Kaiser Foundation Health Plan, Inc. v. Hines, Harold
Claim Number: FA1508001632754
Complainant is Kaiser Foundation Health Plan, Inc. (“Complainant”), represented by Catherine E. Maxson of Davis Wright Tremaine LLP, Washington, USA. Respondent is Hines, Harold (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kaiserpermanentegroup.com>, registered with Network Solutions, LLC.
Each of 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.
Paul M. DeCicco, Carol Stoner, Esq., and Hon. Karl V. Fink (Ret.) (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on August 10, 2015; the Forum received payment on August 10, 2015.
On August 12, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <kaiserpermanentegroup.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kaiserpermanentegroup.com. Also on August 13, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent’s Default.
On September 4, 2015, Complainant submitted a timely Additional Submission, which was considered by the Panel.
On September 9, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.), Carol Stoner, Esq., and Paul M. DeCicco 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name <kaiserpermanentegroup.com> be transferred from Respondent to Complainant.
Complainant
Complainant has rights in the KAISER PERMANENTE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,787,039, registered on August 10, 1993). Respondent’s <kaiserpermanentegroup.com> domain name is confusingly similar to the KAISER PERMANENTE mark because it contains the entire mark, altered by only the removal of the space between the words, and the additions of the generic term “group” and generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the <kaiserpermanentegroup.com> domain name. Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the <kaiserpermanentegroup.com> domain name in an attempt to pass itself off as Complainant, to engage in phishing, or to otherwise take advantage of the confusing similarity of the domain name to defraud third parties.
Respondent registered and uses the <kaiserpermanentegroup.com> domain name in bad faith because it did so for the purpose of passing itself off as Complainant, engaging in phishing, or otherwise taking advantage of the confusing similarity of the domain name to defraud third parties in order to profit commercially.
Respondent
Respondent did not submit a Response in this proceeding.
Additional Submission from Complainant
Complainant emailed and mailed a cease and desist letter to Respondent, using the available contact information for Respondent, including the information Respondent provided to the registrar for the <kaiserpermanentegroup.com> domain name. Although the email appears to have been delivered, Respondent did not respond to Complainant’s correspondence, which is evidence of bad faith.
Complainant’s letter to Respondent “Harold Hines” was delivered to a company called “Hillard Heintze” at the address provided by Respondent. The building management at the address provided by Respondent indicated that there is no evidence of a tenant or tenant employee named Harold Hines in the building. Respondent provided a false mailing address to the registrar, which is further evidence of bad faith.
FINDINGS
The domain name, <kaiserpermanentegroup.com>, registered by Respondent, is identical or confusingly similar to a trademark or servicemark in which Complainant has rights; and
Respondent has no rights or legitimate interests in respect of the domain name, <kaiserpermanentegroup.com>; and
The domain name, <kaiserpermanentegroup.com>, has been registered and is being used in bad faith.
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."
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.
In view of Respondent's failure to submit a response, the Panel has decided 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 drew such inferences as it considered appropriate pursuant to paragraph 14(b) of the Rules. The Panel was entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence was 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.”).
Complainant’s Exhibit B is clear evidence of its rights in the KAISER PERMANENTE mark through registration of such mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,787,039, registered on August 10, 1993) and citing a first use in commerce in 1984.. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s domain name of <kaiserpermanentegroup.com> contains Complainant’s entire KAISER PERMANENTE trademark, less its space, with the descriptive term “group” added thereto. The top-level domain name, “.com,” is then appended to the resulting string to form the disputed domain name. These differences between the <kaiserpermanentegroup.com> domain name and Complainant’s KAISER PERMANENTE mark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <kaiserpermanentegroup.com> domain name is confusingly similar to Complainant’s KAISER PERMANENTE trademark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The Panel has reviewed Complainant’s Exhibit F, which evidences WHOIS information for the at-issue domain name. This exhibit lists “Harold Hines” as the domain name’s registrant. There is nothing in the record that otherwise suggests that Respondent is commonly known by the <kaiserpermanentegroup.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name 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 the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the domain name to control one or more email addresses which falsely appear to be originating from Complainant. Respondent’s objective is to pass itself off as Complainant to further a phishing scheme and thereby defraud third parties. This scheme was convincingly portrayed to the Panel through Complainant’s Exhibit G, which shows email communication between Respondent and a third party vendor. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Further, Complainant has not authorized Respondent to use Complainant’s trademark, in any capacity.
