UnitedHealth Group Incorporated v. Greg Hovey / United Health Brokers
Claim Number: FA1204001440403
Complainant is UnitedHealth Group Incorporated (“Complainant”), represented by Renee S. Kraft of Fulbright & Jaworski L.L.P., Minnesota, USA. Respondent is Greg Hovey / United Health Brokers (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <unitedhealthbrokers.com>, <quoteunitedhealth.com>, and <unitedonequote.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 20, 2012; the National Arbitration Forum received payment on April 23, 2012.
On April 23, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <unitedhealthbrokers.com>, <quoteunitedhealth.com>, and <unitedonequote.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@unitedhealthbrokers.com, postmaster@quoteunitedhealth.com, postmaster@unitedonequote.com. Also on May 1, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 21, 2012.
On May 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
Complainant submitted electronically a timely Additional Submission to the National Arbitration Forum that was received on May 25, 2012.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” GoDaddy.com has confirmed that Respondent is the current registrant of the three domain names at issue. Respondent does not dispute that he is the registrant for the three domain names at issue. The Panel finds that sufficient evidence has been presented that the disputed domain names are controlled by the same entity and thus will proceed with the instant case.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a service provider in the health and well-being industry, and provides healthcare, insurance, information, and related services. Complainant asserts that it provides services to approximately 70 million Americans and had revenues exceeding $101 billion in 2011, placing it 22nd on Fortune magazine’s 2011 Fortune 500 list of America’s largest corporations. Complainant contends that it owns a trademark for UNITEDHEALTH and also owns numerous other marks, including formatives of “UNITEDHEALTH” such as UNITEDHEALTHCARE and UNITEDHEALTHONE.
With respect to Policy ¶ 4(a)(i), Complainant contends that the <unitedhealthbrokers.com>, <quoteunitedhealth.com>, and <unitedonequote.com> domain names are confusingly similar to Complainant’s UNITEDHEALTH mark. Complainant claims that it has established its rights in the UNITEDHEALTH mark by registering it with the USPTO.
With respect to Policy ¶ 4(a)(ii), Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant argues that Respondent is neither using the disputed domain names to make a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the disputed domain names. Complainant asserts that the disputed domain names resolve to websites offering content that competes with its own product offerings (e.g., links to competitors in the health insurance industry such as Blue Cross Blue Shield), and therefore that Respondent uses the disputed domain names to divert potential on-line customers to competing businesses. Additionally, Complainant argues that Respondent has never been commonly known by the disputed domain names.
Finally, with respect to Policy ¶ 4(a)(iii), Complainant contends that Respondent registered and is using the disputed domain names in bad faith. Complainant alleges that Respondent offered to sell the disputed domain names to Complainant for at least $5,000, an amount Complainant states is far in excess of costs associated with the domain names. Complainant further contends that Respondent had actual and/or constructive knowledge of Complainant’s rights in the UNITEDHEALTH and other marks prior to registering the disputed domain names. Complainant also states that Respondent’s offering of competing services indicates an awareness of Complainant and its rights in the mark asserted.
B. Respondent
Respondent asserts that he operates a business catering to individuals seeking to become independent health insurance brokers in which he offers information on licensing and access to health insurance agencies and carriers. Respondent states that he operates under the business name United Health Brokers, which he contends to have selected as a generic name because his “agencies are comprised of health insurance brokers who are united in offering the best insurance at the lowest cost.”
With respect to Policy ¶ 4(a)(i), Respondent contends that the <unitedhealthbrokers.com> domain name is not confusingly similar to Complainant’s UNITEDHEALTH mark. Respondent states that by adding the generic term “brokers” to the generic terms “united” and “health,” he has created an entirely different mark. Respondent claims that the addition of that term distinguishes his disputed domain name from the Complainant’s mark in such a way as to remove the domain name from the realm of confusing similarity with regard to Complainant’s mark. Further, Respondent contends that Complainant has not produced evidence that its UNITEDHEALTH mark has acquired distinctiveness. Respondent similarly contends that the <quoteunitedhealth.com> and <unitedonequote.com> domain names are comprised of generic terms and as such cannot be found to be confusingly similar to Complainant’s mark.
With respect to Policy ¶ 4(a)(ii), Respondent contends that he has rights and legitimate interests in respect of the disputed domain names. Respondent asserts that he is making a bona fide offering of services through the <unitedhealthbrokers.com> domain name. Respondent states that he offers health insurance broker recruitment services from this website and that these services are different than the services offered by Complainant. Respondent also asserts that he is commonly known by the <unitedhealthbrokers.com> domain name. Respondent states that he has done business under the name United Health Brokers since the domain name was purchased and that he has developed a strong reputation in the industry as a premier health insurance broker recruiter. With regard to the <quoteunitedhealth.com> and <unitedonequote.com> domain names, Respondent contends that the domain names were purchased for possible future use and that he receives no compensation for clicks made on the links found on the resolving websites, including links to competitors of Complainant.
Finally, with respect to Policy ¶ 4(a)(iii), Respondent contends that because he is making a bona fide offering of goods and services, he has rights and legitimate interests in the disputed domain names and thus a finding of bad faith is precluded. Nonetheless, Respondent claims that he registered and uses the disputed domain names in good faith.
Respondent claims that his offer of $5,000 was in response to an offer by Complainant for $200 and reflected a mere fraction of the actual expenses associated with the website and Respondent’s related expenditures. Respondent states that he did not register the disputed domain names for the purpose of selling them and that there is no evidence of a pattern of registrations on the part of Respondent.
