The Complainant is Humana Inc. of Louisville, Kentucky, United States of America, represented by Greenebaum Doll & Mcdonald PLLC, United States of America (the “Ü.S.”).
The Respondent is Yao Renfa of Pinghu, Zhejiang Province, the People's Republic of China, represented by Zhang Jianling, China.
The disputed domain name <humana.mobi> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2009. On October 30, 2009, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the disputed domain name. On November 3, 2009, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 3, 2009, the Center transmitted an email to the parties in both Chinese and English with respect to the language of proceedings. On November 6, 2009, the Complainant submitted a request that English be the language of proceedings. On November 9, 2009, the Complainant forwarded the Respondent's request that Chinese be the language of proceedings to the Center. On November 11, 2009, the Complainant submitted an Amendment to the Complaint.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2009. The Response was filed with the Center on December 1, 2009.
The Center appointed Linda Chang as the sole panelist in this matter on December 15, 2009. The Panel finds that it was properly constituted. 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.
Due to a special circumstance, the Panel required an extension until January 5, 2010 to deliver the decision. The Center duly notified the parties of the new date on the December 29, 2009.
Language of Proceeding
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise, with regard to the circumstances of the case.
In the present case, the registration agreement for the disputed domain name is Chinese. The Complainant has submitted a request that English be the language of the proceeding because, as a US company, it is unable to communicate in the Chinese language, and if the Complaint, including all its annexes, are to be translated into Chinese, it would not only delay the proceeding but also make proceeding much more expensive. The Complainant further argues that English is a widely used language and the Respondent is assumed to be familiar with the English language, judged from the fact that the domain name <humana.mobi> is composed of latin letters rather than Chinese characters and that the same Respondent used to own at least two other latin letter domain names, one of which is <groupedanone.mobi> which was the subject matter of a previous UDRP proceeding under Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582.
The Respondent requests the language of proceeding be Chinese because it does not know the English language. Further more, translation of the submission would be a small cost to the Complainant.
It is the Panel's view that UDRP is an administrative proceeding designed to provide an expedited and cost effective remedy to the parties on domain name disputes. Judging from the facts that the domain name the Respondent has selected to register is a Latin letter name and that the Respondent has made its response in English, the Panel tends to consider the Respondent has the capability to understand the English language. On the other hand, however, the Complainant is a U.S. entity and its authorized representative is a U.S. citizen. They do not have the capability to understand the Chinese language at all. If the Complainant were required to submit all documents in Chinese, this administrative proceeding would be unduly delayed and the translation would also create substantial expenses to the Complainant. Therefore, and guided by the decision in Compagnie Gervais Danone v. Yao Renfa, supra, and the decisions cited therein, the Panel decides that English shall be the language of this administrative proceeding.
The Complainant is one of the United States' largest publicly traded health benefits companies, offering a diversified portfolio of health insurance products and related services through traditional and consumer-choice plans to employer groups, government-sponsored programs, and individuals.
The Complainant has used the mark HUMANA since at least 1973.
The mark HUMANA is currently used in connection with various healthcare and health insurance services. The Complainant owns a number of trademark registrations for HUMANA on various services including “hospital services; healthcare services; health insurance administration services; health insurance brokerage services and health insurance underwriting services” in the United States of America.
The Respondent registered the domain name <humana.mobi> in September 2006. The domain name had not been used by the time the Complainant filed the dispute with the Center.
Identical or confusingly similar
The Complainant claims that it owns the following incontestable U.S. Trademark Registrations:
- No. 1,305,479 for HUMANA, for use in connection with “hospital services; healthcare services” in International Class 42.
- No. 1,576,782 for HUMANA, and No. 1,575,512 for HUMANA (Stylized), both for use in connection with “health insurance administration services; health insurance brokerage services; health insurance underwriting services” in International Class 36 and “health care services through health maintenance organizations including physician services, hospital services and other ancillary health care services” in International Class 42.
