ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant in this proceeding is CIGNA Corporation, ("CIGNA") One Liberty Place Philadelphia, PA 19192, U.S. No response has been filed. The registrant of the at-issue domain name and nominal respondent is JIT Consulting, ("JIT") 123 W. 94th Street #1, New York, NY, 110025, US.
The subject domain name is CIGNADIRECT.COM and the registrar is Network Solutions, Inc. ("NSI").
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on April 4, 2000. The hardcopy of the Complaint Form was received on April 5, 2000. Payment was received on April 5, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry lead the Clerk of eResolution to the following conclusions to which the Panel concurs: the Registrar is Network Solutions, the Whois database contains all the required contact information but the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on April 4, 2000. The requested information was received April 17, 2000.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on April 11, 2000. That date is the commencement date of the administrative proceeding.
On April 11, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
The Respondent did not submit a response, neither via the eResolution Internet site nor a signed version.
On May 24, 2000, the parties were notified that Paul DeCicco had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 6, 2000.
3. Factual Background
CIGNA Corporation ("Complainant" or "CIGNA") has federally registered "CIGNADIRECT" in the U.S. under Registration No. 2,239,595, Registration Date April 13, 1999, in connection with financial services, namely, brokerage account services for retirement account participants. Complainant commenced use of its service mark on July 15, 1997, and the mark has been in continuous use by Complainant since that date.
"CIGNA" is an invented word. "CIGNA" is fanciful and has no meaning other than to serve as a source identifier for Complainant and Complainant's subsidiaries, Complainant has not licensed or otherwise permitted Registrant to use any of its trademarks or to apply for or use any domain name incorporating any of its marks, including "CIGNA" and "CIGNADIRECT." Registrant was notified of Complainant's objections to its domain name registration of "cignadirect.com" by a letter sent to Registrant, via certified mail return-receipt requested, on November 1, 1999.
The Registrant has not established any content for a web site under "cignadirect.com." Registrant has registered more than 50 domain names that seem to be confusingly similar to famous trademarks and service marks owned by many well-known companies.
Complainant's service mark has a strong reputation and is widely known, with 49 registered trademarks/service marks containing the word "CIGNA" and 15 Internet domain name registrations. In other countries, CIGNA trademarks/service marks are registered in 97 foreign jurisdictions, including its European Community service mark registration.
Furthermore, Complainant has not licensed or otherwise permitted Registrant to use any of its trademarks or to apply for or use any domain name incorporating any of its marks, including "CIGNA" and "CIGNADIRECT."
Registrant was notified of Complainant's objections to its domain name registration of "cignadirect.com" by a letter sent to Registrant, via certified mail return-receipt requested, on November 1, 1999, received the letter and failed to respond.
The Registrant has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name "cignadirect.com."
4. Parties' Contentions
For the following reasons CIGNA contends that the factors required under the Uniform Domain Name Dispute Resolution Policy ("the Policy") which permit the Panel to request the Registrar transfer the at-issue domain name to the Complainant are each present:
Under Section 4(a)(i) of the Policy, the Registrant's domain name ("cignadirect.com") is identical to Complainant's federally registered U.S. service mark "CIGNADIRECT."
With regard to Section 4(a)(ii) of the Policy, the Complainant claims that "CIGNA" is an invented word and as such is not one that would be legitimately chosen by an unrelated party unless seeking to create an impression of an association with Complainant. Absent any meaning aside from its identification function, the CIGNA asserts that the Registrant can have no legitimate interests in respect of the domain name "cignadirect.com."
With regard to Section 4(a)(iii) of the Policy, CIGNA relies on the express "bad faith" criteria set out in Section 4b. Since the domain name must not only be registered in bad faith, but also used in bad faith under Section 4(a)(iii) CIGNA cites to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, (2000) (Christie, Arb.), for the proposition that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept," and that it is possible for inactivity by the Respondent to amount to the domain name being used in bad faith, and further that "paragraph 4(b) [of the Policy] recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith."
