WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blue Cross and Blue Shield Association v. Garrett Ltd./John Nunley
WIPO Case No. D2003-0028
1. The Parties
Complainant is Blue Cross and Blue Shield Association ("Blue Cross"), 225 North Michigan Ave. Chicago, IL 60601-7680, United States of America.
The Respondent is Garrett Ltd./John Nunley, 1909 Autumn Creek Drive, Arab, Alabama 35016, United States of America, John Nunley, administrative, technical, and zone contact (Registrant of <bluecrossbluesheild.com>). The prior Registrant is WebStealers, John Nunley, 125 11th Place N.W., Arab, Alabama 35016, United States of America, John Nunley, technical contact.
2. The Domain Name and Registrar
The domain name in issue is <bluecrossbluesheild.com> ("the domain name").
The registrar is Register.com, 575 8th Avenue, 11th Floor, New York, NY 10018, United States of America ("Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received Blue Crossís Complaint via email on January 14, 2003, and in hard copy on January 15, 2003.
The Center contacted the Registrar on January 15, 2003, requesting verification of the domain nameís registration. On January 15, 2003, the Center received confirmation from the Registrar that:
1) Complainant had sent it a copy of the Complaint, 2) the domain name was registered with Register.com, 3) Respondent is the current registrant, 4) the Policy applies to the domain name, and 5) the current status of the domain name is active. The Registrar additionally confirmed the contact name, address, email address, and phone number for the administrative, technical, and zone contact for the domain name.
After verifying that the Complaint (henceforth, the "Complaint") complied with the formal requirements of the Rules, Supplemental Rules, and Policy, the Center notified the registrant and technical contacts on January 17, 2003, via email, and FedEx (to the contact addresses for both the Respondent and the prior Registrant) of the commencement of the administrative proceeding. In these communications the Center notified Respondent that Complainant had submitted a Complaint as described above. Accordingly, the administrative proceeding commenced on January 17, 2003. The notification requested that Respondent reply by February 6, 2003, in accordance with Paragraph 5 of the Rules and the Supplemental Rules. A copy of the notification was emailed to Complainant at both addresses.
On January 17, 2003, the Center received, via email, a mail delivery subsystem message stating that one of the email addresses for the Respondent (firstname.lastname@example.org) had "transient non-fatal errors" and that the server could not deliver the email message from the Center. On January 22, 2003, the Center received a final message from the mail delivery subsystem stating that the connection had timed out with <bluecrossbluesheild.com> and that the message would be deleted from the queue. The Panel is not aware of any such error messages for the email sent to Respondentís second email address, email@example.com. The hard copy communication from the Center to the Respondent sent by FedEx on January 17, 2003, was returned to the Center by FedEx on January 29, 2003. It was unclear which of the Respondentís addresses was defective.
The Panel could not determine the exact reason why these communications from the Center to the Respondent were unsuccessful. Because these notifications or attempted notifications were made in accordance with Paragraph 2 of the Rules, however, the Panel concludes that they satisfy the communications requirements of the Rules. Domain name registrants are responsible for providing accurate contact information.
Having received no response to the notification by the February 6, 2003 deadline, the Center issued a Notification of Respondent Default on February 7, 2003. The notice was sent via email and post/courier to the Respondent and prior Registrant. The notice stated that the Center would appoint a single Panelist to comprise the panel, the panel would be informed of Respondentís default and it would be up to the panelís discretion whether to consider any late-filed Response. The Panel is not aware of any indications that this notice met with any delivery difficulties.
On February 27, 2003, Complainant and the Respondent were notified of the identity of the undersigned sole Panelist. Additionally, the Center notified Complainant and Respondent that the Panelist had complied with Paragraph 7 of the Rules by submitting a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
4. Factual Background; Partiesí Contentions
a. The Trademarks
Blue Cross alleges in its Complaint, and submits evidence, that its BLUE CROSS and BLUE SHIELD marks ("the Marks") are federally registered in connection with healthcare and health insurance services in the United States. The Marks, as well as Blue Cross and Blue Shield design marks, and a Blue "family" of marks, comprise 133 U.S. federal registrations, examples of which are shown in Annex 3 to the Complaint. Blue Crossís federal registration in the United States for its BLUE CROSS and BLUE SHIELD trademarks predate the Respondentís registration of the domain name at issue here.