- No. 3,144,451 for HUMANA, for use in connection with “publications, namely, magazines newsletters, booklets, brochures, posters, and printed forms in the fields of managed and self-funded health care, health care plans, dental care, dental plans, vision care, and vision plans, health, nutrition, wellness, lifestyles, life insurance, employee benefit programs, pre- and post-health care, parenting, and employee standards and conduct” in International Class 16; “educational services, namely, conducting classes, workshops, seminars, programs and conferences in the fields of health, wellness, nutrition, diet, health care services, dental plans, and vision plans; arranging and conducting health fairs and conferences; arranging and conducting physical exercise programs for employees and clients” in International Class 41; and “providing online non-downloadable software for comparing and analyzing insurance and employee benefits products and plans; providing online non-downloadable software for tracking, analyzing and providing insurance account information to insurance agents and brokers; providing online non-downloadable software for predictive modeling in the fields of outcomes research, consumer research, consumer behavior, business marketing, business management; and providing online non-downloadable software predictive modeling software for use in management and analysis of population data” in International Class 42.
- No. 3,497,184 for HUMANA, for use in connection with “promoting the physical exercise programs of others to employees and clients” in International Class 35; “providing information in the fields of dental plans and vision plans to employees and clients” in International Class 36; and “providing information in the fields of health, wellness, nutrition, diet, and health care to employees and clients; providing health care information of others to employees and clients by telephone, electronically and via the internet” in International Class 44.
- No. 3,565,877 for HUMANA, and No. 3,565,878 for HUMANA (Stylized), both for use in connection with “cost and business management of health, dental and workers' compensation benefit plans for others; cost management for the health benefit plans of others; health care cost containment; health care cost review; health care utilization and review services; managed care services, namely, electronic processing of health care information; supplying prescription drugs to health plan participants for the funding organization; prescription drug programs for drug providers, namely, providing mail-order pharmacies; physician referrals; scheduling of appointments for patients of medical, dental, vision and healthcare professionals, practitioners, and facilities; providing employee relations information regarding standards, ethics, benefits and programs and services available to employees via the Internet; providing online directory information services also featuring hyperlinks to other websites; providing sales and marketing data and data analysis to manufacturers and suppliers of pharmaceutical products and health care products and supplies; consumer research including the analysis of consumer behavior and consultation related thereto; business research in the field of consumer behavior; providing business marketing and management information; and business consulting services in the field of outcomes research and consumer research, and providing business marketing and management information” in International Class 35; “underwriting, organizing and administration of pre-paid and self funded health care, dental, vision and prescription drug services and plans; health, dental, and life insurance underwriting services; electronic online underwriting, organization, and administration of health, dental, and life insurance; insurance claims processing and administration; administration of prescription drug programs for drug coverage insurers; organizing and administration of employee benefit plans, flexible savings plans, and medical spending accounts; organizing and administration of health management organizations; administration of health, dental and workers' compensation benefit plans for others; and charitable fund-raising and sponsorship of charitable fund-raising services” in International Class 36; “pharmaceutical, health and medical research in the fields of patient analysis, population data, modeling anticipated events and outcomes research” in International Class 42; and “health care services; health care services in the nature of health maintenance and preferred provider organization, dental programs, vision programs, prescription drug programs, and health management organizations; health care services in the nature of health maintenance and preferred provider organizations, dental programs, vision programs, prescription drug programs, and health management organizations all provided via an on-line computer network, electronically, telephonically, and via email; health maintenance organizations and preferred provider organizations services in the field of pre-natal care; pre-natal care services; health care services provided by a network of healthcare professionals and service providers; behavioral health disease management program, namely, medical counseling and medical services in the field of behavioral health disease management; and providing online service for individual health and fitness assessment and evaluation” in International Class 44.
- No. 2,186,854 for HUMANA & Design, for use in connection with “underwriting, organizing and administration of pre-paid health care services and plans; health and life insurance underwriting services; dental insurance underwriting services” in International Class 36.
The Complainant states that HUMANA mark is a coined term not appearing in any dictionary. Accordingly, it is a strong mark deserving of the greatest protection against infringing uses.
