identical to the domain name that is the subject of
this proceeding.
1. Complainant is a corporation organized
under the laws of the State of Delaware with principal offices in Costa Mesa,
California.
2. Complainant is a company that develops
and markets computer software for optimizing supply chain utilization.
3. The name of the corporation is OPTUM,
INC.
4. Complainant registered OPTUM with
the United States Patent and Trademark Office, on the Trademark Service Mark
Principal Register, as Registration No. 2,171,601
showing Registration date of
July 7, 1998.
5. Complainant uses OPTUM as its
trademark.
6. Respondent registered the domain name <optum.biz>
on November 19, 2001.
7. The organization and purpose of
Respondent is not revealed in the pleadings.
The inference is made that Respondent is a business organization
properly formed and in legal existence in the place of its operation.
8. UNITED HEALTHCARE CORPORATION, a
Minnesota Corporation, filed with the United States Patent and Trademark
Office, on the Service Mark
Principal Register, the mark OPTUM, which
was registered on October 26, 1993, as Registration No. 1,801,041.
9. Respondent alleges and offers some proof
that UNITED HEALTHCARE CORPORATION assigned its trademark registration No.
1,801,041 for
OPTUM to UNITEDHEALTH GROUP INCORPORATED in the year 2000. Respondent contends that it, United Health
Group, is the same as UNITEDHEALTH GROUP INCORPORATED, the assignee of OPTUM. Complainant does not dispute these
allegations. They will be taken as true
for the purposes of this proceeding.
10. Complainant has rights and interests in
the mark, OPTUM.
11. Respondent has rights and interests in
the mark, OPTUM.
12. No evidence of bad faith is presented and
none is found.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1)
the domain name is identical 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 or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has rights and legitimate interests in the mark, OPTUM based upon its
ownership of Registration No. 2,171,601 with the United States Patent and
Trademark Office. This satisfies the
requirements of Paragraph 4(a)(i) of the Start-Up Trademark Opposition Policy
and Rules of .BIZ.
Respondent has rights and legitimate
interests in the mark, OPTUM, based upon the assignment of the ownership
of Registration No. 1,801,041, with the United States Patent and Trademark
Office, for
the Service Mark, OPTUM, from the original registrant to
Respondent. The Respondent has rights
to and legitimate interests in the domain name when Respondent illustrates that
it is “the owner or beneficiary
of a trade or service mark that is identical to
the domain name.” see Paragraph 4(c)(i) of the Start-Up Trademark Opposition
Policy and Rules for .BIZ. The
assignment of the mark represents the ownership interest necessary to prevail. see
Fitter Int’l Inc. v. Eenable Inc. and Balance Designs, Inc., D2001-0979
(WIPO Oct. 12, 2001).
The submissions by both parties to this
proceeding are incomplete. The parties
have not complied with Rules 3 and 5.
However, a Panel must decide a complaint on the basis of the statements
and documents submitted. see Rule
15, Start-Up Trademark Opposition Policy and Rules for .BIZ. On that basis, it must be found that
Complainant has failed to prove its case.
No allegations of bad faith or
evidence of bad faith was presented by Complainant.
DECISION
IT IS THE DECISION OF THE
PANEL THAT THE COMPLAINT BE
DISMISSED.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 8, 2002
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