DECISION

Aetna Inc. v. Trademark

Claim Number:  FA0310000205126

PARTIES

Complainant is Aetna Inc. (“Complainant”), represented by Faye A. Dion, 151 Farmington Avenue, Hartford, CT 06156.  Respondent is Trademark (“Respondent”), P.O. Box 908GT, Georgetown, Grand Cayman GT KY.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aetnarx.com>, registered with Dotster.

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 October 24, 2003; the Forum received a hard copy of the Complaint on October 28, 2003.

On October 24, 2003, Dotster confirmed by e-mail to the Forum that the domain name <aetnarx.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 October 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 2003 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@aetnarx.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 December 1, 2003, 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 makes the following assertions:

1. Respondent’s <aetnarx.com> domain name is confusingly similar to Complainant’s AETNA mark.

2. Respondent does not have any rights or legitimate interests in the <aetnarx.com> domain name.

3. Respondent registered and used the <aetnarx.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Since 1853, Complainant and its affiliates have continuously used the AETNA mark in connection with a wide variety of insurance, financial and health care services.  Complainant first registered the AETNA mark with the United States Patent and Trademark Office (“USPTO”) on October 30, 1923.  Complainant, directly or through a wholly-owned subsidiary, currently holds many registrations with the USPTO including Reg. No. 1,939,423 (registered on December 5, 1995) for the AETNA mark for “health care services provided through preferred provider or exclusive provider organizations, health maintenance organizations and point of service plans.”  Complainant also holds trademark registrations and applications for its AETNA mark in thirty-four other countries and/or regions. 

Complainant, directly or through a wholly-owned subsidiary, holds many domain name registrations that correspond with its AETNA mark, including <aetna.com>, <aetna.net>, <aetnarx.net> and <aetnarx.org>.  Complainant’s website located at <aetna.com> received over 330 millions hits in 2002, and over 38 million hits in September 2003, alone.

On May 12, 2003, Respondent registered the <aetnarx.com> domain name.  Respondent is using the domain name to host a search engine.  The links appearing in the directory at Respondent’s website include “Aetna health insurance”, “Aetna insurance” and “Aetna health care”, which all link to websites that provide services that directly compete with Complainant. 

Respondent is not affiliated with Complainant and has not been licensed or otherwise authorized to use the AETNA mark.

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 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 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

The Panel finds that Complainant has established rights in the AETNA mark through registration of the mark with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <aetnarx.com> domain name combines Complainant’s AETNA mark with the abbreviation for a medical prescription, “rx”, and adds the top-level domain “.com”.  In this situation, the addition of the letters “rx” to Complainant’s mark furthers the confusing similarity between the domain name and Complainant’s mark because the letters “rx” describe services offered by Complainant.  Furthermore, the likelihood of confusion is even greater because Complainant also operates two websites that include its entire AETNA mark followed by the letters “rx”, using different top-level domains.  Moreover, the addition of the top-level domain “.com” is insignificant as every domain name requires a top-level domain at the time of registration.  Thus, the Panel determines that the domain name <aetnarx.com> is confusingly similar to Complainant’s AETNA mark pursuant to Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (“Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not submitted a Response to the Panel.  Thus, Respondent has failed to describe any circumstances showing that it has rights or legitimate interests in the <aetnarx.com> domain name.  As there is only evidence supporting Complainant’s allegations, the Panel finds that Respondent lacks rights or legitimate interests in the domain name at issue.  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 with respect to 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 Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise).

Complainant has not authorized or licensed Respondent to use its AETNA mark for any purpose.  In addition, there is no evidence before the Panel suggesting that Respondent is commonly known by the <aetnarx.com> domain name.  Thus, the Panel finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent is using the <aetnarx.com> domain name to link Internet users, who are searching for services offered by Complainant, to Complainant’s competitors’ websites.  Using Complainant’s mark to mislead and divert its legitimate customers to Complainant’s competitors’ websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration and use of the <aetnarx.com> domain name creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the services offered through the links at the website.  The Panel infers that Respondent receives referral fees when it links Internet users to Complainant’s competitors’ websites.  Furthermore, Respondent’s use of the domain name that is confusingly similar to Complainant’s mark to direct Complainant’s unsuspecting customers to its competitors website is harmful to Complainant’s business, tarnishes Complainant’s reputation and diminishes the goodwill of Complainant’s mark.  Thus, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Moreover, Respondent registered the <aetnarx.com> domain name with either actual or constructive knowledge of Complainant’s rights in the AETNA mark.  It is presumed that Respondent had at least constructive knowledge of Complainant’s rights in its mark as Complainant’s mark was registered with the USPTO prior to Respondent’s registration of the domain name.  Furthermore, it can be inferred that Respondent had knowledge of Complainant’s rights in its mark and the services offered by Complainant as Respondent’s domain name is comprised of Complainant’s entire mark and the letters “rx”, which describe a line of business conducted by Complainant.  Further evidencing Respondent’s knowledge of Complainant’s rights in the AETNA mark is the fact that Respondent is using the AETNA mark to link Internet users to Complainant’s competitors’ websites.  Thus, the Panel finds that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

Accordingly, 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 relief shall be GRANTED.

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

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

Dated:  December 8, 2003

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