The Complainant further states that HUMANA mark is promoted widely through advertising in various media, including (a) placements in major U.S. newspapers, such as the Chicago Sun Times (daily circulation 312,274), Denver Post (255,000), Atlanta Journal-Constitution (250,000), Dallas Morning News (332,000), and Wall Street Journal (2,000,000); (b) regional placements in major U.S. magazines, such as Business Week, Forbes, Fortune, Fortune Small Business, Inc., and Money; (c) network and cable television spots in over twenty U.S. markets; (d) radio spots in Atlanta, Chicago, Houston, Indianapolis, and Louisville; (e) exhibits at about 35 trade shows annually, with over 10,000 attendees; and (f) the Complainant's own website located at “www.humana.com”. Representative samples of advertising of HUMANA have been provided. The Complainant claims the current advertising expenditures are in excess of USD197 million per year.
In addition to the Complainant's own significant efforts and expenditures with respect to its mark, the Complainant states that the HUMANA mark receives a great deal of media attention globally and nationally. The mark is promoted through press releases and unsolicited media coverage, including radio, television, and newspapers.
The Complainant states that it also owns registrations for well over four hundred domain names consisting of or incorporating “humana” as the second level domain, including without limitation <humana.com> and <humana.net>. The Complainant's website located at “www.humana.com” logged the following traffic in 2008: 20,412,141 visits from 7,127,713 unique visitors, with an average of 146,738 page views per day.
The Complainant states that it has used its HUMANA mark in commerce since at least as early as 1973. The Complainant discovered that <humana.mobi> domain name had been registered by the Respondent when the Complainant attempted to register the domain name for its own use. An Affidavit of Mr. Hahn has been provided. The second-level domain of the Respondent's domain name is identical with the Complainant's famous mark HUMANA.
The Complainant submits that HUMANA is a coined term not having any designated meaning other than that established by the Complainant. Consequently, there can be no difference in the meaning of the terms used by the parties.
Therefore, because the second-level domain “humana” is identical with the Complainant's HUMANA mark, the Complainant asserts it has established the first element of its claim that the domain name is identical with or confusingly similar to a trademark in which the Complainant has rights,.
Respondent has no rights or legitimate Interests in respect of the domain name
The Complainant claims that its use of its HUMANA trademark predates the Respondent's registration of <humana.mobi> by at least thirty-three years.
The Complainant contends that it has not authorized the Respondent to use or register any of its trademarks. The Respondent has not used “humana” in connection with a bona fide offering of goods or services. Rather, the Respondent has passively held the domain name that was meant for use in connection with delivery of an Internet site to mobile telephone users. A true and correct copy of a printout from a “.mobi” emulator website, showing that the domain name <humana.mobi> does not resolve to an active site viewable on a mobile device, has been provided.
The Complainant contends that on information and belief, the Respondent does not operate a business under any name consisting of or incorporating “humana”.
Therefore, the Complainant submits it has established the second element of its claim that the Respondent has no rights or legitimate interests in respect of the domain name.
Registered and used in bad faith
(1) Passive holding is evidence of bad faith
The Complainant alleges that the Respondent's passive holding of the domain name constitutes registration and use of the domain name in bad faith. See the numerous WIPO UDRP decisions that have found bad faith based on passive holding, including the leading case, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, as well as the following: Epson Europe BV v. Armitage, WIPO Case No. D2009-0995; Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028; VEDA GmbH v. Mr. Nicholas Silverstone, WIPO Case No. D2002-1040; Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Teledesic LLC v. McDougal Design, WIPO Case No. D2000-0620.
The Complainant contends that its mark has a strong reputation and is widely known in relation to the services the Complainant offers. The Respondent appears to have registered the domain name at issue on September 26, 2006. There is no evidence that the Respondent has actively used the domain name during the intervening time, though there has been ample time to do so. Therefore, the Respondent's passive holding of the domain name at issue constitutes bad faith use and registration of the name.