Respondent argues that the <unitedhealthbrokers.com> domain name does not resolve to a website offering insurance quotes as claimed by Complainant. Respondent states that the website associated with the <unitedhealthbrokers.com> domain name merely offers a window within which prospective health insurance brokers can leave their contact information. Respondent argues that he is not attempting to confuse Internet users with the hope of financial gain because confusion will not occur based upon the different services offered. Respondent also alleges that the <quoteunitedhealth.com> and <unitedonequote.com> domain names resolve to parked websites that offer content provided by the Registrar GoDaddy.com and are outside of his control.
Respondent lastly contends that the <unitedhealthbrokers.com>, <quoteunitedhealth.com>, and <unitedonequote.com> domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s UNITEDHEALTH mark. Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith.
C. Additional Submissions
Complainant contends that the addition of the term “brokers” to Respondent’s domain name <unitedhealthbrokers.com> is not sufficient to distinguish the domain name from Complainant’s trademarks, particularly given that Complainant frequently uses the term “brokers” in connection with the sale of its services. Complainant also argues that its UNITEDHEALTH mark has acquired distinctiveness, stating that it owns nearly 40 U.S. trademarks registrations for marks comprised of or incorporating the term UNITEDHEALTH, as well as numerous international trademark registrations.
Complainant argues that Respondent must show that he was commonly known by the disputed domain names prior to registration of the domain names. Complainant states that Respondent did not begin using the business name “United Health Brokers” until after the disputed domain names were registered.
Complainant finally contends that Respondent has clearly demonstrated bad faith in registering and using the disputed domain names, and supports this contention with the following assertions: (1) Respondent offered to sell the disputed domain names to Complainant before he began offering goods and services on the associated websites; (2) Respondent initially responded to Complainant’s objections to the registration and use of the disputed domain names by claiming to be an authorized broker for Complainant; (3) early versions of the website associated with the disputed domain names incorporated Complainant’s logos, and were only removed after Complainant objected to their unauthorized use; and (4) Respondent provides no explanation for his registration of the <quoteunitedhealth.com> and <unitedonequote.com> domain names, which he initially incorporated into his website in the stylized form used by Complainant.
For the reasons set forth below, the Panel finds Complainant has proven that the domain names should be transferred.
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."
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.
As an initial matter, the Panel finds that Complainant has established its rights in the UNITEDHEALTH mark under Policy ¶ 4(a)(i) by registering it with the USPTO See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The domain names <unitedhealthbrokers.com> and <quoteunitedhealth.com> include Complainant’s entire mark, while including separately either the generic term “brokers” or “quote.” These terms are frequently used in connection with Complainant’s services as a healthcare and health insurance provider. The <unitedonequote.com> domain name includes the term “united” from the mark while deleting the term “health” and adding the descriptive term “one” and the generic term “quote.” The disputed domain names all add the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s UNITEDHEALTH mark and/or its other marks such as UNITEDHEALTHONE under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark).
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel notes that the screenshots submitted for the websites to which the <quoteunitedhealth.com> and <unitedonequote.com> domain names resolve indicate that the domain names resolve to a website offering links to Complainant’s competitors in the health insurance industry, such as Blue Cross Blue Shield. The Panel concludes that Respondent is using the <quoteunitedhealth.com> and <unitedonequote.com> domain names to offer links to Complainant’s competitors, and therefore that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the two disputed domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither 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).”). Although Respondent has denied responsibility for the content provided through the <quoteunitedhealth.com> and <unitedonequote.com> domain names because Respondent claims the domain names are merely parked, the Panel holds that parking a domain name does not separate the registrant of the domain name from the liability for the content provided therein. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
The Panel notes that the screenshots submitted for the website to which the <unitedhealthbrokers.com> domain name resolves indicates that the domain name resolves to a website that does not appear to offer direct links to Complainant’s competitors in the health insurance industry. Nonetheless, the Panel finds that the website uses a confusingly similar domain name for purposes competitive with Complainant. In particular, the website offers prospective independent brokers “contracts with all major [health insurance] carriers.” Since Complainant is one such carrier, the fact that a domain name confusingly similar to its registered trademarks has been used to attract brokers, and in turn potential new customers, for "all" its competitors is not a legitimate business usage of such a domain name. The Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Respondent contends that it currently operates under the business name United Health Brokers. However, Respondent did not begin using that name until after the disputed domain names were registered. The Panel finds that there is no evidence showing a relationship between Respondent and the disputed domain name prior to the domain name’s registration, and therefore that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See NATSAC, Inc. v. Kistner, FA 1190108 (Nat. Arb. Forum June 28, 2008) (“for a respondent to prevail [under Policy ¶ 4(c)(ii)], he must show that he has been commonly known by the domain name prior to registration of the domain name”) (emphasis added); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant is one of America’s largest health insurance providers. Respondent contends that he is in the business of providing information on health insurance providers to individuals interested in becoming independent health insurance brokers. When first contacted by Complainant with regard to Respondent’s unauthorized use of Complainant’s marks, Respondent claimed to be an authorized broker for Complainant. The Panel finds that Respondent was aware or should have been aware of Complainant and its registered marks at the time it registered the disputed domain names.
The Panel finds that the $5,000 offer by Respondent to sell the disputed domain names to the Complainant represents an amount in excess of the actual costs associated with registering the disputed domain names. Respondent provides no evidence of out-of-pocket costs directly related to the domain name; Respondent presents only a short list of generic itemized costs totaling $8,000 without providing any supporting documentation. The Panel concludes that Respondent did register the disputed domain names primarily for the purpose of selling them to Complainant for an amount in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names, and therefore that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Respondent is advertising the <bigtow.com> domain name for sale for $5,000. Furthermore, Respondent offered to sell the disputed domain name to Complainant for $4,000. The Panel finds that these offers to sell the disputed domain name constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <unitedhealthbrokers.com>, <quoteunitedhealth.com>, and <unitedonequote.com> domain names be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: June 8, 2012
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