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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Humana Inc. v. Domains by Proxy, Inc. / MGAVENTURESLIMITED

Case No. D2008-0040

1. The Parties

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

The Respondent is Domains by Proxy, Inc., United States of America; MGAVENTURESLIMITED, Zimbabwe.

2. The Domain Name and Registrar

The disputed domain name <hummana-medicare.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2008. On January 11, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 11, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing underlying 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 January 15, 2008, providing the underlying 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 January 18, 2008. 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”), 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 Respondents of the Complaint, and the proceedings commenced on January 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2008. On February 8, 2008, the Center received an e-mail communication form the Respondent, asking the Center to contact the Complainant in order to initiate a transfer request of the disputed domain name to the Complainant. The Center informed the Complainant of Respondent’s communication and of the possibility to suspend the proceedings to explore a settlement between the parties. On February 13, 2008, the Complainant informed the Center of their decision to continue with the proceeding rather than settle. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2008.

The Center appointed P-E H Petter Rindforth as the sole panelist in this matter on February 21, 2008. 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.

The Administrative Panel shall issue its Decision based on the Complaint, the Amended Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.

4. Factual Background

The Complainant, based in the United States, is a publicly traded health benefits company, 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 is the owner of the following trademark registrations:

- U.S. No. 1,305,479 “HUMANA” word, registered on November 13, 1984, in respect of hospital / healthcare services in Intl Class 42;

- U.S. No. 1,576,782 “HUMANA” word, registered on January 9, 1990, in respect of services in classes 36 and 42;

- Canadian No. 212,210 “HUMANA” word, registered on March 1976;

(Annexes 4 – 6 of the Complaint, copies of the Certificates of Registration)

The Complainant is also the owner of a number of other trademark registrations, including HUMANA, such as HUMANA & DESIGN, HUMANA FREEDOM, HUMANA ACTIVE OUTLOOK, HUMANAFIRST, HUMANA HEALTH, HUMANA FAMILY, HUMANA ACCESS, HUMANADENTAL, in the United States and Puerto Rico, as well as pending applications in the U.S. and other countries/regions, including the EU (Annexes 7 – 8 of the Complaint).

The Complainant is the holder of more than 100 domain name registrations consisting of or incorporating “humana” (Annex 12 of the Complaint).

The disputed domain name was registered on December 9, 2005. No detailed information is provided about the Respondent’s business activities, apart from what is mentioned below by the Complainant and from the Respondent’s e-mail correspondence of February 8, 2008, to the Center, in which the Respondent informed that it is a small UK based company.

5. Parties’ Contentions

A. Complainant

The Complainant informs that its revenues for the year ending December 31, 2006, were USD 21.4 billion. As of September 30, 2007, the Complainant had approximately 11.3 million members in its medical insurance programs and 1.9 million members in its specialty products programs (Annex 3 of the Complaint). The Complainant’s website located at “www.humana.com” logged the following traffic in 2006: 13,250,119 visits from 5,583,684 unique visitors; 2,138,754 average hits per weekday; 1,277,413 average hits per weekend day; 87,984 average page views per day (Annex 3 of the Complaint).

The HUMANA mark is promoted through advertising in various media in the U.S. (Samples provided as Annex 9 of the Complaint), and through co-promotions with other companies and organizations (Annex 10 of the Complaint). Complainant’s current advertising expenditures are in excess of USD 40 million per year. In addition to the Complainant’s own significant efforts and expenditures with respect to its mark, the HUMANA mark receives a great deal of media attention globally and nationally.

The Complainant state that it has used the mark HUMANA, which is a coined term not appearing in any dictionary, since at least as early as 1973.

Complainant argues that <hummana-medicare.com> is confusingly similar to the Complainant’s trademark HUMANA, with the addition of the term “medicare”, referring to a federal health insurance program of the United States government, also being one of the areas of healthcare insurance services in which the Complainant is engaged.

The Complainant points out that its use of the HUMANA trademark predates Respondent’s domain name registration by at least thirty-two years. The Complainant has not authorized the Respondent to use or register any of the Complainant’s trademarks.

The Respondent has used <hummana-medicare.com> in connection with a portal site offering links to the sites of Complainant’s competitors (a copy of the website provided as Annex 13 of the Complaint), which is not considered as a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the domain name.

