Kaiser Foundation Health Plan, Inc. v. Domain Deluxe
Claim Number: FA0604000671662
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 Domain Deluxe (“Respondent”), 16/F Cheung Kong Center, 2 Queens Road, Central Hong Kong.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <kaiserpermamente.org> and <kiaserpermanente.org>, registered with eNom.
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.
Sandra J. Franklin 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 5, 2006, eNom confirmed by e-mail to the National Arbitration Forum that the <kaiserpermamente.org> and <kiaserpermanente.org> domain names are registered with eNom and that Respondent is the current registrant of the names. eNom has verified that Respondent is bound by the eNom 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@kaiserpermamente.org and postmaster@kiaserpermanente.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 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kaiserpermamente.org> and <kiaserpermanente.org> domain names are confusingly similar to Complainant’s KAISER PERMANENTE mark.
2. Respondent does not have any rights or legitimate interests in the <kaiserpermamente.org> and <kiaserpermanente.org> domain names.
3. Respondent registered and used the <kaiserpermamente.org> and <kiaserpermanente.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kaiser Health Foundation Plan, Inc., has been providing health insurance and health care information since 1953. Complainant is the largest non-profit health maintenance organization (“HMO”) in the United States and serves 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 <kaiserpermamente.org> domain name on July 2, 2002, and the <kiaserpermanente.org> domain name on June 20, 2003. Both domain names resolve to a web page featuring a series of links to Complainant’s websites and the websites of Complainant’s 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.
Complainant has established rights in the KAISER PERMANENTE
mark by registering the mark with the USPTO.
See 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.”); see also 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.”).
The <kiaserpermanente.org> domain name is
confusingly similar to Complainant’s KAISER PERMANENTE mark pursuant to Policy
¶ 4(a)(i), because it contains Complainant’s entire mark and merely transposes
the letters “i” and “a” in the mark. In
Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002), the
panel concluded that the <googel.com> domain name was confusingly similar
to the complainant’s GOOGLE mark and noted 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.” Therefore, Respondent has not
sufficiently distinguished the <kiaserpermanente.org> domain name
from the mark by transposing the letters “a” and “i.” See Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that
the domain name <peir1.com> is confusingly similar to the complainant's
PIER 1 mark).
Because Respondent simply misspells Complainant’s distinctive KAISER PERMANENTE mark in the <kaiserpermamente.org> domain name, the disputed domain name is also confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel found several domain names that differed from the complainant’s REUTERS mark by one letter were confusingly similar to the mark because the mark was “highly distinctive.” Similarly, Complainant’s KAISER PERMANENTE mark is highly distinctive and Respondent has merely changed one letter in the mark. Thus, the disputed domain name is confusingly similar to the mark. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain names. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
domain names. 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 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); see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Because the WHOIS information lists Respondent as “Domain
Deluxe” and there is no other evidence in the record suggesting that Respondent
is commonly known by the disputed domain names, the Panel finds that Respondent
has not established rights or legitimate interests in the disputed domain names
under Policy ¶ 4(c)(ii). See Great S.
Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that the respondent
was not commonly known by the domain name <greatsouthernwood.com> where
the respondent linked the domain name to <bestoftheweb.com>); see also
Hartford Fire Ins. Co. v.
Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that
the respondent has no rights or legitimate interests in domain names because it
is not commonly known by the complainant’s marks and the respondent has not
used the domain names in connection with a bona fide offering of goods and
services or for a legitimate noncommercial or fair use).
Furthermore, Respondent’s domain names, which are confusingly similar to Complainant’s KAISER PERMANENTE mark, resolve to a web page containing links to Complainant’s website and the websites of its competitors. In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel found that the respondent’s use of a domain name to divert Internet users to a website selling goods and services similar to the services the complainant offered was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent is diverting Internet users seeking Complainant’s health care services to a web page displaying links not only to Complainant’s website, but also to the websites of its competitors. Respondent likely receives click-through fees for diverting consumers to these websites. Therefore, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that Respondent lacked rights and legitimate interests in the <jawsoflife.com> domain name where it was being used to divert Internet users to the website for Phoenix Rescue Tools, one of Complainant’s direct competitors).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names to manage a
web page displaying links to the websites of Complainant and its
competitors. The Panel infers that
Respondent receives click-through fees for each consumer it diverts to these
websites. Consequently, Respondent is misdirecting Internet users seeking
Complainant’s health care services under the KAISER PERMANENTE mark to
competing websites for its own commercial gain and is taking advantage
of the confusing similarity between the disputed domain name and Complainant’s
KAISER PERMANENTE mark in order to profit from the goodwill associated with the
mark. Such use constitutes bad faith
registration and use under Policy ¶ 4(b)(iv).
See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Identigene,
Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where the respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that the complainant is the source of or is sponsoring the
services offered at the site).
In addition, Respondent’s website at the disputed domain
names contains links to the websites of Complainant and its competitors. Therefore, Respondent has registered and
used the disputed domain names for the primary purpose of disrupting
Complainant’s business in violation of Policy ¶ 4(b)(iii). See 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)); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from the complainant's marks
suggests that the respondent, the complainant’s competitor, registered the
names primarily for the purpose of disrupting the complainant's business).
Moreover, Respondent’s various misspellings of Complainant’s
KAISER PERMANENTE mark in the disputed domain names indicate that Respondent is
typosquatting. Typosquatting
constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See K.R. USA,
INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration
and use of the <philadelphiaenquirer.com> and
<tallahassedemocrat.com> domain names capitalized on the typographical
error of Internet users seeking the complainant's THE PHILADELPHIA
INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith
pursuant to Policy ¶ 4(a)(iii)); see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com>
domain name was a “simple misspelling” of the complainant's DERMALOGICA
mark which indicated typosquatting and bad faith pursuant to Policy ¶
4(a)(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 <kaiserpermamente.org> and <kiaserpermanente.org> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 17, 2006
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