Aetna Inc. v. Vitty Inc.
Claim Number: FA0204000110804
Complainant
is Aetna Inc., Hartford, CT, USA
(“Complainant”) represented by Faye A.
Dion. Respondent is Vitty Inc., Taipei, TAIWAN (“Respondent”).
The
domain name at issue is <aetna.biz>,
registered with 007 Names, Inc.
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.
John
J. Upchurch as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 24, 2002; the Forum
received a hard copy of the Complaint on April 25, 2002.
On
April 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 20,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
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 June 13, 2002, pursuant to STOP Rule 6(b), the Forum
appointed John J. Upchurch
as the single 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 STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<aetna.biz> domain name is identical to Complainant's AETNA mark.
Respondent
has no rights or legitimate interests in the <aetna.biz> domain name.
Respondent
registered the <aetna.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Since 1853, Complainant has used the
AETNA mark in connection with insurance, financial and health care
services. Complainant is well-known
throughout the United States and the world.
Complainant currently owns over eighty trademarks and service marks for
the AETNA family of marks. Complainant
registered the AETNA mark with the United States Patent and Trademark Office as
Registration Number 1,939,423 on December 5, 1995.
Respondent registered the disputed domain
name on March 27, 2002. Complainant’s
investigation has found no evidence that Respondent holds any trademark or
service mark registrations for AETNA.
Respondent is commonly known as “Vitty Inc.”
Paragraph 15(a) of the STOP 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 STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established through registration with the United States Patent and Trademark
Office that it has rights in the AETNA mark.
The AETNA mark is identical to Respondent’s <aetna.biz>
domain name.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See 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”).
There is no evidence, and Respondent has
not come forward to establish that it owns a trademark or service mark for
AETNA or <aetna.biz>.
Without this evidence the Panel is unable to find that Respondent has
rights or legitimate interests in the disputed domain name pursuant to STOP
Policy ¶ 4(c)(i). See Nat’l Acad. Of
Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb.
11, 2002) (finding that, because Respondent did not come forward with a
Response, the Panel could infer that it had no trademark or service marks
identical to <grammy.biz> and therefore had no rights or legitimate
interests in the domain name).
Furthermore,
based on the famous and distinctive nature of Complainant's AETNA mark, any
planned use by Respondent of the <aetna.biz> domain name,
identical to Complainant's famous mark, would be an opportunistic attempt to
attract customer's via Complainant's famous mark and therefore is not
considered a bona fide offering of goods or services pursuant to STOP Policy ¶
4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one
“would be hard pressed to find a person who may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark); see also William L. Lyon & Assocs., Inc. v. Yata,
FA 103043 (Nat. Arb. Forum March 21, 2002)
(finding the Respondent’s “intent to trade [on] the goodwill of
Complainant’s mark, by attracting Internet users confused as to the likely
affiliation between Complainant and Respondent’s website” indicated the
respondent had no rights or legitimate interests pursuant to STOP Policy ¶
4(c)(ii)).
There
is no evidence on record, and Respondent has not come forward to establish that
it is also commonly known as AETNA or <aetna.biz>. Furthermore, based on the famous and
distinct nature of Complainant’s mark, even if Respondent were to have come
forward it would be very difficult to establish that is commonly known as the
disputed domain name. Therefore the
Panel finds that Respondent has no rights or legitimate interests in the
disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June
19, 2000) (finding that Respondent has failed to demonstrate any rights or
legitimate interests in the <twilight-zone.net> domain name since Complainant
had been using the TWILIGHT ZONE mark since 1959); see
also Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA
103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that the famous nature of
Complainant’s GRAMMY mark prevented Respondent from being commonly known by
<grammy.biz>).
The
Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Based on the famous and distinct nature
of Complainant’s AETNA mark it can be inferred that Respondent had knowledge of
Complainant’s mark when it registered the disputed domain name. Registration of a domain name identical to
Complainant’s mark despite knowledge of Complainant’s preexisting rights, is
evidence of bad faith registration. See Gehl Co. v. Gehl, FA 102816 (Nat. Arb. Forum Jan. 30,
2002) (finding that the “long standing use and historic nature” of the
Complainant’s GEHL mark put the Respondent on notice as to the existence of the
mark, thereby making Respondent aware that it was infringing upon Complainant’s
rights); see also Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of
bad faith includes actual or constructive knowledge of commonly known mark at
the time of registration).
Furthermore, the disputed domain name is
identical to Complainant’s well-known mark and therefore any intended use by
Respondent will cause a likelihood of confusion as to the source, sponsorship,
and affiliation of the disputed domain name.
It can be inferred that Respondent intended to use this confusion for
its own commercial gain. This type of
intended use is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Fluor Corp. v. Song, FA 102757
(Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s
<fluor.biz> domain name was identical to the Complainant’s FLUOR mark,
Internet users would likely believe an affiliation between the Respondent and
Complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab,
FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain
name identical to Complainant’s mark to be in bad faith under STOP Policy ¶
4(b)(iv) when use of the domain name would likely cause confusion as to the
affiliation between Respondent and Complainant).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the
domain name <aetna.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
John J. Upchurch, Panelist
Dated: June 17, 2002
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