National Arbitration Forum

 

DECISION

 

eHealthInsurance Services, Inc. v. Mohammed Hasan

Claim Number: FA0705000982289

 

PARTIES

Complainant is eHealthInsurance Services, Inc. (“Complainant”), represented by Francine Hanson, of Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304-1050.  Respondent is Mohammed Hasan (“Respondent”), Oshiwara Adarsh Nagar Co Op. Society, Room No.131, Behind J71 Studio,Near Lotus Petrol Pump, New link Road,Andheri (West), Mumbai, Maharashtra 400053, IN.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wwwehealthinsurance.com>, registered with Lead Networks Domains Pvt. Ltd.

 

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.

 

Richard DiSalle is Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 14, 2007.

 

On May 21, 2007, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwehealthinsurance.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name.  Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 May 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 18, 2007 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@wwwehealthinsurance.com by e-mail.

 

The National Arbitration Forum did not receive an electronic copy of the Response until after the Response deadline.  Therefore, the Response is deficient according to ICANN Rule #5 and the National Arbitration Forum’s Supplemental Rule 5(a).

 

Complainant filed an Amended Complaint dated May 24, 2007.

 

On June 25, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant avers that it is the leading provider of online health insurance for individuals, families and small businesses.  It was incorporated in 1997 and is licensed to market and sell health insurance in all 50 of the United States and the District of Columbia.  As of December 31, 2006, Complainant had 393,000 customers, and has insured over 1 million customers.  Complainant claims that it has partnerships with over 160 health insurance carriers and offers more than 7,000 health insurance products online.  Complainant states it purchased the domain name <ehealth.com> in April 2004 and registered the domain name <ehealthinsurance.com> on June 1, 1998.  It offers online health insurance services to individuals, families, and small businesses and is dependent on its website for sales.  Complainant’s website allows visitors to research, analyze, compare and purchase health insurance products; the first online transaction relating to sale of a health insurance policy was completed during the fourth quarter of 1998.

 

Complainant has been using the EHEALTH mark since as early as May 1997 and the EHEALTHINSURANCE mark since at least as early as August 1998, and it holds U.S. federal trademark registrations for the marks EHEALTH and EHEALTHINSURANCE, which have become incontestable.

 

Complainant has developed substantial goodwill in the EHEALTH and EHEALTHINSURANCE marks.  Those marks have become closely linked with Complainant.

 

Complainant further avers that Respondent registered the challenged domain name <wwwehealthinsurance.com> on March 16, 2004, and its domain name is virtually identical to Complainant’s EHEALTHINSURANCE mark and mimics Complainant’s URL address.  The challenged domain name is an unmistakable misspelling of Complainant’s domain name <wwwehealthinsurance.com> and of its mark EHEALTHINSURANCE.

 

Complainant further avers that upon information and belief, Respondent registered <wwwehealthinsurance.com> as part of a “click-through” advertising scheme, and that when Internet users “click” on the paid links displayed on Respondent’s site, Respondent receives a payment from the third-party advertisers who are paying for the service.

 

B. Respondent

 

In the most general terms, Respondent replies that Complainant has not approached the Forum with clean hands and therefore no relief, much less, equitable, should be granted to Complainant.

 

Respondent states that he is in the business of providing Medical Insurance and is an agent of Medicalim in India on a local level at Mumbai, India, and hence there is no way that he can benefit from the clientele of Complainant.

 

Respondent states that he has registered the domains as a result of the suggestions made on the registrar’s website, and holds the registrar fully responsible for putting such tools on their website.

 

Respondent avers that he is using the domain for legitimate use; that he does not have a website at present and hence is not gaining any customers for commercial gain, or misleading any customers for commercial gain or tarnishing Complainant’s trademark.

 

FINDINGS

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

(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

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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.

