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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Blue Cross and Blue Shield Association (BCBSA) v. Domain Deluxe

Case No. D2005-0209

 

1. The Parties

The Complainant is Blue Cross and Blue Shield Association (BCBSA), Chicago, Illinois, of United States of America, represented by Hanson Bridgett Marcus Vlahos & Rudy, LLP, United States of America.

The Respondent is Domain Deluxe, Hong Kong, SAR of China.

 

2. The Domain Names and Registrars

The disputed domain names:

<bcbsfla.com>;
<wwwbcbsal.com>;
<wwwbcbsaz.com>;
<wwwbcbs.com>;
<wwwbcbsde.com>;
<wwwbcbsfl.com>;
<wwwbcbsga.com>;
<wwwbcbsil.com>;
<wwwbcbsks.com>;
<wwwbcbsma.com>;
<wwwbcbsm.com>;
<wwwbcbsmo.com>;
<wwwbcbsnc.com>;
<wwwbcbsne.com>;
<wwwbcbsnj.com>;
<wwwbcbsok.com>;
<wwwbcbst.com>;
<wwwbcbstx.com> are registered with eNom.

The disputed domain name <bluecrossblueshieldofminnesota.com> is registered with The Registry at Info Avenue d/b/a IA Registry.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2005. On February 23, 2005, the Center transmitted by email to eNom and The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain names at issue. On February 23, 2005, IARegistry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name <bluecrossblueshieldofminnesota.com> providing the contact details for the administrative, billing and technical contact. On February 23, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the other disputed domain names in this case providing the contact details for the administrative, billing and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient on February 27, 2005, the Complainant filed an amendment to the Complaint on March 3, 2005. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2005.

The Center appointed Peter G. Nitter as the sole panelist in this matter on March 31, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant, either itself or through its predecessors in interest, is the registrant of 133 currently valid and subsisting U.S federal trademark and service mark registrations which are for the word marks BLUE CROSS, BLUE SHIELD, BLUE CROSS AND BLUE SHIELD ASSOCIATION, the BLUE CROSS and BLUE SHIELD design marks and a BLUE “family” of trade names, trademarks and service marks (“Blue Marks”). Cf. annex 3 to the complaint.

Complainant is an association of 40 independently operated, local Blue Cross and Blue Shield Association Member Plans, which are licensed by Complainant to provide health and life insurance and related goods and services.

Complainant, its predecessors in interest and its Member Plans have been using certain of the Blue Marks since 1938, the earliest incontestable registration was in 1952.

Both Complainant and its Member Plans use the BCBS mark as an acronym that refers to the marks. This use started in 1982. Complainant has used the BCBS mark in commerce since at least 1994.

Complainant uses the domain name <bcbs.com> for its main web site, and uses bcbs-derivative domain names for its other web sites. Complainant also owns many domain names incorporating its Blue Marks.

The Member Plans, which operate across the United States, commonly use the Blue Marks and the name of the state in which they operate as their business name, such as Blue Cross Blue Shield of Alabama. These business names are often abbreviated through use of the BCBS acronym and the abbreviation of the state identifier. For example, Blue Cross Blue Shield of Alabama is known as BCBSAL and uses the domain name <bcbsal.com>.

Complainant’s Blue Marks and BCBS mark have been extensively used, advertised and promoted throughout the United States in connection with Complainant, its Member Plans and licensees, and their services.

 

5. Parties’ Contentions

A. Complainant

Confusingly similar

Each of Respondent’s domain names is either identical or confusingly similar to Complainant’s Blue Marks and BCBS mark.

Although Complainant does not have a U.S. federal trademark registration for its BCBS mark, it is well established that a UDRP complainant may establish rights in a mark by virtue of the common-law, as well as a registration.

Complainant’s common-law trademark rights are established through use of the BCBS mark in commerce by Complainant and its Member Plans since at least as early as 1994.

Consumers have come to associate the BCBS mark with the BLUE CROSS and BLUE SHIELD marks. Complainant use the BCBS mark in its domain names, and refer to itself using the BCBS mark. Previous Panels have found similar use to be evidence of common-law trademark rights.

Therefore, Complainant has rights in its BCBS mark.

