WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Blue Cross and Blue Shield Association v. Imaad Zuberi

Case No. D2003-0130

 

1. The Parties

The Complainant is Blue Cross and Blue Shield Association, an Illinois corporation whose principal place of business is in Chicago, Illinois, the United States of America.

The Respondent is Imaad Zuberi, an individual whose address is in Los Angeles, California, the United States of America.

 

2. The Domain Names and Registrar

The domain names in dispute are: <bluecross.med.new.net> and <blueshield.med.new.net>.

The registrar for the disputed domain names is: New.net, Inc. of Sherman Oaks, California, the United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 14, 2003, by email, and on January 16, 2003, in hard copy. On January 15, 2003, the Center transmitted by email to the registrar, New.net, Inc., a request for registrar verification on the two disputed domain names.

On March 5, 2003, the registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

Earlier, on January 16, 2003, in view of settlement talks between the parties, the Complainant had requested that the Center suspend the proceeding. But after the settlement talks failed, on February 24, 2003, the Complainant requested that the Center reinstate the proceeding.

On March 7, 2003, the Center sent the Complainant a Complaint Deficiency Notification informing the Complainant it was necessary to submit to jurisdiction at the Respondentís place of business. On March 7, 2003, the Complainant filed a satisfactory Amendment to Complaint by email and fax.

The Center verified that the Complaint satisfied the formal requirements of the Model Domain Name Dispute Resolution Policy (the "Policy"), the Rules for the Model Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "UDRP" and the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding began on March 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was set at March 31, 2003. The Respondent did not file a response and was notified of his default on April 4, 2003. As provided in Paragraph 5(e) of the Rules, the Panel will decide this Case based on the Complaint alone.

The Center appointed Dennis A. Foster as Sole Panelist on April 14, 2003. The Panel finds that it was properly constituted. Earlier, on April 11, 2003, the Panel had submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

This Decision is due on April 28, 2003.

 

4. Factual Background

The Respondent registered the disputed domain name, <bluecross.med.new.net> on May 23, 2001. On November 1, 2001, the Complainant wrote to the Respondent alleging violation of trademark rights and demanding transfer of this disputed domain name (Complaint Annex 5).

On May 15, 2002, the Respondent renewed the <bluecross.med.new.net> registration and also registered the second disputed domain name, <blueshield.med.new.net>. The Complainant wrote a second, similar letter to the Respondent on June 14, 2002, (Complaint Annex 7), and a third one on August 27, 2002, (Complaint Annex 8). It appears that the parties subsequently discussed their claims to the two disputed domain names, but that they never reached an agreement.

 

5. Partiesí Contentions

A. Complainant

- The Complainant, either itself or through its predecessors in interest, is the registrant of 159 currently valid and subsisting U.S. federal trademark and service mark registrations, 133 of which are for the word marks Blue Cross and Blue Shield, the Blue Cross and Blue Shield design marks and a Blue "family" of trade names ("Blue Marks"), trademarks and service marks. Many of the 159 registrations have become incontestable under Section 15 of the Lanham Act. (Annex 3).

- The Complainant is an association of 45 independently operated, local Blue Cross and Blue Shield Member Plans which are licensed by the Complainant to provide prepaid healthcare and health insurance services. The Complainantís services and those of its independent Member Plans are identified by and rendered under the Blue Marks. The Complainant, its predecessors in interest and/or its licensees have been using certain of the Blue Marks since 1938; the earliest incontestable registration was in 1952. These registrations are conclusive evidence of the Complainantís exclusive right to use, or authorize the use of, the registered Blue Cross marks in commerce.

- Complainantís marks have been extensively used, advertised and promoted throughout the United States in connection with member plans and licensees, and their services. In the year 2000 alone, the Complainantís total system-wide revenue surpassed U.S. $126 billion dollars. Many millions of these dollars have been spent in establishing, in the mind of the general public, the Blue Marks as identifying the Complainant, its member plans and licensees, and the quality services these plans render. At the end of 2000, total enrollment in 47 member plans surpassed 84.7 million people, which amounts to nearly 1 in 3 United States citizens.

- The Complainantís marks were famous long before the Respondent registered the disputed domain names.

- On May 23, 2001, with prior knowledge and constructive notice of Complainantís rights and federal registrations, the Respondent registered the disputed domain name <bluecross.med.new.net>.

- The disputed domain names are identical to the Complainantís Blue Cross and Blue Shield marks.