Blue Cross conducts business on the Internet at <bluecrossblueshield.com>.
b. Jurisdictional Basis
As stated, the registrar verified that the Policy applies to the domain name. Therefore, as this proceeding is likewise governed by the Policy in accordance with it, the Rules, and the Supplemental Rules, the Panel has jurisdiction to decide this dispute.
c. The Complaint
Blue Cross asserts as follows:
ē Complainant has enjoyed extensive use of the BLUE CROSS and BLUE SHIELD trademarks.
ē The Marks are famous and incontestable.
ē The disputed domain name is confusingly similar to the Marks.
ē Respondent has no legitimate interest in the domain name or in the Marks.
ē Respondent has not set forth any legitimate right to use the domain name.
ē Respondent has registered and used the domain name in bad faith.
As noted above, Respondent has provided no response, although the deadline for doing so expired on February 6, 2003. Accordingly, the Respondent is in default. Given Respondentís default, the Panel can infer that Complainantís allegations are true where appropriate to do so in accordance with the Paragraph 14 of the Rules. Talk City Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a) of the Policy.
5. Discussion and Findings
Accordingly, the Panel now proceeds to consider this matter on the merits in light of the Complaint, uncontested as no response was filed, the Policy, the Rules, and other applicable authority.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to each domain name, each of the following:
(i) The domain name in issue is confusingly similar to Blue Crossís trademarks at issue here; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name was registered and is being used in bad faith.
a. Effect of the Default
In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the domain name, such as use or preparation to use the domain name prior to notice of the dispute, being commonly known by the domain name, or making legitimate noncommercial or fair use of the domain name.
b. Complainantís Proof
(i) Domain Name Identical or Confusingly Similar to Trademark
The domain name <bluecrossbluesheild.com> is, but for the misspelling of the word "shield," identical to the registered trademarks BLUE CROSS and BLUE SHIELD belonging to Complainant Blue Cross, as well as to Complainantís own domain name <bluecrossblueshield.com>.
Despite the maxim "i before e except after c," it is still common for individuals to misspell words by reversing the order of those two vowels, either for lack of familiarity with the correct spelling or simply by making a typographical error. It is well established that registrations that attempt to capitalize on such misspellings (sometimes referred to as "typosquatting") are actionable under the Policy. Encyclopedia Britannica, Inc. v. John Zuccarini, WIPO Case No. D2000-0330 (June 7, 2000), ß 3 (closely misspelled domain name satisfies "confusingly similar" factor); Hewlett-Packard Co. v. Cupcake City, File No. FA000200093562 (NAF March 31, 2000) (finding a "phonetically identical" but differently spelled mark to meet the Policy requirement).
Because the domain name is identical to one of the Complainantís Marks (BLUE CROSS) and identical to another (BLUE SHIELD) but for this misspelling, the Panel concludes that the domain name is identical or confusingly similar to Blue Crossís trademarks. See e.g. Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (September 25, 2000), (<estelauder.com> confusingly similar to mark ESTEE LAUDER); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001) (<nicholekidman.com> confusingly similar to mark NICOLE KIDMAN).
Complainant has met the requirement of Paragraph 4(a)(i) of the Policy.
(ii) Whether Respondent Has Rights Or Legitimate Interest In the Domain Name
There is no evidence in the record that Respondent has any legitimate interest in the domain name. The fame, distinctiveness, strength, and priority of use of Complainantís mark, coupled with the domain name being identical or confusingly similar to Complainantís mark and Respondentís failure to advance any of the defenses provided in Paragraph 4(c) of the Policy, lead this Panel to conclude that Respondent has no rights or legitimate interest in the domain name.
