Anthem Insurance Companies, Inc. v. Peter
Carrington a/k/a Party Night Inc.
Claim Number: FA0207000115078
PARTIES
Complainant
is Anthem Insurance Companies, Inc.,
Indianapolis, IN, USA (“Complainant”) represented by Robert S. Meitus, of Baker
& Daniels. Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam, NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <anthemperscription.com> and <anthemprescriptions.com>, registered with Key-Systems Gmbh.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 11, 2002; the Forum received a hard copy of the
Complaint on July 12, 2002.
On
July 12, 2002, Key-Systems Gmbh confirmed by e-mail to the Forum that the
domain names <anthemperscription.com> and <anthemprescriptions.com> are registered with Key-Systems
Gmbh and that Respondent is the current registrant of the names. Key-Systems Gmbh has verified that
Respondent is bound by the Key-Systems Gmbh 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
July 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 5,
2002 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@anthemperscription.com and
postmaster@anthemprescriptions.com by e-mail.
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
August 20, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as 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 Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<anthemperscription.com> and <anthemprescriptions.com> domain names are confusingly
similar to Complainant’s registered ANTHEM and common law ANTHEMPRESCRIPTION
mark.
Respondent
has no rights or legitimate interests in the <anthemperscription.com> and <anthemprescriptions.com>
domain names.
Respondent
registered and used the <anthemperscription.com> and <anthemprescriptions.com> domain names in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns a registered trademark
for ANTHEM with the U.S. Patent and Trademark Office (“USPTO”), with first use
labeled as September 1, 1990 (Reg. No. 1,776,736). Complainant uses the ANTHEM mark to denote its health care
benefits and services. Complainant also
owns a variety of other trademarks that bear the ANTHEM name.
Complainant is the Blue Cross and Blue
Shield licensee for Indiana, Kentucky, Ohio, Connecticut, New Hampshire,
Colorado, Nevada and Maine. Complainant
provides health care benefits and services to over 7.8 million people.
Complainant wholly owns Anthem
Prescription Management, LLC, which began operations in 1995 and has grown into
a national pharmacy benefit manager.
Complainant’s subsidiary serves over 4 million members and provides a
full range of pharmacy benefit management programs.
Since 1995, Complainant has used the
ANTHEMPRESCRIPTION mark to identify its subsidiary’s services. Complainant has extensively used and
promoted this mark through trade publications, on television and in print
media.
Complainant operates a website at
<anthemprescription.com>, where it fills approximately 6,000 on-line
orders per month for its ANTHEMPRESCRIPTION customers. The <anthemprescription.com> website
receives nearly 150,000 hits per month.
Complainant also owns registration rights in the domain names
<anthemprescription.net>, <anthemprescription.org>,
<anthemprescription.biz> and <anthem.com>.
Respondent registered the <anthemperscription.com> and <anthemprescriptions.com> domain names on June 7, 2002. Respondent attached the domain names to a
commercial pornographic website, <hanky-panky-college.com>, which
contains links to other pornographic and gambling websites. When an Internet user enters the domain
names into their browser they are confronted with banner advertisements. Furthermore, Internet users attempting to
back out of the website are prevented from doing so by a process referred to as
“mousetrapping.”1
DISCUSSION
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.”
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 Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar 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 and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established rights in the
ANTHEM mark through registration with the USPTO and continuous use in
commerce. In addition, Complainant has
sufficiently proven common law rights in the ANTHEMPRESCRIPTION mark with
evidence of substantial use of the mark in commerce since 1995, serving over 4
million members. See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was
continuous and ongoing, and secondary meaning was established); see also
Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [<keppelbank.com>] in connection with its banking business,
it has acquired rights under the common law); see also McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000) (the ICANN dispute resolution policy
is “broad in scope” in that “the reference to a trademark or service mark ‘in
which the Complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the policy).
Respondent’s <anthemperscription.com> and <anthemprescriptions.com>
domain names are confusingly similar to Complainant’s ANTHEM mark and
ANTHEMPRESCRIPTION common law mark. The
<anthemperscription.com> domain name merely contains a common
misspelling, transposing the “r” and “e,” of “prescription,” which does not
render the domain name distinct. The <anthemprescritions.com>
domain name insignificantly pluralizes Complainant’s ANTHEMPRESCRIPTION
mark. Both variations are familiar
practices among typosquatters; thus, the disputed domain names do not defeat a
claim of confusing similarity. See
Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity, as the result reflects a
very probable typographical error”); see also Nat’l Geographic Soc. v. Stoneybrook Inv.,
FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com>
was confusingly similar to Complainant’s “National Geographic” mark).