Complainant has therefore satisfied its initial burden under Policy ¶4(a)(ii) by making a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain name of <kaiserpermanentegoup.com>.
The burden, in effect, then shifted to Respondent to come forward with evidence of its rights or legitimate interests. Because Respondent has failed to respond to this Complainant, Respondent has failed to meet its shifted burden of proof, by establishing any evidence of its legitimate rights and interest in the <kaiserpermanentegroup.com> domain name.
Registration and Use in Bad Faith
Complainant has presented unrebutted evidence that it is a nationally recognized health care provider, serving more than 10 million members in eight states and the District of Columbia and employing more than 17,000 physicians and 174,000 employees.
Complainant has obtained numerous registrations from the United States Patent and Trademark Office, including those registrations identified in Complainant’s Exhibit B. Complainant’s Exhibit B evidences that the mark KAISER PERMANENTE was first used in connection with Complainant’s health care and related services in 1984, and was registered in 1993. No evidence of abandonment has otherwise been submitted.
Complainant also uses these trademarks in domain names. Complainant is the holder of the registrations for the domain names <kaiserpermanente.org>, which it registered on September 19, 1996; <kaiserpermanente.com>, which it registered on October 7, 1996; and <kaiserpermanente.net>, which it registered on May 8, 2002. Complainant asserts, without rebuttal, that, at its extensive website, accessible via any of these domain names, Complainant receives, on average, tens of thousands of visitors each day.
Complainant has, therefore, offered uncontroverted evidence that it is a nationally recognized health care provider in the United States and that KAISER PERMANENTE and its related trademarks and domain names have acquired extensive recognition and fame among consumers in the United States.
Panel rules that, given the fame and notoriety of Complainant's KAISER PERMANENTE mark, it is inconceivable that Respondent was without actual knowledge of Complainant’s mark when Respondent registered the competing domain name of <kaiserpermanentegroup.com> in 2015, some 22 years after the first federal registration of this famous mark.
Corroborating evidence of Respondent’s actual knowledge of Complainant’s rights in the mark is its ultimate set-up of impersonating the Complainant for its own economic gain, by redirecting the Domain Name URL to Complainant’s actual website at healthy.kaiserpermanente.org. See Complainant’s Exhibit D.
Thus, the Panel concludes that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent uses the confusingly similar <kaiserpermanentegroup.com> domain name to pass itself off as Complainant to further an email based phishing scheme. Indeed, Respondent points the at-issue domain name to Complainant’s official website to give the appearance that the <kaiserpermanentegroup.com> domain name is controlled by Complainant when it is not. The Panel has viewed Complainant’s Exhibits G and H, and judges them to be reliable evidence that Respondent uses the domain name to engage in fraudulent behavior. These exhibits show email negotiations, and a resultant contract, indicating that at least one third-party has been tricked into giving up personal information to Respondent in the misbelief that it was dealing with Complainant. Using the domain name in this manner demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Additionally Respondent’s use of the <kaiserpermanentegroup.com> domain name to engage in a phishing scheme is in itself evidence of Respondent’s bad faith. As evidence of Respondent’s foul intentions, Complainant provides e-mail correspondence between Respondent and a third party, in which the third party appears to believe Respondent is Complainant. Using a domain name to defraud Internet users, as Respondent does in the instant case, suggests bad faith under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel is, thus, compelled to conclude that Respondent both registered and used the domain name, <kaiserpermanentegroup.com>, in bad faith, pursuant to (4)(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kaiserpermanentegroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) (Chair), Panelist
Paul M. DeCicco, Panelist
Carol Stoner, Esq., Panelist
Dated: September 18, 2015
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