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Humana Inc. v. Henry Tsung [2005] GENDND 802 (9 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Humana Inc. v. Henry Tsung

Case No. D2005-0221

1. The Parties

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

The Respondent is Henry Tsung of Taipei, Taiwan, Province of China.

2. The Domain Name and Registrar

The disputed domain name <humanamedicare.com> (the “Domain Name”) is registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on February 28, 2005, and in hard copy on March 2, 2005. The Center transmitted its request for registrar verification to the Registrar on March 1, 2005. The Registrar responded the same day, confirming 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 registration agreement was in English and contained a submission to the jurisdiction at the location of its principal office, and that the Domain Name would be locked pending this proceeding; stating that it had not received a copy of the Complaint; and providing the contact details for the registrant on its Whois database in respect of the Domain Name. The Center asked the Complainant to send a copy of the Complaint to the Registrar. The Complainant complied and stated that it had sent copies to the Registrar already but these may have been sent to inappropriate email addresses due to defective information provided by the Registrar.

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 7, 2005. The notification was effected by email and courier to the contact details recorded on the Registrar’s Whois database and to postmaster@humanamedicare.com. The notifications by courier and to postmaster@humanamedicare.com were returned as undeliverable, but the notification to the email address on the Whois database appears to have been transmitted successfully. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 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 on April 25, 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 United States federal health insurance program is called “Medicare” and the Complainant’s services include policies provided under the “Medicare” program.

The Domain Name was registered by the Respondent in February 2004, and is currently pointed to a web page containing links to a variety of other websites, with some emphasis on healthcare sites, including sites of competitors of the Complainant and other companies or organizations in this field.

The Complainant’s representatives sent a letter of complaint to the Respondent on December 2, 2004, but did not receive any reply.

Complaints under the Policy have been upheld previously against the Respondent in respect of his registration and use of the domain names <swisre.com>, <wwwtrustbank.com>, <firsthorizonmorgage.com> and <firsthorizonmortgage.com>.

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 name “medicare” to “humana” in the Domain Name exacerbates rather than avoids confusion, since the Medicare program is one of the areas of healthcare provision in which the Complainant is engaged.

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 findings against the Respondent in previous cases.

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 “medicare” to the mark exacerbates, rather than avoids, confusion, since the Complainant provides services inter alia under the United States Federal Government’s Medicare program. Many Internet users in the United States would therefore assume that the Domain Name would designate the Complainant, or the services or a division of the Complainant relating to the Medicare program. In this respect this case resembles WIPO Case No. D2000-1695, America Online Inc. v. Kandl Co. Ltd., 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. WIPO Case No. D2005-0032, Caesars Entertainment, Inc. v. Infomax, Ltd. (<paris-casinos.com>).

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 “medicare” 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 emphasizing links to websites relating to healthcare, including the Complainant’s competitors. Since the Respondent must be aware of the Complainant and its involvement with the “Medicare” program, the Panel infers that, by using the Domain Name in this way, the Respondent intentionally intends to attract internet users to his website 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. This evidence is also corroborated by the previous findings of bad faith registration and use of domain names on the part of the Respondent.

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, <humanamedicare.com>, be transferred to the Complainant.

Jonathan Turner Presiding Panelist
Hugues G. Richard Panelist	Hong Xue Panelist

Dated: May 9, 2005