WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aetna Inc. v. Above.com Domain Privacy / Belcanto Investment Group Limited
Case No. D2018-0487
1. The Parties
The Complainant is Aetna Inc. of Hartford, Connecticut, United States of America ("United States"), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Belcanto Investment Group Limited of Charlestown, Nevis, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <aetnaseniorservices.com> is registered with Above.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2018. On March 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 12, 2018 (the "Amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 5, 2018.
The Center appointed James Bridgeman as the sole panelist in this matter on April 10, 2018. 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.
4. Factual Background
The Complainant, founded in 1853, is now a publicly traded corporation providing diversified health care benefits services in the United States, which employs approximately 49,500 people serving an estimated 44.6 million people. The Complainant has 23.1 million medical members, 14.5 million dental members, and 15.2 million pharmacy benefit management services members.
The Complainant ranks as number 43 on the "Fortune 500" list of America's largest corporations and in 2016 had a revenue of approximately USD 63.2 billion.
The Complainant is the owner of a large portfolio of trademark registrations in 38 countries or jurisdictions worldwide for marks that consist of or contain "AETNA" including the following in the United States:
- United States Trademark AETNA, registration number 1,939,424, registered on December 5, 1995 for services in international class 36, claiming, first use in commerce on December 31, 1905;
- United States Trademark AETNA registration number 1,939,423, registered on December 5, 1995 for services in international class 42, claiming first use in commerce on February 1, 1982;
- United States Trademark AETNA registration number 4,330,567, registered on May 7, 2013 for services in international classes 35, 36, 42 and 44, claiming first use in commerce on January 18, 2012
The Complainant, through its subsidiary Aetna Life Insurance Company, is the registrant of the domain name <aetna.com> which was created November 2, 1993.
In the absence of a Response or any other communications from the Respondent, and the fact that the Respondent has used a privacy service, there is no information available about the Respondent except for the details provided by the Registrar upon the request of the Center and the allegations made in the Complaint as amended.
The disputed domain name was registered on August 16, 2013 and resolves to a parking page that contains links for goods or services in competition with the Complainant, including links labelled "Coverage Insurance," "Insurance Plan," and "Medicare Supplement Plans." A copy of the Respondent's website has been furnished as an annex to the Complaint.
The second named Respondent is the registrant of the disputed domain name and is using a privacy service provided by the first named Respondent. References to the "Respondent" in this Decision are to the second named Respondent except where the context otherwise indicates.
5. Parties' Contentions
The Complainant relies on its rights in the abovementioned trademark registrations and the goodwill in the AETNA trademark established through extensive and long use of the mark in its insurance business.
The Complainant alleges that the disputed domain name is confusingly similar to the AETNA service mark because it contains the Complainant's mark in its entirety as the dominant element and the overall impression of the designation of the disputed domain name is one of being connected to the trademark of the Complainant. In this regard the Complainant refers to section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"): "in cases where a domain name incorporates the entirety of a trademark … the domain name will normally be considered confusingly similar to that mark." The Complainant also cites the decision of the panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy"); and PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 ("incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark").
Referring to WIPO Overview 3.0, section 1.11.1, the Complainant submits that the top-level domain name ".com" extension "is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." The Complainant also submits that the addition of the words "senior" and "services" do nothing to alleviate any confusing similarity. Previous panels have found that inclusion of the word "services" in a disputed domain name also containing a complainant's trademark is confusingly similar to the trademark. In this regard the Complainant refers inter alia to the panel decision in Accor v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2017-2334 (finding <accorservicesdirect.net> confusingly similar to ACCOR and stating: "[t]he addition of merely descriptive wording to a trademark in a domain name is insufficient to distinguish a domain name from a complainant's trademark and in itself insufficient to avoid a finding of confusing similarity under the first element of the UDRP").
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name alleging that the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the AETNA trademark in any manner.
By including commercial links for third-party websites – including links for services competitive with the Complainant, the Respondent has failed to create a bona fide offering of goods or services under the Policy – and, therefore, the Respondent cannot demonstrate rights or legitimate interests under paragraph 4(c)(i) of the Policy. For example, as a panel wrote in MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550, "the operation of commercial link services of this type, designed to lure Internet users and divert them to other commercial sites by the use of domain names identical or similar to a complainant's trademark, do not confer a legitimate right to or interest in a domain name."
To the Complaint's knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. Therefore, the Complainant argues that the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy. Specifically, according to the WhoIs record, the registrant of the disputed domain name is Above.com Domain Privacy – not "Aetna" or anything similar thereto.
By using the disputed domain name in connection with a monetized parking page, the Respondent's actions are clearly commercial and, therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. See, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066 (use of a domain name in connection with a web page that "only contains advertisements as sponsored links" is "for presumed commercial gain"); Zions Bancorporation v. Domain Administrator, Fundacion Private Whois, WIPO Case No. D2014-0465 ("a parking website containing sponsored links… cannot be considered either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name as the Respondent is unduly profiting from the Complainant's goodwill by misleading Internet users to its website"); and Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (a disputed domain name "pointing to a website featuring PPC [pay-per-click] links… could not be construed as a bona fide or legitimate noncommercial or fair use").
The Complainant alleges that the disputed domain name was registered and is being used in bad faith by the Respondent.
