DECISION

Aetna Inc. v. Kristanto Siswanto

Claim Number: FA0209000124989

PARTIES

Complainant is Aetna Inc., Hartford, CT, USA (“Complainant”).  Respondent is Kristanto Siswanto, Perth, AUSTRALIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aetnahealthcare.com>, registered with OnlineNIC.com.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 10, 2002; the Forum received a hard copy of the Complaint on September 12, 2002.

On September 10, 2002, OnlineNIC.com confirmed by e-mail to the Forum that the domain name <aetnahealthcare.com> is registered with OnlineNIC.com and that Respondent is the current registrant of the name.  OnlineNIC.com has verified that Respondent is bound by the OnlineNIC.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@aetnahealthcare.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The  <aetnahealthcare.com> domain name is confusingly similar to Complainant's AETNA and AETNA U.S. HEALTHCARE marks.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has used the AETNA mark since 1853 in connection with a variety of insurance, financial and health care services.  Complainant first registered the AETNA mark with the United States Patent and Trademark Office on October 30, 1923.  Complainant’s current Registration Number for its AETNA mark is 1,939,423.  Complainant registered its AETNA U.S. HEALTHCARE mark on October 6, 1998 as Registration Number 2,193,408 in relation to the administration of prepaid health care plans and indemnity plans, and underwriting medical and health insurance, and underwriting insurance for health care services as well as health care services in the nature of a health maintenance organization.  Complainant’s longstanding use of the AETNA mark has created tremendous goodwill in the United States and throughout the world.

Complainant currently holds the registration for numerous domain names that incorporate its AETNA and AETNA U.S. HEALTHCARE marks including: <aetna.com>, <aetna.us>, <aetna.biz>, <aetna.info>, <aetnahealthcare.org>, <aetnahealthcare.net>, <aetnaushealthcare.com>, <aetnaushealthcare.info>, <aetnaushealthcare.org>, <aetnahealth.com>, and <aetnahealth.org>.  Complainant’s main website located at <aetna.com> received over 183.5 million hits in 2001, and over 26.4 million hits in July 2002 alone.

Respondent registered the disputed domain name on December 30, 2001.  In a communication to Complainant, Respondent stated that it had “registered the <aetnahealthcare.com> domain name because of the traffic and visitors,” and offered to sell the domain name to Complainant for $750.  Complainant refused the offer and Respondent replied claiming that $750 was a reasonable price because it would cost Complainant more than $3000 for a WIPO action and take about three months to determine the case.  Respondent also told Complainant that if it did take any legal action against Respondent, that it would “simply deregister the domain name and let someone else register it.”

Respondent is using the disputed domain name as a web directory.  Respondent’s website includes links to other websites, including online casinos, as well as game and entertainment sites.  Respondent’s website at <aetnahealthcare.com> is also a portal to other healthcare sites that directly compete with Complainant.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

Identical and/or Confusingly Similar

Complainant has established that it has rights in the AETNA mark and the AETNA U.S. HEALTHCARE mark through registration with the United States Patent and Trademark Office and continuous use.

Respondent’s <aetnahealthcare.com> domain name is confusingly similar to Complainant’s AETNA mark because it incorporates Complainant’s entire mark and merely adds the descriptive term “healthcare” to the end.  Complainant is involved in the healthcare field, therefore the addition of the world “healthcare” merely describes Complainant’s services and does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Furthermore, Respondent’s <aetnahealthcare.com> domain name is also confusingly similar to Complainant’s AETNA U.S. HEALTHCARE mark because it merely omits the “U.S.” portion of Complainant’s mark.  Despite this omission, Complainant’s mark is still the dominant portion of the mark and therefore it is not distinct from Complainant’s AETNA U.S. HEALTHCARE mark.  See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark); see also Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). 

Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent is using the disputed domain name in order to divert Internet traffic to its web directory.  Respondent has admitted that it registered <aetnahealthcare.com> primarily for the web traffic it generates.  The use of a domain name in order to cause a likelihood of confusion that directs Internet users interested in Complainant to Respondent’s website is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Respondent has not submitted a Response in this proceeding.  Therefore, there is no evidence on record that establishes that Respondent is commonly known as AETNA, AETNA HEALTHCARE or <aetnahealthcare.com>.  Furthermore, based on the long established use of the AETNA mark, and Respondent’s communications with Complainant in regards to the domain name, it can be inferred that Respondent is not commonly known by any variation of the AETNA or AETNA U.S. HEALTHCARE marks.  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent admitted to Complainant that it registered the disputed domain name in order to divert Internet users interested in Complainant to its own website.  It can be inferred that Respondent is making a profit from the Internet traffic diverted to its website and the websites that are linked to Respondent’s web directory.  Respondent is therefore using a confusingly similar domain name in order to create a likelihood of confusion for its own commercial gain, and this type of use is considered to be evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).

Respondent offered the domain name for sale to Complainant for $750.  Respondent also threatened to deregister the disputed domain name if Complainant were to bring legal action against it.  It can be inferred from this behavior that Respondent registered the <aetnahealthcare.com> with the intent to sell its rights to Complainant.  Registration of a domain name with the intent to sell, rent or transfer is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <aetnahealthcare.com> be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: October 30, 2002

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