Kaiser Foundation Health Plan, Inc. v.
Peter Carrington a/k/a Party Night, Inc.
Claim
Number: FA0306000161470
Complainant is Kaiser Foundation Health Plan, Inc.,
Oakland, CA, USA (“Complainant”) represented by Thomas R. Burke of Davis Wright Tremaine LLP. Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam,
NETHERLANDS (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <kaiserpermanent.org>, <kaiserpermente.org>,
and <kaiserpermante.org>, registered with Key-Systems GmbH d/b/a
Domaindiscount24.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically June 3, 2003; the Forum received a hard copy of the Complaint June
5, 2003.
On
June 5, 2003, Key-Systems GmbH d/b/a Domaindiscount24.com confirmed by e-mail
to the Forum that the domain names <kaiserpermanent.org>, <kaiserpermente.org>,
and <kaiserpermante.org> are registered with Key-Systems GmbH
d/b/a Domaindiscount24.com and that Respondent is the current registrant of the
names. Key-Systems GmbH d/b/a Domaindiscount24.com verified that Respondent is
bound by the Key-Systems GmbH d/b/a Domaindiscount24.com 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
June 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 30, 2003, 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@kaiserpermanent.org, postmaster@kaiserpermente.org,
and postmaster@kaiserpermante.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
July 9, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
A. Complainant makes the following assertions:
1. The <kaiserpermanent.org>, <kaiserpermente.org>,
and <kaiserpermante.org> domain names are confusingly similar to
Complainant’s KAISER PERMANENTE mark.
2. Respondent has no rights to or legitimate
interests in the <kaiserpermanent.org>, <kaiserpermente.org>,
and <kaiserpermante.org> domain names.
3. Respondent registered and used the <kaiserpermanent.org>,
<kaiserpermente.org>, and <kaiserpermante.org> domain
names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since 1984,
Complainant has used the KAISER PERMANENTE mark in commerce, providing goods
and services in the area of healthcare and the financing of prepaid healthcare
plans. Complainant is the largest
non-profit health maintenance organization in the U.S. and is well known internationally. Complainant has several registrations for
the KAISER PERMANENTE mark with the U.S. Patent and Trademark Office,
including, Reg. Nos. 1,787,039 (registered August 10, 1993); 1,790,675
(registered August 31, 1993); 1,397,093 (registered June 10, 1986); and
2,004,814 (registered October 1, 1996).
Complainant also owns registrations for the KAISER PERMANENTE mark in
other countries, including, Australia, Canada, Chile, Japan, and Singapore.
Complainant
operates and owns the <kaiserpermanente.org> domain name, which is used
to provide information and services to Complainant’s customers.
Respondent
registered the <kaiserpermanent.org>, <kaiserpermente.org>,
and <kaiserpermante.org> domain names between March 10, 2002, and
April 15, 2002. Each of the disputed
domain names redirects Internet users to an adult oriented website, i.e.
<hanky-panky-college.com>. In
addition, a series of “pop-up” windows appear at the site that contain adult
oriented content.
Respondent has a
history of using Complainant’s mark to divert Internet users to adult oriented
websites. See Kaiser Found. Health
Plan, Inc. v. Peter Carrington a/k/a Party Night, Inc., FA 135647 (Nat.
Arb. Forum Jan. 29, 2003) (awarding transfer of the <kaiserpermanete.org>
domain name to Complainant).
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel 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:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(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.
Complainant
established in this proceeding that it has rights in the KAISER PERMANENTE mark
through registration with the U.S. Patent and Trademark Office, other
recognized trademark authorities and by worldwide use of the mark in commerce.
The disputed
domain names are confusingly similar to Complainant’s KAISER PERMANENTE mark
because the disputed domain names are based on common misspellings of the word
“permanente.” Minor misspellings of
“permanente,” which create domain names that remain phonetically similar to
Complainant’s mark, are not sufficiently distinctive to prevent a finding of
confusing similarity under Policy ¶ 4(a)(i).
See VeriSign Inc. v.
VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the
pronunciation and spelling between the domain name <venesign.com> and the
Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind
of the consumer); see also YAHOO!
Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain
name <yawho.com> is confusingly similar to the Complainant’s YAHOO mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established in this proceeding that it has rights to and legitimate interests
in the KAISER PERMANENTE mark.
Complainant asserts that Respondent lacks rights to or legitimate
interests in the disputed domain names because Respondent capitalizes on
Internet users who misspell Complainant’s mark when they attempt to access
<kaiserpermanente.org>.
The record fails
to establish that Respondent is affiliated with Complainant and fails to
establish that Respondent is authorized or licensed to register or use domain
names or marks containing the KAISER PERMANENTE mark. Furthermore, the WHOIS information for the disputed domain names
lists Respondent as Peter Carrington a/k/a Party Night, Inc., and does not
establish that Respondent is an “individual, business, or other organization”
commonly known by the <kaiserpermanent.org>, <kaiserpermente.org>,
and <kaiserpermante.org> domain names. In addition, the website to which the disputed domain names
redirect Internet users does not relate in any way to the disputed domain
names. Therefore, Respondent has no
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name); see also Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply).
Moreover,
Complainant submitted uncontested evidence to show that Respondent is
commercially capitalizing from misspellings of Complainant’s mark by diverting
Internet users to <hanky-panky-college.com>, an adult oriented
website. Respondent’s use of the
disputed domain names for these ends is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Brown & Bigelow,
Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that
infringing on another's well-known mark to provide a link to a pornographic
site is not a legitimate or fair use); 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 where such use is calculated to mislead consumers and to
tarnish Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has shown that Respondent has a history of registering
domain names that infringe on Complainant’s rights to the KAISER PERMANENTE mark. This history is evidence that Respondent
registered the disputed domain name with knowledge of Complainant’s rights in
the KAISER PERMANENTE mark.
Registration of a domain name, despite knowledge of Complainant’s
rights, is evidence of bad faith registration pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of
bad faith when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”).
Furthermore,
Respondent engaged in the practice of “typosquatting” by using domain names
that contain misspellings of Complainant’s mark with the purpose of diverting
Internet users for commercial gain.
Respondent’s “typosquatting” constitutes bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See L.L. Bean, Inc. v. Cupcake Patrol, FA
96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad
faith by establishing a pattern of registering misspellings of famous
trademarks and names); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”).
Finally, the
disputed domain names tarnish Complainant’s mark because the disputed domain
names are confusingly similar to Complainant’s mark and redirect Internet
traffic to an adult oriented website.
The Panel may presume that Respondent has attempted to commercially gain
from the confusingly similar domain names through this diversionary
practice. Respondent registered and
used the disputed domain names in bad faith pursuant to 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 CCA Indus., Inc. v. Dailey,
D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a
pornographic web site can itself constitute bad faith”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <kaiserpermanent.org>, <kaiserpermente.org>,
and <kaiserpermante.org> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 23, 2003.
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