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Humana Inc. v. Domain Deluxe [2005] GENDND 799 (10 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Humana Inc. v. Domain Deluxe

Case No. D2005-0231

1. The Parties

The Complainant is Humana Inc., Louisville, Kentucky, United States of America, represented by Greenebaum Doll & Mcdonald PLLC, United States of America.

The Respondent is Domain Deluxe, of Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <humanahealthcare.com> (the “Domain Name”) is registered with The Registry at Info Avenue d/b/a IA Registry (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on March 2, 2005, and in hard copy on March 3, 2005. The Center transmitted its request for registrar verification to the Registrar by email on March 3, 2005. The Registrar replied on March 4, 2005, confirming that it had received a copy of the complaint, that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name was locked, and that the language of the registration was English; and providing the contact details listed in its Whois database in respect of the registration.

The Registrar did not confirm that the Respondent had submitted in the registration agreement to the jurisdiction of the courts at the location of its principal office. However, the full copy of the registration agreement annexed to the complaint contains such a submission in its clause 18.

The Center verified that the Complaint satisfied the formal requirements of the Policy, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2005. The notification was made by email and courier to the addresses recorded in the Registrar’s Whois database and to postmaster@humanahealthcare.com. The transmission to postmaster@humanahealthcare.com was returned as undeliverable, but the notifications to the postal and email addresses on the Whois database appear to have been delivered successfully. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2005.

The Complainant elected in the complaint to have the dispute decided by a three member panel. Accordingly, the Center appointed Jonathan Turner, Hugues G. Richard and Hong Xue as panelists in this matter on April 26, 2005. Each member of 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.

Having reviewed the file, the Panel is satisfied that the complaint complied with applicable formal requirements, was duly served on the Respondent and has been submitted to a properly constituted panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant provides a variety of health insurance and related services, and is a leading company in this field in the United States, with 2004 revenues of US$13.1 billion and some 8.7 million people covered by its policies. The Complainant has used the name “Humana” for its services since 1973 and has registered “HUMANA” as a trademark in the United States and Canada. The Complainant’s website at “www.humana.com” received over 8 million visits by more than 1.7 million visitors in 2004. The Complainant advertises itself under the name “Humana” in newspapers and on television in the United States; its annual expenditure on advertising exceeds US$20 million. It also promotes itself by press releases and co-promotions, for example with the PGA Tour and Champions Tour.

The Domain Name was registered by the Respondent in November 2001, and is currently pointed to a web page containing links to various healthcare sites, including sites of competitors of the Complainant. The Complainant’s representatives sent a letter of complaint to the Respondent on January 21, 2005, but did not receive any reply.

The Respondent was found by a WIPO Panel in WIPO Case No. D2001-1427, Z-Tel Technologies, Inc. v. Domain Deluxe to have “engaged in a pattern of conduct of registering Domain Names similar to existing trademarks and service marks and offering them for sale at prices representing a considerable profit over their direct costs of registration”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the mark “HUMANA” in which it has rights. In this connection, the Complainant alleges that the addition of the descriptive term “healthcare” to “humana” in the Domain Name exacerbates rather than avoids confusion, since it serves to confirm that the Domain Name refers to the Complainant.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that he registered and is using the Domain Name in bad faith. In particular, the Complainant contends that the Respondent’s use of the Domain Name for a portal website linking to its competitors and others unfairly takes advantage of the reputation of its mark, disrupts its business and diverts traffic through confusion. The Complainant also submits that its allegations of bad faith are corroborated by the finding against the Respondent in the previous case.

The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

As noted above, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), to succeed in this proceeding, the Complainant must prove (a) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (b) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (c) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar

The Panel considers that the Complainant clearly has rights in the mark “HUMANA” by virtue of its trademark registrations in the United States and other countries, and also at common law in the United States by virtue of its extensive use of the mark.

The Panel further considers that the Domain Name is confusingly similar to the Complainant’s “HUMANA” mark. In the Panel’s view, the addition of the word “healthcare” to the mark exacerbates rather than avoids confusion, since it indicates the Complainant’s primary activity and serves to confirm that the domain name refers to the Complainant. In this respect this case resembles America Online Inc. v. Kandl Co. Ltd., WIPO Case No. D2000-1695 where the Panel held that “the intention of the Respondent in preceding the word ‘ICQ’ with the verb ‘need’ … was to increase the impact of the ‘ICQ’ part of the domain name”.

B. Rights or Legitimate Interests

The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not known by the Domain Name and has not used it in connection with a bona fide offering of goods or services. Use for a portal linking to websites of the Complainant’s competitors is not a bona fide offering, but rather one which seeks to profit from confusion with the Complainant, as further discussed below; see e.g. Caesars Entertainment, Inc. v. Infomax, Ltd. (paris-casinos.com).

WIPO Case No. D2005-0032

C. Registered and Used in Bad Faith

It is evident that the Respondent was and is aware of the Complainant and its use of the “HUMANA” mark, since he coupled the names “humana” and “healthcare” when registering the Domain Name. This coupling would not have occurred to anyone who was not aware of the Complainant and the nature of its business.

The Respondent is now using the Domain Name for a portal providing links to sites relating to healthcare, including the Complainant’s competitors. Since the Respondent must be aware of the Complainant and its healthcare activities, the Panel infers that, by using the Domain Name in this way, the Respondent intentionally intends to attract Internet users to his site by creating a likelihood of confusion with the Complainant’s “HUMANA” mark.

The Panel further infers that the Respondent is benefiting from this confusion by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal. Accordingly, the Panel considers that the circumstances constitute evidence of bad faith registration and use of the Domain Name in accordance with paragraph 4(b)(iv) of the Policy.

The previous finding that the Respondent has registered domain names similar to well-known marks and offered them for sale at elevated prices also indicates that a primary purpose of the Respondent in registering the Domain Name was to sell it to the Complainant or a competitor of the Complainant for valuable consideration in excess of his expenses. This constitutes further evidence of bad faith registration and use of the Domain Name in accordance with paragraph 4(b)(i) of the Policy.

The Panel concludes that the Domain Name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <humanahealthcare.com>, be transferred to the Complainant.

Jonathan Turner
Presiding Panelist

Hugues G. Richard
Panelist

Hong Xue
Panelist

Dated: May 10, 2005