(iii) Registration and Use in Bad Faith
A. Constructive Notice
Marks that have a "high degree of inherent or acquired distinctiveness" are entitled to a greater scope of protection than others. See Digital City Inc. v. Smalldomain, WIPO Case No. D2000-1283 (November 6, 2000). This Panel finds that 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 transacted under or in connection with the marks, as well as the worldwide use, registration, and recognition of the marks, places the Marks in the category of trademarks with a "high degree of Ö acquired distinctiveness" and that the marks, as a result of their fame, enjoy a wide scope of protection. This fame makes it likely that Respondent was aware of the existence of the Complainant and of its trademark rights as of the time the domain name was initially registered.
The federal registration of the Marks prior to Respondentís registration of the domain name provides further support for this conclusion. Under Section 22 of the United States Trademark Act, "[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrantís claim of ownership thereof." As a matter of United States trademark law, therefore, it may be presumed that Respondent was on notice of Complainantís rights in the BLUE CROSS and BLUE SHIELD marks prior to registering the domain name. See, e.g., Barneyís Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 (April 2, 2000).
For the above reasons, the Panel finds that Respondent had at least constructive notice of the marks prior to registration of the domain name.
B. Actual Notice
In Annex 8-10 to the Complaint, Blue Cross submits copies of three letters which were sent to the prior Registrant, WebStealers. These letters were dated April 17, 2001, July 20, 2001, and August 23, 2002. The letters put the prior Registrant on actual notice that the BLUE CROSS and BLUE SHIELD marks are owned by Blue Cross and requested that the prior Registrant discontinue use of the domain name. In addition, the letters that requested that WebStealers discontinue use of the domain name <bluecrosscom.com> which the prior Registrant had registered (<bluecrosscom.com> expired in approximately September 2001, and is not at issue in the instant Complaint).
Complainant relies upon this correspondence, and upon prior Registrantís (and Respondentís) failure to answer the letters, in support of its bad faith theory. Non response to a letter, particularly when sent after registration has occurred, and to a different entity from the Respondent, normally proves little. There are two facts, however, which alter this calculus here.
First, the domain name was re-registered after it expired on April 27, 2002. By that time, the prior Registrant had received actual notice from Complainant of Blue Crossís rights and registrations in the Marks.
Second, the administrative contact for the prior Registrant, WebStealers, and the administrative, technical and zone contact for the Respondent, Garrett Ltd./John Nunley, appears to be the same John Nunley. Although the street addresses listed for the two entities are different, both are located in Arab, Alabama and the telephone number and email addresses are identical. It appears that John Nunley, administrative contact for WebStealers is the same John Nunley who is the Respondent. This Panel therefore determines that because WebStealers and John Nunley were on actual notice of the Marks prior to the re-registration of the domain name, so was the Respondent Garrett Ltd./John Nunley.
C. Evidence of Bad Faith
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. In this case, the Panel finds that the fourth such type of bad faith has been established, i.e. attempting to attract, for commercial gain, Internet users to the Respondentís web site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship or affiliation of the web site.
The domain name resolves to an active website entitled "Quality Affordable Insurance Health and Auto." This site features, among other things, offers to sell health insurance and automobile insurance. Health insurance is precisely the field of use for which Complainantís marks are primarily registered and used.
The Panel finds that this use of the domain name for commercial gain, namely to sell insurance policies or advertisements for insurance policies, reflects Respondentís attempt to attract users to its website by improperly associating itself with Complainantís marks or misleadingly suggesting an affiliation with, or sponsorship by, Complainant. Respondent has thereby violated Paragraph 4(b)(iv) of the Policy.
In light of the above findings and analysis, the Panel decides that Complainant Blue Cross has met its burden of proving that: (1) the domain name is identical or confusingly similar to marks belonging to the Complainant; (2) Respondent has no rights or legitimate interest in the domain name; and (3) the domain name has been registered and is being used by Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that registration of the <bluecrossbluesheild.com> domain name be transferred to Blue Cross.
Dated: March 12, 2003