Complainant claims that the circumstances in the instant case show that Registrant's passive holding amounts to bad faith use of the domain name "cignadirect.com." The Complainant asserts that since the Registrant has not established any content for a web site under "cignadirect.com," Registrant has, as related in Section 4(b)ii of the Policy, registered "cignadirect.com" in order to prevent Complainant from reflecting its mark CIGNADIRECT in a corresponding domain name.
CIGNA goes on to conclude that by registering more than 50 domain names that seem to be confusingly similar to famous trademarks and service marks, Registrant has, (as outlined in Section 4b(ii) of the Policy), engaged in a pattern of conduct which prevents owners of trademarks or service marks from reflecting their marks in corresponding domain names.
Finally, CIGNA indicates that there is an inference of JIT's "bad faith" from the fact that the Registrant has provided no evidence of any actual or contemplated good faith use of the domain name "cignadirect.com."
There was no response.
5. Discussion and Findings
Standard of Review
Under Section 4(a) of the Policy a successful complainant must plead and prove that: 1) the at-issue domain name is either identical or confusingly similar to the complainant's trademark or service mark; 2) that the respondent or registrant has no right or legitimate interest in the domain name; and 3) that the domain name was registered and is used in bad faith. Policy §4(a).
Registrant JIT has technically defaulted in this proceeding since no response was filed. Nevertheless, the Panel must evaluate CIGNA's allegations and annexed material, and then determine whether or not CIGNA's presentation, evidence, and argument is sufficient to establish the "proof" required by the Policy.
Identical or Confusingly Similar
The Panel finds that the (second level) domain name "cignadirect.com" is identical to a registered federal trademark of the Complainant.
JIT's Rights and Legitimate Interest in the Domain Name
The Panel needs not address the thorny issues of whether a registrant may have legitimate interest with respect to a domain name it registers containing a trademark not exclusively owned, or licensed by such registrant. Instead, we look to the basis of the domain name's existence; the bi-lateral executory contract between the registrant and the registrar.
By virtue of the domain name registration service agreement between the Registrant JIT and the registrar NSI, a presumption arises that JIT has at least some rights and legitimate interests in the subject domain name. According to the agreement, the Registrant, inter alia, warrants as a condition of registration, that to the best of the registrant's knowledge and belief neither the registration of the domain name, nor the manner in which it intends to use such domain name will directly or indirectly infringe the legal rights of a third party. NSI Registration Agreement, https://www.networksolutions.com/legal/service-agreement.html §17(ii).
JIT's failure to answer CIGNA's letter of November 1, 2000, wherein CIGNA's counsel announces to JIT "your registration of the CIGNADIRECT.COM domain name violates our U.S. and other worldwide trademark rights" acts as an "admission-by-silence." Annex B. Had JIT considered CIGNA's claim to be in error, we would have expected JIT to answer and correct the inaccuracy. Because, JIT has not answered, in effect it admits the truth of the matter asserted, namely that JIT is violating CIGNA's trademark rights via the "cignadirect.com" domain name.
Significantly, this admission shows a breach by JIT of the domain name registration service agreement. The "cignadirect.com" domain name is (admittedly) infringing on the rights of third party CIGNA. JIT's breach divests JIT of any rights or interests in the subject domain name. For this reason alone, the Panel finds that JIT has no right or legitimate interest in the domain name "cignadirect.com."
Section 4(b)(i)-(iv) of the Policy sets out certain factors which if present, shall be evidence of the domain name's registration and use in bad faith. Pursuant to Section 4(b)(ii) of the Policy, registering "the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name" shall be evidence of 4(a)(ii) "bad faith" "provided that the registrant [you] has [have] engaged in a pattern of such conduct." Complainant argues that since the Registrant has not established a website referenced by "cignadirect.com," "cignadirect.com" was therefore registered in order to prevent CIGNA from reflecting its mark in a corresponding domain name.
The Panel disagrees with CIGNA. Only a small minority of the millions of registered domain names point to objects containing substantive content. Whether or not Internet content is referenced by a particular domain name, without more, is in no way indicative of the registrant's specific intent to prevent a mark holder, here CIGNA, from registering the domain name for its own use. Such a conclusion is mere speculation. Indeed there are numerous reasons why a domain name may not be used in this fashion or not in use at all for that matter.
