WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

UnitedHealth Group Incorporated v. Universing

Case No. D2002-0723

 

1. The Parties

Complainant is UnitedHealth Group Incorporated, having its principal place of business at MN008-T202, 9900 Bren Road East, Minnetonka, Minnesota, 55343, United States of America.

Respondent is Universing, a company with a place of business at 1035 Namsan-dong, Kyeong Ju, Kyeongbuk, 780-220, Republic of Korea.

 

2. The Domain Name and Registrar

The domain name at issue is <unitedhealthgroup.net> (hereinafter referred to as the Domain Name).

The Registrar for the Domain Name is Tucows, Inc. (hereinafter referred to as the Registrar).

 

3. Procedural History

On August 1, 2002, Complainant filed a Complaint, drafted in the English language, with the WIPO Arbitration and Mediation Center (hereinafter referred to as the "Center"). The Complaint was received via e-mail on August 1, 2002. The hardcopy of the Complaint was received on August 2, 2002.

On August 1, 2002, the Acknowledgement of Receipt by the Center was sent to the Complainant. On the same date, the Center sent the Request for Registrar Verification.

On August 1, 2002, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and further confirmed that:

- a copy of the Complaint was sent to it by the Complainant;

- it is the current Registrar of the Domain Name registration;

- the Respondent is the current registrant of the Domain Name registration;

- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the Policy) applies to the Domain Name;

- the Domain Name will remain locked during the pending administrative proceeding;

- the language of the Registration Agreement is in English;

- the jurisdiction at the location of the principal office of the Registrar for court adjudication does apply as per section 7 of the Registration Agreement;

The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the Rules) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Supplemental Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on August 5, 2002.

The Panel has reviewed the documentary evidence provided by the parties and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the Rules and the WIPO Supplemental Rules.

On August 5, 2002, the Center informed the Respondent of the commencement of the proceedings as of August 5, 2002, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being August 25, 2002.

Between August 9, 2002, and August 15, 2002, email communications were exchanged between the Respondent and the Center.

In a letter dated August 27, 2002, the Center informed the Respondent that it was in default pursuant to the ICANN Rules and the WIPO Supplemental Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.

On September 6, 2002, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties and transmitted the Case File.

The Panel is satisfied that it was constituted in compliance with the Rules and the WIPO Supplemental Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

The Panel has received no further submissions from either party since its formation.

The Panel is obliged to issue a decision on or prior to September 20, 2002, in the English language.

 

4. Factual Background

The following uncontradicted and unchallenged facts appear from the Complaint and the documents submitted in support thereof:

The Respondent registered the Domain Name on April 10, 2002.

The Complaint is based on the mark and trade name UnitedHealth Group used in the United States in connection with providing health care services which include, but are not limited to, health care cost management services, managed health care services, insurance services and administration services for health care benefit plans.

The Complainant is ranked 84th on Fortune magazineís 2002 Fortune 500 list of Americaís largest corporations, 198th on Fortuneís magazineís 2002 global 500 list and has been ranked first or second in Fortune magazineís annual survey of the most admired health care company in the U.S. since 1995. (See Annex B of the Complaint).

The Complainant, through itís subsidiaries, markets its products and services under the UnitedHealth Group mark and name through its website at "www.unitedhealthgroup.com".

The Complainant also owns the following relevant domain names: <unitedhealthgroup.org>, <unitedhealthgroup.info>, <unitedhealthgroup.biz>, <unitedhealthgroup.us>, <unitedhealthgroup.com>. (See Annex C of the Complaint).

On October 29, 1998, the Complainant filed a U.S. federal trademark application based on intent-to-use for the mark UnitedHealth Group. The U.S. Patent and Trademark Office concluded the application was in condition for publication. On April 25, 2002, the Complainant filed a Statement of Use alleging the date of first use in commerce date of January 1999. (See Annex D of the Complaint).

The Complainant owns a number of trademark registrations for the UnitedHealth Group mark worldwide (see Annex E), and a number of pending ones (see Annex F of the Complaint).

On June 14, 2002, Respondent was the owner of 256 domain names (see Annex G of the Complaint).

Respondent owns a website designed for the sale of domain names. The Domain Name was listed on Respondentís page for sale in the amount of 1,000-30,000 $US (see Annex J of the Complaint).

On April 15, 2002, Respondent sent an email to the Complainant indicating that it had been negotiating the sale of the Domain Name to two other buyers and offered to sell the Domain Name to the Complainant (see Annex K of the Complaint).

 

5. Partiesí Contentions

Over and above the uncontested and unchallenged factual background as noted above, which is hereby incorporated herein by reference, it has been contended by:

A. Complainant

It is comprised of a highly diversified family of companies offering services in the health and well-being industry with revenues exceeding $23 billion.

It serves more than 38 million Americans.

Many of Respondentís domain names either are comprised of or incorporate the marks and names of very well known companies (see Annex G of the Complaint).

When a searcher typed in the Domain Name, the searcher was redirected to Respondentís website at "www.universing.net" (see Annex H of the Complaint).

The Domain Name is confusingly similar to the Complainantís trademark.

The Respondent has no rights or legitimate interests in the Domain Name.

The Respondent has made no demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.

At the time the Complaint was prepared, the Respondent had no Internet site at the Domain Name. Instead, the searcher was always redirected to the Respondentís website which offered for sale a large number of domain names containing the marks and names of well known companies to interested buyers for a profit and that displayed photographs of young Korean women. (See Annexes I and J of the Complaint).