Previous panels have held that adding “www” to the beginning of a mark will not avoid a finding of confusing similarity to that mark. Internet users are used to seeing the acronym “www” (World Wide Web) preceding a mark in a domain name. “www” is also an extremely common prefix, when succeeded by a period, to the domain name in a URL for a web page on the Internet. Therefore, the letters “www” have no distinguishing capacity in the context of domain names. Panels have held that the letters “www” will give particular attention to the word succeeding them, because a reader will assume that the domain name is comprised only of the succeeding word. The practical effect of preceding a trademark with the letters “www” in a domain name is a common practice known as “typosquatting”.

Previous Panels have found that the addition of a geographical term to a mark in a domain name does not prevent finding of confusing similarity. The addition of a geographic location is apt to suggest that the mark owner’s goods and services are provided in that particular location.

Therefore, Respondent’s

<bcbsfla.com>;
<wwwbcbsal.com>;
<wwwbcbsaz.com>;
<wwwbcbsde.com>;
<wwwbcbsga.com>;
<wwwbcbsil.com>;
<wwwbcbsks.com>;
<wwwbcbsma.com>;
<wwwbcbsm.com>;
<wwwbcbsmo.com>;
<wwwbcbsnc.com>;
<wwwbcbsne.com>;
<wwwbcbsnj.com>;
<wwwbcbsok.com>;
<wwwbcbst.com>;
<wwwbcbstx.com>;

domain names are especially confusingly similar to Complainant’s marks in light of the fact that Complainant itself and through its Member Plans does offer goods and services in:

Alabama, Arizona, Delaware, Florida, Georgia, Illinois, Kansas, Michigan, Massachusetts, Missouri, North Carolina, New England, New Jersey, Oklahoma, Tennessee and Texas.

The above-mentioned domain names are also confusingly similar to 13 other domain names used by Complainant’s Member Plans, which includes abbreviations to 13 of the states mentioned.

Respondent’s <bluecrossblueshieldofminnesota.com> is exactly identical to Complainant’s federally registered Blue cross and Blue shield marks, with the addition of the name of the state in which Complainant conducts business through its Member Plan, Blue Cross and Blue Shield of Minnesota.

The “.com” suffix is insufficient to distinguish any of the domain names from Complainant’s marks.

In sum, all of Respondent’s domain names are identical or confusingly similar to Complainant’s marks.

No rights or legitimate interests

Respondent has no rights to, or legitimate interests in the 19 domain names at issue. Respondent is not commonly known by those domain names. Respondent is neither using the domain names as a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the domain names without intent for commercial gain.

Respondent uses the domain names to divert Internet users to its web site with links to sites that offer competing services, triggering pop-up commercial ads and a web browser opening Respondent’s other portal web site. Respondent clearly engages in typosquatting, and presumably earns revenue from the commercial pop-up ads.

Respondent is not affiliated with, nor has it been licensed or permitted to use, Complainant’s marks or any domain name incorporating these marks. Respondent has not registered or used the domain names as a trademark, nor has it ever been known by any of the domain names.

Bad faith

Respondent uses the domain names to divert unsuspecting Internet users looking for Complainant or its Member Plans to Respondent’s search portal web site. Respondent’s web site includes links to competing health insurance providers, which is evidence of Respondent’s intent for commercial gain. The domain names also trigger commercial pop-up ads and a new browser window opening to another of Respondent’s search portal web sites, Searchco.

On December 29, 2003, complainant wrote to Respondent advising that Complainant is the owner of the BLUE CROSS, BLUE SHIELD and BCBS marks and that Complainant uses the marks. Further Complainant informed that 18 of the domain names at issue (all but <bluecrossblueshieldofminnesota.com>, which was not yet registered by Respondent) was likely to cause confusion, and asked for a transfer of the domain names to the Complainant. This was followed up by an email January 7, 2004, from Complainant to Respondent.

Respondent agreed on January 7, 2004, to delete registration of the 18 domain names. However, on or about August 11, 2004, Respondent had renewed its registration of the domain names. Then, Complainant wrote to Respondent both on September 1, 2004 and October 1, 2004, to follow up this, but Respondent failed to respond.

On December 15, 2004, Complainant discovered that Respondent had registered the domain name <bluecrossblueshieldofminnesota.com>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain names at issue were all registered by Respondent in 2003, except the <bluecrossblueshieldofminnesota.com> which was registered December 11, 2004, and <wwwbcbs.com> which was registered July 15, 2002.

