DECISION

Kaiser Foundation Health Plan, Inc. v. Peter Carrington a/k/a Party Night, Inc.

Claim Number: FA0212000135647

PARTIES

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 NAME 

The domain name at issue is <kaiserpermanete.org>, registered with Key-Systems GmbH.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 6, 2002; the Forum received a hard copy of the Complaint on December 9, 2002.

On December 11, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the domain name <kaiserpermanete.org> is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. 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 December 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 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@kaiserpermanete.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 January 15, 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. The domain name registered by Respondent, <kaiserpermanete.org>, is confusingly similar to Complainant’s KAISER PERMANENTE mark.

2. Respondent has no rights or legitimate interests in the <kaiserpermanete.org> domain name.

3. Respondent registered and used the <kaiserpermanete.org> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Kaiser Foundation Health Plan, Inc., holds numerous U.S. trademark registrations for the KAISER PERMANENTE mark (e.g. U.S. Reg. No. 1,787,039, registered with the Principal Register of the United States Patent and Trademark Office on August 10, 1993). Complainant holds trademark registrations for its mark in other nations around the world as well, including Australia, Canada, Japan, China, and Singapore.

As the largest not-for-profit health maintenance organization in the United States, Complainant operates under the KAISER PERMANENTE mark in connection with its business of arranging for and financing prepaid healthcare serices. Pursuant to its business, Complainant registered the <kaiserpermanente.org> website in September 1996 to describe the services it renders and to provide access to information and services for its members. On average, this website receives tens of thousands of vistitors each day.

Respondent, Peter Carrington a/k/a Party Night, Inc., registered the <kaiserpermanete.org> domain name on April 15, 2002, but is not licensed or authorized to use the KAISER PERMANENTE mark for any purpose. Respondent uses the disputed domain name to redirect Internet users to a pornographic website located at <hank-panky-college.com>.

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 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.

Identical to and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the KAISER PERMANENTE mark through registration with the Principal Register of the United States Patent and Trademark Office, as well as by continuous and widespread use of the mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant have a bona fide basis for making the Complaint in the first place).

The domain name registered by Respondent, <kaiserpermanete.org>, is confusingly similar to Complainant’s KAISER PERMANENTE mark. It is a simple misspelling of Complainant’s mark, removing the letter “n” from the word PERMANENTE. Such a minor variation, which remains visually and phonetically similar to Complainant’s mark, is not an alteration that prevents a finding of confusing similarity under Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name that is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that pronunciation and spelling between the domain name <venesign.com> and Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer).

Accordingly, the Panel finds that the <kaiserpermanete.org> domain name is confusingly similar to Complainant’s KAISER PERMANENTE mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant’s showing that each of the “safe harbor” provisions listed in Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent will be sufficient for Complainant to meet the burden under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests relative to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Respondent uses the infringing <kaiserpermanete.org> domain name to redirect Internet users to a graphically pornographic website at <hanky-panky-college.com>. In craftily using a common misspelling of Complainant’s mark to redirect Internet users to such a website, presumably in exchange for referral fees, Respondent is not making a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) and is not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Thus, these two “safe harbor” provisions of the Policy do not apply to Respondent. See 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 the Complainant’s mark); see also 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).

Neither Respondent’s WHOIS information nor the website to which the <kaiserpermanete.org> domain name redirects Internet users implies that Respondent is “commonly known by” the name KAISERPERMANETE or <kaiserpermanete.org> name. Respondent is known to the Panel only by Peter Carrington aka Party Night, Inc. The Panel finds that Policy ¶ 4(c)(ii) does not protect Respondent. 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 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).

Respondent’s failure to respond to the Complaint is viewed by the Panel as further evidence that Respondent lacks rights or legitimate interests in the disputed <kaiserpermanete.org> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance that could demonstrate rights or legitimate interests in the domain name); see also 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”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <kaiserpermanete.org> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <kaiserpermanete.org> domain name in bad faith. Respondent’s domain name, a slight misspelling of Complainant’s KAISER PERMANENTE mark, was registered precisely because it would draw Internet users seeking Complainant’s <kaiserpermanente.org>. The Panel may infer that Respondent earns a referral fee for Internet users that Respondent redirects to the pornographic <hanky-panky-college.com> website. As these redirections result from the likelihood of confusion created by Respondent’s infringing registration, Respondent’s activity equates to bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

Furthermore, the very nature of Respondent’s registration evidences bad faith registration. By capitalizing on a simple misspelling of Complainant’s mark, Respondent’s behavior typifies the practice known as “typosquatting,” an example of bad faith registration of a domain name under Policy ¶ 4(a)(iii). See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).

Accordingly, the Panel finds that Respondent registered and used the <kaiserpermanete.org> domain name in bad faith, thus satisfying Policy ¶ 4(a)(iii).

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <kaiserpermanete.org> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: January 29, 2003.

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