DECISION

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

Claim Number:  FA0306000161470

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 NAMES

The domain names at issue are <kaiserpermanent.org>, <kaiserpermente.org>, and <kaiserpermante.org>, registered with Key-Systems GmbH d/b/a Domaindiscount24.com.

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 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

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.

FINDINGS

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).

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 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 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.

Rights to or Legitimate Interests

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.

Registration and Use in Bad Faith

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.

DECISION

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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