Complainant further argues that since JIT registered more than 50 domain names that seem to be confusingly similar to famous trademarks and service marks, JIT has engaged in a pattern of conduct which prevents owners of trademarks or service marks from reflecting their marks in corresponding domain names. Such a scenario, according to CIGNA, is evidence of "bad faith" pursuant to Section 4b(ii) of the Policy.
Not so. Even assuming that JIT registered "cignadirect.com" to deprive Complainant of the domain name, it would be error to accept CIGNA's conclusion that the bald list of domain name registrations evidenced by Annex D, by itself, shows a pattern of such practice. There is no specific evidence offered by CIGNA concerning the Registrant's intent, or the propriety of any of the "more than 50" other JIT registrations. The simple fact that JIT registered multiple domain names and some of these domain names contain trademarks, is not telling as to "why" the registrations were made in the first place. Nor does it indicate whether or not the registrant was properly authorized to register any or all of those domain names it did. As a general proposition "bad faith" requires that although mindful that what is being done is wrong, the actor continue anyway. "Bad faith" manifests thought conscious malfeasance. Section 4(b)(ii) of the Policy requires that not only is there a pattern of domain registration (as CIGNA has shown), but also that registrant's practice intentionally prevents trademark holders from registering their particular trademark as a domain name against their wish to do so. On the latter, no facts are in evidence. Assuming available, the Complainant could have easily provided the Panel with evidence in the form of declarations or other documents regarding JIT's lack of authority, and/or its intent with regard to one or more of its domain name registrations. Absent such evidence, we can only guess about the character of JIT's other domain name registrations. While there is a pattern of registration, there is no pattern of deprivation.
CIGNA further urges that "no showing of good faith" equates to "bad faith." However, under the Policy it is the complainant's burden to prove that the respondent acted in "bad faith." Therefore, the fact that JIT failed to respond to the Complaint on this issue, and thus failed to offer evidence of its own "good faith," does not show JIT has acted in "bad faith."
As CIGNA correctly recognizes, under Section 4(a)(iii) of the Policy the subject domain name must not only be registered in "bad faith," but also must be "used in bad faith." The Panel is unmoved by CIGNA's desperate argument that "domain name use" springs from "domain name non-use" notwithstanding its citation to a similar finding in a prior UDRP decision. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra). Nevertheless, the Panel's disenchantment with this contorted reasoning is not fatal to the object of which it purports to be proof. JIT's failure to respond to the penultimate paragraph of CIGNA's November 1, 1999 letter gives rise to an additional "admission-by-silence." The paragraph states: "We request that you immediately cease and desist from any further use of the domain and immediately cancel the domain registration." Emphasis added. A reasonable party confronted with the implication that it is using a registered domain name within the context of a "cease and desist" letter would be moved to respond with a correction or denial if such implication were untrue. JIT's failure to respond acts as an "admission-by-silence" that it is using the domain name. Without evidence to the contrary, this admission is enough to find the domain name to be "in use."
Although CIGNA fails to show the presence of any one of the four "bad faith" touchstones found in Section 4(b)(i)-(iv) of the Policy, the Panel finds indicia of "bad faith" not expressly enumerated in the Policy. As discussed above, JIT's failure to respond to CIGNA's letter of November 1, 1999, manifests certain "admissions-by-silence." JIT admits that its registration of "cignadirect.com" infringes on CIGNA's trademark. This admission not only leads to a finding that JIT has no right or legitimate interest in the domain name, but also that it has registered and used the domain name in "bad faith." In sum, JIT's admission (by its silence) to using the domain name, and further like admission that it is violating CIGNA's trademark rights, are sufficient, absent evidence to the contrary, to show that "cignadirect.com" has been registered and is being used in "bad faith."
Pursuant to section 4(i) of the Policy and Section 15 of the Rules, having found that: 1) the domain name "cignadirect.com" is confusingly similar to a service mark in which the Complainant has rights; 2) that the registrant, JIT, has no rights or legitimate interests in respect of the domain name and; 3) that the domain name has been registered and is being used in bad faith, the Panel requests that the Registrar transfer the domain name "cignadirect.com" to CIGNA.
June 6, 2000, San Diego, California U.S.A.
(s) Paul Michael DeCicco