DECISION

Aetna Inc. v. Peter Carrington a/k/a Party Night, Inc.

Claim Number:  FA0304000154527

PARTIES

Complainant is Aetna Inc., Hartford, CT (“Complainant”) represented by Faye A. Dion. Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam, THE NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aetnauhc.com>, registered with Key-Systems Gmbh.

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 April 11, 2003; the Forum received a hard copy of the Complaint on April 15, 2003.

On April 16, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain name <aetnauhc.com> is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 April 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 6, 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@aetnauhc.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 May 13, 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 <aetnauhc.com> domain name is confusingly similar to Complainant’s AETNA and USHC marks.

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

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

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

FINDINGS

Complainant has used the AETNA mark since 1853 in connection with its insurance, financial and health care services.  Complainant first registered its AETNA mark with the U.S. Patent and Trademark Office in 1923.  Complainant currently holds numerous trademark registrations in the United States and abroad including Registration Numbers 1,939,423 and 822,577.

Complainant also uses the USHC mark in relation to its health care services.  Complainant registered the mark with the U.S. Patent and Trademark Office as Registration Number 2,065,185 on May 27, 1997.

Complainant holds the domain name registrations for numerous domain names that incorporate its marks including <aetna.com> and <aetnaushc.com>.  Complainant’s <aetna.com> website received over 366 million hits in 2002 and over 40 million hits in March 2003 alone.

Respondent, Peter Carrington a/k/a Party Night, registered the <aetnauhc.com> domain name on April 13, 2002.  Respondent is using the disputed domain name to redirect Internet users to <hanky-panky-college.com>, <prescription-drugs.org> and <mp3messenger.com> on a rotating basis.  These websites offer pornographic material, penis enlargement pills, and movie and music downloads.  Respondent is a repeat cybersquatter, as evidenced by the numerous domain name disputes in which Peter Carrington and Party Night are Respondent.  Respondent’s pattern is to register domain names that are misspellings of well known trademarks.

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

Complainant has established that it has rights in the AETNA and USHC marks through registration with the U.S. Patent and Trademark Office.

Respondent’s <aetnauhc.com> domain name is confusingly similar to Complainant’s AETNA and USHC marks.  Respondent merely combines Complainant’s two marks and omits the “s” in the USHC mark.  The omission of a single letter within a mark does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <aetnauhc.com> domain name to redirect Internet users to advertising and pornographic websites.  Respondent is making no actual use of the disputed domain name itself.  The use of a domain name to redirect Internet users is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

Respondent, Peter Carrington, is a repeat cybersquatter.  There is no evidence on record that Respondent is known by any name other than Peter Carrington or Party Night.  Based on this information, the Panel infers that Respondent is not commonly known as AETNAUHC or <aetnauhc.com>.  Thus, Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

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

Registration and Use in Bad Faith

Complainant’s AETNA mark is famous and well known throughout the world.  Respondent is a pattern cybersquatter, known for registering domain names that incorporate variations of famous marks.  Based on these facts, the Panel infers that Respondent had knowledge of Complainant’s marks when it registered the <aetnauhc.com> domain name.  Registration of an infringing domain name, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent is using the <aetnauhc.com> domain name to redirect Internet users to pornographic and advertising websites.  The Panel infers that Respondent is making a profit from the Internet traffic diverted to these websites.  Thus, the Panel finds that Respondent is creating Internet user confusion for its own commercial gain which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]hile an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion"); 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 is using the <aetnauhc.com> to redirect Internet users to a website that features adult content.  The use of a confusingly similar domain name to divert Internet traffic to a pornographic website is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

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

Dated:  May 20, 2003

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