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and Mediation Center
The Guardian Life Insurance v. Healthplan Network Inc.
Case No. D2006-0329
1. The Parties
The Complainant is The Guardian Life Insurance, New York, New York, United States of America, represented by Winston & Strawn LLP, United States of America.
The Respondent is Healthplan Network Inc., Weston, Florida, United States of America.
2. The Domain Name(s) and Registrar(s)
The disputed domain name <guardianhealthplan.com>, <guardianhp.com>, and <myguardianhealth.com> are registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2006. On March 16, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name(s) at issue.
On March 17, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2006.
The Center appointed Gary J. Nelson as the sole panelist in this matter on April 20, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a well known insurance company operating in the United States and is the owner of at least thirty GUARDIAN-based United States Trademark Registrations for insurance and financial services. At least five of Complainant’s registrations include health insurance related services. All relevant GUARDIAN trademark registrations were issued prior to March of 2005.
Respondent registered the contested domain names in March of 2005. Corresponding websites for <guardianhealthplan.com> and <guardianhp.com> appear to offer services related to health insurance. There is no active website corresponding to the <myguardianhealth.com> domain name.
Complainant contacted Respondent on September 29, 2005, regarding its concerns over the registration of the contested domain names. Respondent did not respond to Complainant’s inquiry.
5. Parties’ Contentions
Complainant is one of the oldest and largest insurance companies in the United States and has been using the GUARDIAN trademark nationwide since 1918. Complainant is a Fortune 500 company with total combined assets in excess of $39 billion. More than 1.25 million employees and their dependents in the United States are covered by Complainant’s GUARDIAN group life and health insurance policies.
Complainant is the owner of more than 30 United States service mark registrations for marks including or comprised of GUARDIAN for insurance and financial services. At least 5 of those registrations relate directly to health care insurance services.
In addition to trademark rights enjoyed through ownership of United States federal trademark registrations, Complainant owns common law rights in its GUARDIAN and GUARDIAN-based trademarks.
The disputed domain names are identical and confusingly similar to the trademarks in which the Complainant has rights, and the establishment of Complainant’s trademarks pre-date the registration of the contested domain names by Respondent.
Respondent has no rights or legitimate interests in the contested domain names.
Respondent registered and is using the contested domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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 shall 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:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) The Respondent has no right or legitimate interest in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has registered its GUARDIAN and GUARDIAN-related service marks with the United States Patent and Trademark Office. Therefore, Complainant has established rights in the GUARDIAN mark pursuant to Policy, Paragraph 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (finding that the 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 <guardianhealthplan.com> and <guardianhp.com> and <myguardianhealth.com> domain names are confusingly similar to Complainant’s well-known GUARDIAN marks because they incorporate the entirety of Complainant’s mark and merely add generic terms and the generic top-level “.com” domain name. Neither the addition of a generic term to a well-known mark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); See also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n] either the addition of an ordinary descriptive word...nor the suffix ‘. Com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, Paragraph 4(a)(I) is satisfied).
Confusing similarity is especially acute in this case where the generic terms (i.e., “healthplan,” “hp” as an abbreviation for health plan, and “my...health”) tagged onto Complainant’s GUARDIAN service mark relate to the services provided by Complainant. See Accor v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
Complainant has proven the requirement of Policy, Paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interest in the contested domain names.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that the Respondent lack rights of legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (December 4, 2000) (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <guardianhealthplan.com> or <guardianhp.com> or <myguardianhealth.com> domain names, or that it is commonly known by any name incorporating the term “guardian.” In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) Respondent is not a licensee of Complainant; (2) Complainant’s rights in its related trademarks precede Respondent’s registration of the contested domain name; and (3) Respondent is not commonly known by the domain name in question. The Panel notes that all three of these conditions apply to the present case.
Respondent is currently operating websites at <guardianhealthplan.com> and <guardianhp.com> for the promotion of health related services. Respondent’s use of domain names that are confusingly similar to the trademarks of Complainant, and that resolve to websites that directly compete with services offered by Complaint is not a bona fide offering of goods and services pursuant to Policy, Paragraph 4(c)(iii). See Am. Online, Inc. v. Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).
In regard to the <myguardianhealth.com> domain name, Respondent maintains a passive and undeveloped website. Respondent’s failure to develop an active website corresponding to the <myguardianhealth.com> domain name is evidence supporting the conclusion that Respondent has no right or legitimate interest in this domain name. See Pharmacia & Upjohn AB v. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interest where respondent failed to submit a response to the Complaint and made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that Respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and Respondent is not commonly known by the disputed domain name).
Complainant has proven the requirement of Policy, Paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the contested domain names in bad faith.
Respondent has registered domain names <guardianhealthplan.com> and <guardianhp.com> and linked these domain names to websites that infringe upon Complainants GUARDIAN trademark. These actions are conclusive evidence that Respondent registered and is using these domain names in bad faith in violation of Policy, Paragraph 4(a)(iii). See Puckett v. Miller, WIPO Case No. D2000-0297 (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy, Paragraph 4(b)(iii)).
Respondent has registered the <myguradianhealth.com> domain name which corresponds to a passive website. Because the Panel cannot conceive of how Respondent could legitimately use this domain name in light of how it is using the other disputed domain names, the Panel finds this action is sufficient evidence that Respondent registered and is using this domain name in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose). See also Red Bull GmbH v. Gutch, WIPO Case No. D2000-0766 (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).
The Panel also finds that Respondent likely chose the disputed names with full knowledge of Complainant’s rights in the GUARDIAN trademark Respondent’s awareness of Complainant’s GUARDIAN trademark may be inferred because the mark was registered with the USPTO prior to Respondent’s registration of the contested domain names and since the mark is well known in the insurance industry. See Kraft Foods (Norway) v. Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainant has proven the requirement of Policy, Paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <guardianhealthplan.com>, <guardianhp.com> and <myguardianhealth.com> be transferred to the Complainant.
Gary J. Nelson
Date: May 4, 2006