The Complainant has amongst others registered the following word marks in USA:

- BLUE CROSS AND BLUE SHIELD ASSOCIATIONB;

- BLUE CROSS;

- BLUE-CROSS;

- BLUE SHIELD;

- BLUE CROSS AND BLUE SHIELD STRAIGHT TALK;

The BLUE-CROSS mark was registered in 1952, and the BLUE CROSS mark was registered in 1987. Registration dates for the other marks are not included in the Complaint. This is, however, not necessary.

The Requirement of “a trademark or service mark in which the complainant has rights” (Policy, paragraph 4(a)(i) does not mean that the Complainant has to be the holder of a registered trademark.

The Complainant and its Member Plans have made longstanding and extensive use of the BLUE CROSS and BLUE SHIELD marks. The Complainant has also used the BCBS mark as an acronym to their marks in commerce since at least 1994. It clearly appears that the Complainant has developed an important business in health insurance and related services under the BCBS designation. The Complainant is therefore enjoying common law trademark rights in the BLUE CROSS and BLUE SHIELD marks and the BCBS mark.

All the disputed domain names, except <bluecrossblueshieldofminnesota.com>, contain the BCBS mark with the addition of the Internet designation “www” or an abbreviated geographical term or both.

The addition of “www” to the beginning of a domain name will not avoid a finding of confusing similarity to that mark. The reason for this is the visual similarity and the potential for typo-piracy. Reference is made to Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

The adding of a geographical term does not prevent a finding of confusing similarity. In fact the addition of such a term is apt to suggest that Complainant’s goods and services are provided in that particular location. Reference is made to Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 and the cases referred to in this decision.

<wwwbcbs.com>

The relevant part of the domain name <wwwbcbs.com> consists of Complainant’s BCBS mark, only with the adding of “www” to the beginning. This addition will as mentioned above not avoid a finding of confusing similarity to the mark, and this Panel finds that this domain name is confusingly similar to the Complainant’s BCBS mark.

<bcbsfla.com>

The relevant part of the domain name <bcbsfla.com> consists of Complainant’s BCBS mark, only with the adding of “fla” to the end. This addition will not avoid a finding of confusing similarity to that mark, because “fl” is an abbreviation of the geographical term Florida. It is also likely that “fla” will be understood as such abbreviation in the way it is used in the domain name. This Panel finds that this domain name is confusingly similar to the Complainant’s BCBS mark.

<wwwbcbsal.com>;
<wwwbcbsaz.com>;
<wwwbcbsde.com>,
<wwwbcbsga.com>;
<wwwbcbsil.com>;
<wwwbcbsks.com>;
<wwwbcbsma.com>;
<wwwbcbsm.com>;
<wwwbcbsmo.com>;
<wwwbcbsnc.com>;
wwwbcbsne.com>;
<wwwbcbsnj.com>;
<wwwbcbsok.com>;
<wwwbcbst.com>;
<wwwbcbstx.com>.

The relevant parts of these domain names consists of the Complainant’s BCBS mark, only with the adding of “www” in the beginning and different abbreviations of states in the U.S. in the end. Complainant has business in all states, which are abbreviated in the domain names. The additions mentioned here will not avoid a finding of confusing similarity to the mark. The Panel thus finds that these domain names are confusingly similar to the Complainant’s BCBS mark.

<bluecrossblueshieldofminnesota.com>

The relevant part of the domain name <bluecrossblueshieldofminnesota.com> incorporates Complainant’s BLUE CROSS and BLUE SHIELD marks, only with the adding of the geographical term Minnesota at the end. The adding of the geographical term Minnesota does not prevent a finding of confusing similarity. In fact the addition of “Minnesota” is apt to suggest that Complainant’s goods and services are provided in this state. The Panel finds that this domain name is confusingly similar to the Complainant’s BLUE CROSS and BLUE SHIELD marks.

The “.com” suffix is insufficient to distinguish any of the domain names from Complainant’s marks.

In sum the Panel finds that all the domain names at issue are confusingly similar to Complainant’s marks.

B. Rights or Legitimate Interests

The Panel has considered Complainant’s allegation that the Respondent does not have any rights or legitimate interests in respect of the domain names at issue. Since Respondent is in default, these allegations have not been contested.