- When the Respondent renewed the registration for <bluecross.med.new.net> and registered <blueshield.med.new.net> on May 15, 2002, he had actual knowledge of the Complainantís Blue Cross and Blue Shield marks.

- Respondent is not affiliated with the Complainant or any of its Member Plans or their services, nor is he licensed to use the Blue Marks.

- Respondent has not registered or used the domain names as trademarks, nor has he ever been known by the names Bluecross.med or Blueshield.med.

- Moreover, Respondent has not stated any legitimate purpose in using the domain names. Respondent claims rights in the domain names merely because the registrar allowed him to register them; however, a registrarís allowance of domain name registration does not establish any legitimate interests in the domain name (Barneyís Inc. v. BNY Bulletin, WIPO Case No. D2000-0059 (April 2, 2000), <barneysnewyork.com>).

- Respondent has never shown that, prior to receiving notice of this dispute, he took any steps or had any plans to use the disputed domain names, other than to sell them. This time period of one and one-half years also shows that the Respondent registered and is using the disputed domain names in bad faith.

- Respondent registered and renewed his registration of the disputed domain names without any legitimate interest in them, and despite his knowledge that the Complainant has the exclusive rights in the trademarks incorporated in those names.

- The disputed domain names, <bluecross.med.new.net> and <blueshield.med.new.net>, should be transferred to the Complainant.

B. Respondentís Contentions

The Respondent is in default in this proceeding and thus did not file any contentions.

 

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain names, <bluecross.med.new.net> and <blueshield.med.new.net>, transferred to it, Complainant must prove the following (the Policy, paragraphs 4(a)(i-iii)):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Complainant has exhibited a number of United States trademark and service mark registrations for the names "Blue Cross" and "Blue Shield", e.g.: registration no. 557,037 for the service mark BLUE SHIELD renewed on April 1, 1992, for pre-paid medical care; or the BLUE CROSS registration no. 1,293,244 dated September 4, 1984, for prepaid dental and other health care services. The disputed domain names, <bluecross.med.new.net> and <blueshield.med.new.net> are identical to the Complainantís registered trademarks and service marks. The Panel finds that "med.new.net" is not part of the disputed domain names for the purposes of determining confusing similarity or identity under the Policy. All domain names registered in this domain will end with "med.new.net". The Panel notes that, quite early on, this principal also was established under ICANNís UDRP. (See, e.g., Casa Editorial El Tiempo S.A. v. Spider Webs Ltd., WIPO Case No. D2000-1757 (April 8, 2001), where the panel stated that it determined the issue of identity or confusing similarity "obviously excluding the suffix Ď.comí.")

The Panel thus finds the Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.

Legitimate Rights or Interests

The Complainant avers that it has never authorized or licensed the Respondent to use its Blue Cross and Blue Shield trademarks. The Respondent is in default in this proceeding and has not attempted to show the Panel he has legitimate rights or interests in the disputed domain names as the Policy provides at paragraph 4(c)(i-iii). Hence, the Panel finds the Complainant has proved that the Respondent has no legitimate rights or interests in the disputed domain names per the Policy, paragraph 4(a)(ii).

Registered and Used in Bad Faith

The Respondent registered for the first time the disputed domain names <bluecross.med.new.net> and <blueshield.med.new.net> on May 23, 2001, and May 15, 2002, respectfully. Since these dates, there is no evidence that the Respondent has made any attempt to use the disputed domain names. Thus, as is well-settled under the ICANN UDRP, the Panel finds that the Respondentís passive holding of these famous trademarks for this period of time without any use is enough to constitute bad faith registration and use (as in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), where the panel found the respondentís passive holding of a domain name containing a famous trademark amounted to bad faith registration and use).

The Panel is aware that passive holding is not one of the specifically listed bad faith grounds under the Policy, paragraphs 4 (b)(i-iv), but paragraph 15(a) of the Rules gives the Panel the latitude to find other bad faith grounds where appropriate. The Panel finds the Complainant has satisfied its burden of proof under the Policy, paragraph 4(a)(iii).

 

7. Decision

Based on the above discussion and paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the two disputed domain names, <bluecross.med.new.net> and <blueshield.med.new.net> be transferred from the Respondent, Imaad Zuberi, to the Complainant, Blue Cross and Blue Shield Association.

 


 

Dennis A. Foster
Sole Panelist

Dated: April 28, 2003