Anthem Insurance Companies, Inc. v. Peter Carrington a/k/a Party Night Inc.
Claim Number: FA0207000115078
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.
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.
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 email@example.com and firstname.lastname@example.org 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.
Complainant requests that the domain names be transferred from Respondent to 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.
Respondent failed to submit a Response in this proceeding.
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
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.
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.