The Complainant submits that its AETNA trademark is famous or well-known because (a) it was first used in 1853 – 160 years before the Respondent registered the disputed domain name, (b) the AETNA trademark is protected by at least 137 trademark registrations in at least 38 countries or jurisdictions worldwide, the oldest of which was first used 112 years ago, (c) the Complainant is one of the leading diversified health care benefits companies in the United States, with a network of 1.15 million health care professionals serving an estimated 44.6 million people, generating annual revenue of approximately USD 63.2 billion, and (d) the Complainant ranks as number 43 on the "Fortune 500" list of America's largest corporations. Referring to WIPO Overview 3.0, section 3.1.4, the Complainant submits that the mere registration of a domain name that is identical or confusingly similar to such a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
It is further submitted by the Complainant that the Respondent's commercial use of the disputed domain name which incorporates the Complainant's trademark to resolve to monetized parking pages which include links for services competing with those offered by the Complainant, and the lack of any indication that the Respondent's websites are not associated with the Complainant, create the likelihood that a website visitor would be led to the Respondent's website, or make decisions once he or she has arrived at the Respondent's website, based on a mistaken belief that the Complainant is the source of the website or that Complainant has sponsored, is affiliated with or has endorsed the website constitutes bad faith under paragraph 4(b)(iv) of the Policy.
The Complainant submits that such bad faith can be found even if the Respondent should claim to be unaware of the monetized parking page associated with the disputed domain name. The WIPO Overview 3.0, paragraph 3.5 states particularly with respect to "automatically" generated pay-per-click links, that panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name, nor would such links ipso facto vest a respondent with rights or legitimate interests. Neither the fact that such links are generated by a third party such as a registrar or auction platform, or their affiliate, nor the fact that the Respondent itself may not have directly profited, should by itself prevent a finding of bad faith.
The Complainant argues that in any event, in the present case, the Respondent has continued to publish the monetized parking page associated with the disputed domain name even after being contacted by the Complainant, so the Respondent cannot claim that it is unaware of the monetized parking page. The Complainant sent a demand letter to the Respondent regarding the disputed domain name on February 5, 2018. On February 7, 2018, the Complainant received an email offering to sell the disputed domain name for USD 950. On February 13, 2018, the Complainant responded to that email, rejecting the USD 950 offer and instead made a counteroffer to reimburse the Respondent for the registration fee associated with the disputed domain name, that is, USD 9.45, in exchange for transfer of the disputed domain name to the Complainant. As of the date of filing of this Complaint the Complainant had not received a response to this counteroffer. Copies of these communications have been included in the annex to the Complaint.
Furthermore, because the Complainant's mark is so widely known the Respondent cannot credibly claim to have been unaware of the mark. Both the Complainant and the Respondent are located in the United States and the Complainant has obtained a federal trademark registration pre-dating the relevant domain name registration the registrant of the disputed domain name had constructive notice of the Complainant's rights.
Finally in the Amended Complaint the Complainant alleges that the newly identified second named Respondent is a serial cybersquatter who is no stranger to UDRP proceedings as is demonstrated by the finding of the panel in Fiberweb Geosynthetics Limited v. Belcanto Investment Group Limited, NAF Claim No. 1599564.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Complainant requests that this Panel direct that disputed domain name be transferred to it in accordance with the Policy.
Paragraph 4(a) of the Policy requires the Complainant to establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its rights in the AETNA service mark through its ownership of the abovementioned United States trademark registrations and through long and extensive use of the mark in connection with its insurance business for many years.
Having compared both, this Panel finds that the disputed domain name <aetnaseniorservices.com> is confusingly similar to the Complainant's service mark. The disputed domain name is composed of the Complainant's AETNA mark in its entirety in combination with the words "senior" and "services" and the generic Top-Level Domain ("gTLD") extension ".com". The Complainant's AETNA mark is the first, dominant, and only distinctive element of the disputed domain name. The other elements "senior" and "services" are descriptive commonplace words. The gTLD extension ".com" may be ignored in the circumstances of the present Complaint for the purposes of comparison.
The Complainant has therefore succeeded in the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has provided convincing evidence that it has rights in the AETNA mark; that the AETNA mark and brand has been used extensively by the Complainant in connection with the provision of insurance services in the United States, where the Respondent is situated and elsewhere; that the Respondent is using the disputed domain name, which is confusingly similar to the Complainant's mark to resolve to a website that appears to provide monetized links to services that compete with the Complainant; that the Respondent has no connection or association with the Complainant; and that the Complainant has not given the Respondent permission to use its registered service mark.
In such circumstances the burden of production shifts to the Respondent to prove that it has such rights or legitimate interest. The Respondent has failed to file a Response or provide any evidence of its rights in the disputed domain name. The use of the confusingly similar disputed domain name as the address of a webpage that appears to provide links to competing service providers cannot confer a legitimate right to or interest in a domain name.
The Respondent has therefore failed to discharge the burden of production and the Complainant has therefore satisfied the second element of the test in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
On the evidence adduced it is improbable that the registrant of the disputed domain name was unaware of the Complainants name, mark, reputation and goodwill when the disputed domain name was chosen and registered.
The word AETNA is a unique word and it was chosen as the dominant part of the disputed domain name in combination with the words "senior" and "services" which together reference the Complainant and the services which it offers to older people.
The Respondent has caused, permitted or allowed the disputed domain name to resolve to a website which provides links to competitors of the Complainant. This Panel must conclude that the disputed domain name was registered and is being used by the Respondent in order to take predatory advantage of the Complainant's goodwill in order to divert Internet traffic to the Respondent's website by confusing the general public.
This Panel therefore finds on the balance of probabilities that the disputed domain name was registered and is being used in bad faith to intentionally attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Complainant's website.
As the Complainants have also succeeded in the third and final element of the test in Policy 4(a) of the Policy, they are entitled to the relief sought.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aetnaseniorservices.com> be transferred to the Complainant.
Date: April 25, 2018