The Panel finds that Complainant has
satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In light of Complainant’s assertion that
Respondent has no rights or legitimate interests in the <anthemperscription.com> and <anthemprescriptions.com>
domain names and Respondent’s failure to submit a Response, it may be presumed
that Complainant has no such rights or legitimate interests in the domain
names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names); see
also Canadian Imperial Bank of Commerce
v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding
no rights or legitimate interests where no such right or interest was
immediately apparent to the Panel and Respondent did not come forward to
suggest any right or interest it may have possessed).
Furthermore, since Respondent did not
come forward to address Complainant’s contentions, all reasonable inferences
may be drawn 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”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Respondent uses the <anthemperscription.com> and <anthemprescriptions.com>
domain names to divert Internet traffic to the
<hanky-panky-college.com> website, which is a pornographic website that traps
Internet users when attempting to exit the website. The browsers that are generated upon exiting the
<hanky-panky-college.com> website are pornographic and gambling websites. Presumably Respondent financially benefits
from this activity. Respondent’s
ensnaring use of the domain names, which are confusingly similar to
Complainant’s ANTHEMPRESCRIPTION common law mark, does not constitute a bona
fide offering of goods or services, nor does it represent a legitimate
noncommercial or fair use. Therefore,
Respondent has no rights or legitimate interests in the domain names pursuant
to Policy ¶¶ 4(c)(i) and (iii). See
Nat’l Football League Prop., Inc. v. One
Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent
had no rights or legitimate interests in the domain names
<chargergirls.com> and <chargergirls.net> where Respondent linked
these domain names to its pornographic website); see also MatchNet plc v. MAC Trading, D2000-0205
(WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or
services to use a domain name for commercial gain by attracting Internet users
to third party sites offering sexually explicit and pornographic material); see
also Société des Bains de Mer v.
Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or
legitimate interests where Respondent used the <casinomontecarlo.com> and
<montecarlocasinos.com> domain names in connection with an online
gambling website).
Respondent has no connection with
Complainant or its ANTHEMPRESCRIPTION common law mark. There exists no evidence that Respondent is
commonly known by either of the two subject domain names. Therefore, Respondent has no rights or
legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the domain names; thus,
Policy ¶ 4(c)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent uses the <anthemperscription.com> and <anthemprescriptions.com>
domain names for the commercial purpose of trapping Internet users into a “mousetrap,”
which unwillingly subjects individuals to pornographic and gambling
websites. Such a use carries with it
the likelihood of confusing Internet users, who mistype Complainant’s
ANTHEMPRESCRIPTION mark, while searching for Complainant’s ANTHEMPRESCRIPTION
services. Therefore, Respondent’s
registration and use of the mark represents bad faith under Policy ¶
4(b)(iv). See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain
name in question to websites displaying banner advertisements and pornographic
material); see also Encyclopaedia
Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding
that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name
<britannnica.com> to hyperlink to a gambling site).
Furthermore, the use of the confusingly
similar domain names to link to pornographic and gambling websites represents
bad faith standing alone. This is
because Respondent has no interests or ties to the ANTHEMPRESCRIPTION mark and
appears to have registered the domain names to benefit from Complainant’s
customers who mistype the ANTHEMPRESCRIPTION mark when searching for
information relating to it. The use of
infringing domain names to tarnish one’s mark with pornographic and gambling
content represents bad faith use under Policy ¶ 4(a)(iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that the association of a confusingly similar domain name with a
pornographic website can constitute bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO
June 27, 2000) (finding that absent contrary evidence, linking the domain names
in question to graphic, adult-oriented websites is evidence of bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be
hereby GRANTED.
Accordingly, it is Ordered that the <anthemperscription.com> and <anthemprescriptions.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: August 26, 2002
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1 A technique that forces a user to remain on a specific Web site by not allowing the user to leave the site. Whenever the user tries to leave the site by closing the browser window or going to a new URL, the site that is mousetrapping will automatically open a new browser window with its URL or not allow the browser to go to the new URL. Some mousetraps only will open a limited number of new browser windows and eventually will let the persevering user leave the site; other mousetraps will open new browser windows ad infinitum, and the only way to get out of the trap is to press "Ctrl+Alt+Del" to end the task or reboot the computer if that fails.