Kaiser Foundation Health Plan, Inc. v. DHG Group
Claim Number: FA0604000671524
Complainant is Kaiser Foundation Health Plan, Inc. (“Complainant”), represented by Catherine E. Maxson, of Davis Wright Tremaine LLP, 1501 Fourth Ave., Suite 2600, Seattle, WA 98101. Respondent is DHG Group (“Respondent”), PO Box 1134, Melbourne, VIC, AU 3020.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kpmembers.org>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2006.
On April 4, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <kpmembers.org> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 April 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 27, 2006 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@kpmembers.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kpmembers.org> domain name is confusingly similar to Complainant’s KAISER PERMANENTE mark.
2. Respondent does not have any rights or legitimate interests in the <kpmembers.org> domain name.
3. Respondent registered and used the <kpmembers.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kaiser Health Foundation Plan, Inc., has continuously and extensively used the KAISER PERMANENTE mark in connection with health care insurance and information since 1953. Currently, Complainant is the largest not-for-profit health maintenance organization (“HMO”) in the United States, serving over eight million people. Complainant uses the KP acronym to refer to its KAISER PERMANENTE mark. Complainant operates a website providing general health information at the following domain names: <kp.org> (registered on May 3, 1995), <kp.com> (registered on May 20, 1997), <kp.net> (registered on August 7, 1996), <kponline.org> (registered on September 14, 1996), <kaiserpermanente.org> (registered on September 19, 1996), <kaiserpermanente.com> (registered on October 7, 1996) and <kaiserpermanente.net> (registered on May 8, 2002).
Complainant has registered the KAISER PERMANENTE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,787,039 issued August 10, 1993; Reg. No. 1,790,675 issued August 31, 1993; Reg. No. 1,397,093 issued June 10, 1986). Complainant has also registered the following variations of the mark: KPIC (Reg. No. 2,004,815 issued October 1, 1996), KAISER PERMANENTE INSURANCE COMPANY (Reg. No. 2,004,814 issued October 1, 1996), KAISER FOUNDATION HEALTH PLAN (Reg. No. 1,632,556 issued January 22, 1991), KAISER (Reg. No. 1,160,284 issued July 7, 1981 and Reg. No. 859,812 issued November 5, 1968) and KAISER ON-THE-JOB (Reg. No. 1,936,589 issued November 21, 1995).
Respondent registered the <kpmembers.org> domain name on May 10, 2005. Respondent is using the disputed domain name to operate a web directory featuring links such as “Health insurance,” “Kaiser permanente members” and “Doctors,” which resolve to either Complainant’s website or the websites of its competitors.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
Because Complainant has registered the KAISER PERMANENTE
mark with the USPTO, Complainant has established rights in the mark pursuant to
Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
The <kpmembers.org> domain name is confusingly
similar to Complainant’s KAISER PERMANENTE mark because it contains a common
abbreviation of the mark combined with the word “members,” a generic term
Complainant uses to refer to its insureds.
In Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25,
2001), the panel found the <ms-office-2000.com> confusingly similar to
the complainant’s MICROSOFT mark despite the abbreviation of the mark. Moreover, in L.L. Bean, Inc. v.
ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000), the panel
concluded that the <shopllbean.com> domain name was confusingly similar
to the complainant’s L.L. BEAN mark because the addition of a generic word does
not avoid the confusing similarity aspect of the ICANN policy. Therefore, Respondent’s mere abbreviation of
Complainant’s mark and addition of a generic term in the disputed domain name
render the <kpmembers.org> domain name confusingly similar to the
KAISER PERMANENTE mark pursuant to Policy ¶ 4(a)(i). See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb.
Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is
confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered
mark); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd.,
D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name
<bramblesequipment.com> is confusingly similar because the combination of
the two words "brambles" and "equipment" in the domain name
implies that there is an association with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights to or legitimate interests in the <kpmembers.org> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <kpmembers.org>
domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent registered the domain name under the name “DHG Group,” and no other evidence in the record suggests that Respondent is commonly known by the <kpmembers.org> domain name. As a result, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Moreover, Respondent’s <kpmembers.org> domain
name, which is confusingly similar to Complainant’s KAISER PERMANENTE mark,
resolves to a web page containing links to Complainant’s website and the
websites of its competitors. In Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the
respondent was using a domain name confusingly similar to the complainant’s
AMERITRADE mark to divert Internet users to a competing financial services
website. The panel concluded that
redirecting Internet users to a competing website could not be deemed a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and that
such use for Respondent’s own commercial gain could not be a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Because Respondent is using the disputed
domain name to redirect Internet users to a website providing links to Complainant’s
website and the websites of Complainant’s competitors, Respondent’s use of the
disputed domain name does not constitute a bona fide offering of goods
or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use
pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <kpmembers.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is using the disputed domain name to divert Internet users seeking Complainant’s products to a web page displaying links to the websites of Complainant and its competitors. In Ticketmaster Corporation v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 11, 2001), the respondent registered the <ticketmaster.net> domain name, which included the complainant’s TICKETMASTER mark, and was using it to redirect Internet users to a competing website at the <ticketpro.com> domain name. The panel found that such use constituted bad faith registration and use, because “[s]uch actions clearly manifest an intent of the [r]espondent to commercially benefit from the ensuing confusion of Internet users” who enter the disputed domain name attempting to reach the complainant’s website but are instead directed to the respondent’s website. Id. In this case, Respondent is also redirecting Internet users seeking Complainant’s products and services to competing websites for its own commercial gain, is taking advantage of the confusing similarity between the disputed domain name and Complainant’s KAISER PERMANENTE mark, and profiting from the goodwill associated with the mark in violation of Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
Furthermore, by registering a domain name confusingly
similar to Complainant’s KAISER PERMANENTE mark, and using it to operate a
website providing links to the websites of Complainant and its competitors,
Respondent has registered the domain name for the purpose of disrupting
Complainant’s business. Such use of the
disputed domain name to divert and disrupt Complainant’s business constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
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 GRANTED.
Accordingly, it is Ordered that the <kpmembers.org> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 18, 2006
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