(2) A pattern of preventing mark owners from registering corresponding domain names is evidence of bad faith
The Complainant contends that registering a domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name constitutes evidence of bad faith, provided that the Respondent has engaged in a pattern of such conduct. See Policy, paragraph 4(b). Decisions of previous UDRP panels have ordered this Respondent to transfer domain name registrations which it registered in bad faith and in which it had no legitimate interest. See Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582, and Groupe Industriel Marcel Dassault v. Yao Renfa, WIPO Case No. D2007-0338.
The Complainant contends that because the Respondent has registered a domain name consisting of the Complainant's trademark, and because the Respondent has engaged in a pattern of bad faith registration, the Complainant has established the third element of its claim that the Respondent registered and used the domain name in bad faith.
The Respondent does not deny that the domain name is identical with the trademark HUMANA registered by the Complainant in the United States but states that the Complainant does not have the private (exclusive) right in the trademark. Further more, the Complainant's HUMANA mark is not registered nor well known in China, and the Complainant has limited business activities in China.
The Respondent believes it has legitimate interests in the name HUMANA. According to the Respondent, the character in the middle of the Respondent's Chinese name “Ren” means “kindness, benevolence and humanity” and the Respondent has always wanted to be a most merciful person. The connotation of “Ren” coincides with that of “human”. The letter “a” means “first”. Putting “human” and “a” together, it becomes “humana”.
The Complainant's Chinese application for HUMANA was filed in November 2008 which was later than the Respondent's domain name registration date September 26, 2006. The Respondent did not know about the Complainant's trademark when it registered its domain name. The Respondent further adds that there have been many other “humana” registrations in the Chinese Registry before the Complainant filed its application for registration in China. The Respondent also adds that its previous domain name registrations being ordered a transfer because of bad faith does not necessarily mean the domain name in the present case is also registered out of bad faith.
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings:
(A) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(C) the disputed domain name has been registered and is being used in bad faith.
The Complainant has been using the trademark HUMANA since 1970s and is the registered owner of a number of registrations for HUMANA in the United States. The core part of the domain name <humana.mobi> is identical with the trademark. Although the Respondent argues that the Complainant does not have a registered right in China, the Panel holds that both the common law trademark rights and registered trademark rights are recognized by the Policy in the UDRP proceeding. Therefore it is evident that the Complainant has a trademark right in HUMANA and the domain name is identical with or confusingly similar to the trademark.
The Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the disputed domain name. The Respondent argues that the English word “humana” has a meaning of “kindness, benevolence and humanity” which coincide with the meaning of the middle character of the Respondent's Chinese name “Ren” as well as its pursuit of life, while the letter “a” means “the first”.
Having considered the parties' claims and arguments, the Panel finds the Respondent's explanation unconvincing about how it came up with the word “humana”. To the knowledge of the Panel, there is not a correspondence between the Chinese character for “ren” and the English word “humana”. In lack of evidence to show its legitimate rights or interests in the name “humana”, the Panel finds that the Respondent does not have rights or legitimate interests in the domain name.
The domain name was registered since September 2006 without being put into use by the Respondent. Because the domain name is identical with the Complainant's trademark, this passive holding of the domain name has in fact prevented the Complainant from registering and making use of its trademark as a domain name under the top level “.mobi”.
The Complainant has also referred to two other domain names, <groupedanone.mobi> and <dassault.mobi>, which used to be registered by the Respondent and were subject to UDRP proceedings in cases Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582 and Groupe Industriel Marcel Dassault v. Yao Renfa, WIPO Case No. D2007-0338 respectively. Bad faith registration and use were found in both cases.
The Panel agrees that bad faith found in the other two cases involving the same Respondent does not necessarily mean bad faith should automatically be found in the other cases. However, the Panel finds the overall circumstances of this case demonstrate the Respondent's bad faith and the Respondent does not present conpelling evidence to prove otherwise. The Panel therefore finds the Respondent's behavior falling within paragraph 4(b)(ii) of the Policy, which provides the following as a circumstance indicating bad faith registration and use of a domain name:
“a domain name registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct.”
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 <humana.mobi> be transferred to the Complainant.
Dated: January 6, 2010