 

            Preliminary Issue: Deficient Response

 

The National Arbitration Forum did not receive an electronic copy of the Response until after the Response deadline.  Therefore, the Response is deficient according to ICANN Rule #5.  Since the Response is deficient, the Panel does not have to consider it in making its decision, but it is within the Panel’s discretion whether or not to take the Response into account.  See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007); see also Metro. Life Ins. Co. v. Secure Whois Info. Serv., FA 910715 (Nat. Arb. Forum Mar. 16, 2007).  The Panel deems any procedural deficiencies to be inconsequential and will consider the Response.

 

Identical and/or Confusingly Similar

 

Complainant has provided evidence that it has registered the following marks with the United States Patent and Trademark Office (“USPTO”): EHEALTH (Reg. No. 2,180,628 issued August 11, 1998) and EHEALTHINSURANCE (Reg. No. 2,394,766 issued October 17, 2000).  The Panel considers these trademark registrations as evidence of Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i).  See FIA Card Servs., Nat’l Ass’n v. Impulse Mktg. Group, Net OPS, FA 944261 (Nat. Arb. Forum June 18, 2007) (holding that the complainant’s trademark registrations for the PLATINUM PLUS and WORLD CLASS PLATINUM PLUS marks, which it held with the USPTO, demonstrated its rights in the marks pursuant to Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities.  The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

 

Complainant alleges that Respondent’s <wwwehealthinsurance.com> domain name is meant to take advantage of a typographical error Internet users make when entering its registered EHEALTHINSURANCE mark into Complainant’s own <ehealthinsurance.com> domain name.  The Panel finds that the additions of “www” and the generic top-level domain “.com” to Complainant’s mark in the disputed domain name fail to significantly differentiate the <wwwehealthinsurance.com> domain name from the EHEALTHINSURANCE mark, which renders the disputed domain name confusingly similar to the mark according to Policy ¶ 4(a)(i).  See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix “www” does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark); see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding the respondent's <wwwdana.com> domain name confusingly similar to the complainant's registered DANA mark because the complainant's mark remains the dominant feature).

 

Rights or Legitimate Interests

 

Complainant bears the initial responsibility of making a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.  The Panel finds that Complainant has made a prima facie case, and the burden of proof then shifts to Respondent to allege what rights or legitimate interests it might have in the disputed domain name.  See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).

 

Complainant contends that Respondent is not commonly known by the disputed domain name.  The Panel finds that there is no evidence in the record suggesting that Respondent is commonly known by the <wwwehealthinsurance.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant further contends that Respondent’s website at the <wwwehealthinsurance.com> domain name is simply a pay-per-click website with links to Complainant’s competitors in the health insurance industry.  The Panel presumes that Respondent is earning click-through fees for diverting Internet users to these competing websites and finds that such use for Respondent’s own commercial gain does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii).  See Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006).

 

The disputed domain name simply omits the period between “www” and Complainant’s EHEALTHINSURANCE mark, and the Panel finds that Respondent is engaged in the practice of typosquatting, which represents a lack of rights and legitimate interests on the part of Respondent under Policy ¶ 4(a)(ii).  See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003).

 

Registration and Use in Bad Faith

 

Respondent’s website at the <wwwehealthinsurance.com> domain name resolves to a pay-per-click website with links to Complainant’s competitors in the health insurance industry.  The Panel finds that Respondent is disrupting Complainant’s business under the EHEALTHINSURANCE mark, which merits a finding of bad faith registration and use under Policy ¶ 4(b)(iii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007).

 

Respondent’s use of the disputed domain name to operate a pay-per-click website is indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent is profiting from click-through fees each time an Internet user clicks on one of the links that redirect them to websites competing with Complainant.  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002).

 

Given that the <wwwehealthinsurance.com> domain name is simply a misspelling of Complainant’s EHEALTHINSURANCE mark, the Panel finds that Respondent is attempting to take advantage of the mistakes that Internet users make when entering Complainant’s mark into the <ehealthinsurance.com> domain name.  This type of activity is known as typosquatting, and the Panel concludes that it demonstrates bad faith registration and use under Policy ¶ 4(a)(iii).  See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003).

 

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 <wwwehealthinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard DiSalle, Panelist
Dated: July 9, 2007

 

 

 

 

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