The Respondent is not commonly known by the name UnitedHealth Group.

The Respondentís ownership of so many well known terms suggests more than a mere coincidence in Respondentís selection of the domain names.

The Respondentís pattern of registering well known terms and marks suggests a well studied selection of domain names for the purpose of profiting from activities other than maintaining 256 active websites for providing goods and services in commerce. This is also a sign of bad faith.

The Respondent intends to profit from the sale of its ownership of those domain names.

The Respondent registered and is using the Domain Name in bad faith.

The Respondent is using the Domain Name primarily for the purpose of selling the Domain Name for valuable consideration in excess of the out-of-pocket costs directly related to the registration and use of the Domain Name.

The Respondentís website contained an icon entitled "Buy and Sell Domain" which acted as nothing more than an auction site.

The Respondentís offer to sell the Domain Name to the Complainant is evidence that the Respondent has no plans to develop the website and that it is passively holding the website. This is a sign of bad faith.

The Respondent registered the Domain Name for the purpose of preventing the Complainant from using its mark in a corresponding domain name.

B. Respondent

The Respondent has failed to file a timely Response with the Center.

 

6. Discussion and Findings

Introduction

Pursuant to the Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainant to cumulatively show:

(i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and

(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) that the Domain Name was registered and used in bad faith.

These three elements are considered below.

(i) Identity or Confusing Similarity between the Domain Name and Complainant's Trademark

The Panel finds Complainant has rights in the UnitedHealth Group trademark having registered and used it in connection with various types of healthcare services.

Moreover, the Domain Name is identical to Complainant's UnitedHealth Group trademark. The Domain Name incorporates, in whole, Complainantís trademark with no deviation whatsoever.

Pursuant to the above mentioned reasons, the Panel is, therefore, of the opinion that the Complainant has satisfactorily met its burden of proof as required by paragraph 4(a)(i) of the ICANN Policy.

(ii) Rights or Legitimate Interests in the Domain Name by Respondent

The Panel finds the Respondent has no rights or legitimate interests in the Domain Name given there exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the Domain Name.

Additionally, not only is the Respondent not commonly known by the name UnitedHealth Group, the fact that the Domain Name redirects searchers to a website that offers for sale a large amount of domain names containing marks and names of well known companies to interested buyers for a profit and that displays photographs of young women results in a finding of absence of legitimate interests in the Domain Name. See Singapore Telecommunications Limited. v. Domain for SALE, WIPO Case No. D2001-1059 (October 12, 2001) where no legitimate rights were found in a domain name that redirected the public to another website which offered pornographic material and the sale of the domain name to any interested buyer for a profit.

For these reasons, the Panel concludes that, on a balance of probabilities, the Complainant has discharged its burden of showing that the Respondent has no rights or legitimate interests in the Domain Name especially since there has been no explanation or evidence offered by the Respondent to establish the contrary.

(iii) Bad faith in Registration and Use of the Domain Name by the Respondent

The Panel finds the Respondent has acted in bad faith both in the registration and the use of the Domain Name. It appears from the evidence submitted with the Complaint that Respondentís primary objective is to make profits from the sale of the Domain Name for a consideration in excess of the out-of-pocket costs directly related to the registration and use of the Domain Name. Respondentís email to the Complainant offering the sale of the Domain Name is a clear indication of such an intention.

Moreover, Internet users are likely to be induced to believe that the Domain Name connects to a website associated with or sponsored by Complainant given Complainantís use of the UnitedHealth Group trademark. Further, by using Complainantís mark as its Domain Name without any appearance of interest, Respondent is attempting to ride on the fame of Complainantís mark and use that fame to divert consumers to its websites for commercial advantage.

Additionally, the passive holding of a domain registration can amount to use in bad faith, taking into consideration the overall context of the Respondentís behavior. The Panel relies on the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. On this matter, the Panel adopts the finding in McNeil Consumer Brands Inc. v. Mirweb Solutions, WIPO Case No. D2000-0612 (August 3, 2000):

"The Panel is prepared to follow the analogy of the Telstra case and to accept the Complainantís submissions as follows:

a. That the Complainantís mark TYLENOL is a coined arbitrary term that has no meaning apart from in relation to the Complainantís products.

b. The Respondent has held the domain name ``Tylenol.org.`` passively thereby preventing the Complainant from reflecting its trademark TYLENOL in a corresponding domain name.

c. [...]

d. The Respondent has failed to put the domain name to any legitimate non commercial or fair use.

In the absence of submissions from the Respondent the Panel is prepared to accept that there is no counter evidence of any legitimate non commercial or fair use and that accordingly the registration of the domain name ``Tylenol.org` was in bad faith."

Consequently, the Panel finds that Complainant has satisfied its burden to show that Respondent acted in bad faith in registering and using the Domain Name.

 

7. Decision

For the foregoing reasons, the Panel finds that:

- The Domain Name registered by the Respondent is identical to the trademark in which the Complainant holds rights; and

- The Respondent has no rights or legitimate interests in respect of the Domain Name; and

- The Domain Name has been registered and is being used by the Respondent in bad faith.

Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of the Domain Name be transferred to the Complainant and directs the Registrar, Tucows, Inc., to do so forthwith.

 


 

Hugues G. Richard
Sole Panelist

Dated: September 20, 2002