Because it is generally difficult for Complainant to prove the fact that Respondent does not have any rights or legitimate interests in the domain names at issue, while Respondent at the same time is given ample opportunity to demonstrate any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy, previous decisions under the UDRP have found it sufficient for Complainant to make a prima facie showing of its assertion.

The Panel finds that the circumstances mentioned and evidenced by Complainant is sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the domain names at issue.

As Respondent has not demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed domain names pursuant to paragraph 4(a) (ii) of the Policy, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain names at issue.

C. Registered and Used in Bad Faith

The Panel has considered Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the domain names in bad faith. By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain names at issue in bad faith.

Complainant has demonstrated that its longstanding use of the BLUE CROSS and BLUE SHIELD marks, both separately and in conjunction, its high volume of business transactions under or in connection with the marks, places the marks in the category of trademarks with a high degree of acquired distinctiveness. As a result of their fame the marks enjoy a wide scope of protection. The Panel therefore finds it likely that Respondent was aware of the existence of the Complainant and its trademark rights at the time the domain names were registered.

In annexes 8, 9, 13, 14 and 15 to the Complaint, Complainant submits copies of emails, which were sent to Respondent. These emails were dated December 29, 2003, January 7, 2004, August 11, 2004, September 1, 2004 and October 1, 2004. The emails put the Respondent on actual notice that the Complainant was the owner of the BLUE CROSS and BLUE SHIELD marks and requested the Respondent to discontinue the use of the domain names.

Three facts illustrates Respondent’s bad faith after this correspondence:

1) Respondent accepted, by email 7. January 2004, to delete the domain names immediately without doing this (cf. annex 10 to the Complaint);

2) After receiving the emails from the Complainant, the Respondent re-registered 18 of the domain names at issue on or about August 11, 2004;

3) Respondent failed to give any response to the emails from Complainant sent after January 7, 2004.

As mentioned the Respondent registered the <bluecrossblueshieldofminnesota.com> later, on December 11, 2004. To register this domain name after being thoroughly made aware of Complainants rights by the correspondence as mentioned above also indicates bad faith.

The Policy paragraph 4(b) sets forth four nonexclusive illustrations of situations that may be deemed to reflect “bad faith” registration and use of a domain name. The Panel finds that one of these has been established, i.e. attempting to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s marks to the source, sponsorship or affiliation of the web site.

The domain names have been used by Respondent to forward to a search portal web site. This web site has various links, including links to web sites selling health insurance for Complainant’s Member Plans and competitors. This shows that Respondent knows that Internet users recognize Complainant’s BCBS mark as identifying Complainant’s Member Plans and its services.

The domain names also trigger numerous pop-up ads and browser windows. One of the browser windows, web site “www.searchco.com” is a web site owned and operated by Respondent. This is also a search portal web site with links to various sites, including sites selling health insurance for Complainant’s licensees and competitors.

The Panel finds that this use of the domain names for commercial gain, namely to sell insurance policies or advertisements, reflects Respondent’s attempt to attract users to its website by improperly associating itself with Complainant’s marks or misleadingly suggesting an affiliation with, or sponsorship by Complainant.

In this case the Respondent has registered 19 domain names, all of which include Complainant’s marks. This is of course not coincidental, and the number of similar registrations here is evidence of bad faith under the Policy paragraph 4(b)(iv). Reference is made to Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201.

Once all these circumstances have been taken into account, there is little doubt in the Panel’s mind that the Respondent registered and used the domain names in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names:

<bcbsfla.com>;
<wwwbcbsal.com>;
<wwwbcbsaz.com>;
<wwwbcbs.com>;
<wwwbcbsde.com>;
<wwwbcbsfl.com>;
<wwwbcbsga.com>;
<wwwbcbsil.com>;
<wwwbcbsks.com>;
<wwwbcbsma.com>;
<wwwbcbsm.com>;
<wwwbcbsmo.com>;
<wwwbcbsnc.com>;
<wwwbcbsne.com>;
<wwwbcbsnj.com>;
<wwwbcbsok.com>;
<wwwbcbst.com>;
<wwwbcbstx.com>;
<bluecrossblueshieldofminnesota.com>.

be transferred to the Complainant.


Peter G. Nitter
Sole Panelist

Dated: April 5, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0209.html

 

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