The Respondent’s use of the disputed domain name as a portal site offering links to the sites of Complainant’s competitors, constitutes registration and use in bad faith. The Complainant argues that the trademark HUMANA has a strong reputation and is widely known, and that the Respondent clearly had actual knowledge of Complainant’s trademark rights at the time of the domain name registration. The Complainant suggests that the Respondent’s use of the domain name also benefits the Respondent by generating click-through commissions.

The Complainant states that the Respondent is a competitor of the Complainant, referring to Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 (finding that the term “competitor” embraces not only direct commercial competitors, but simply any person acting in opposition to another), and that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant.

Finally, the Complainant claims that the Respondent has intentionally attempted to attract visitors to its site, for commercial gain, by creating a likelihood of confusion as to source, sponsorship, or affiliation, all of the above being evidence of registration and use in bad faith.

The Complainant requests the Administrative Panel to issue a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

The Respondent(s) in this proceeding are identified as (i) Domains by Proxy, Inc., Scottsdale, Arizona, United States of America, and (ii) MGAVENTURESLIMITED, Zimbabwe. As the first named Respondent is a privacy service who never owned or controlled the use of the disputed domain name, and the second Respondent has been identified by the Registrar and identified itself in the abovementioned communication with the Center, the Panel will hereafter only refer to MGAVENTURESLIMITED as the (only) Respondent.

A. Identical or Confusingly Similar

The Complainant has established rights in the HUMANA trademark in the U.S. through registration numbers 1,305,479 “HUMANA”(word) and 1,576,782 “HUMANA” (word), as well as through trademark registrations in other jurisdictions. See Innomed Technologies, Inc. v. DRP Services, NAF Case No. FA 221171 (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., WIPO Case No. D2001-0217 (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

The relevant part of the disputed domain name for purposes of confusing similarity is “hummana-medicare”. This term consists of a presumed misspelling of the Complainant’s trademark HUMANA (with an extra letter “m”) with the addition of the generic word “medicare”. As stated in many UDRP cases, obvious misspellings, minor changes or the addition of a generic term does not necessarily distinguish a domain name from a trademark. The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term “online” … is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”).

In the present case, the word “medicare” refers directly to some of the services of the Complainant.

Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is apparently not an authorized agent or licensee of the Complainant and has no other permission from the Complainant to apply for any domain name incorporating the trademark HUMANA or words confusingly similar thereto.

By not submitting a formal Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interest in the domain name.

The Respondent is using the disputed domain name to operate a domain parking website that displays third-party hyperlinks to websites in direct competition with the Complainant. Such use cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy, see Vance Intenational, Inc. v. Jason Abend, NAF Case No. FA 970871 (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Respondent and underlying registrant, MGAVENTURESLIMITED, is listed in this proceeding with an address in Zimbabwe, however in its February 8, 2008 e-mail communication with the Center, the Respondent states “we are a small UK based company”. As this is the only address information received directly from the Respondent, the Panel finds no reason to question the same.

The Complainant states that it has used the mark HUMANA since at least as early as 1973 and that it is a well known trademark in its particular field of business. The Panel concludes that this statement is well supported by the evidence filed by the Complainant.

The Panel notes that the disputed domain name was created on December 9, 2005, which is more than three months after the Complainant’s application for HUMANA as a Community Trademark. The CTM Application No 4,561,858 HUMANA word refers to health care services in Classes 35, 36, 42 and 44, among them certain services provided “via the Internet”.

Being a company based in one of the member states of the European Union, it seems to the Panel more than a simple coincidence that the Respondent shortly after the CTM Application registered a domain name consisting of a misspelling of a widely known mark, with the addition of a generic term closely related to the business of the Complainant and started to offer “medicare” services on the Internet. In other words: the Respondent must have been aware of the Complainant’s trademark rights when registering the domain name.

The Panel also finds that Respondent’s use of the <hummana-medicare.com> domain name to display hyperlinks to various third-party websites, including some in direct competition with Complainant, constitutes disruption under paragraph 4(a)(iii) of the Policy, and is thus evidence of bad faith registration and use. See EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368 (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Red Hat, Inc. v. Dave Haecke, NAF Case No. FA 726010 (finding that the respondent engaged in bad faith registration and use by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

Thus, this Panel concludes that the domain name is both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.

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 <hummana-medicare.com> be transferred to the Complainant.

P-E H Petter Rindforth
Sole Panelist

Dated: March 6, 2008