The Complainant is Blue Cross and Blue Shield Association of Chicago, Illinois, United States of America, represented by Hanson Bridgett LLP. United States of America.
The Respondent is BusinessWebMaker.com of Missouri City, Texas, United States of America.
The disputed domain names <thebluecrossblueshield.com> and <thebluecrossblueshieldoftexas.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, Inc. (“GoDaddy”)
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2010. On March 4, 2010, the Center transmitted by e-mail to GoDaddy.com a request for registrar verification in connection with the Disputed Domain Names. On March 8, 2010, GoDaddy transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on March 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2010. Respondent sent a communication to the Center on March 30, 2010.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 13, 2010. 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.
Complainant states that it is “an association of 39 independently operated, local Blue Cross and Blue Shield Association member plans (‘Member Plans'), which are licensed by Complainant to provide health and life insurance, health care delivery services, and related goods and services.” Complainant further states that it, its predecessors in interest and its Members Plans have used the BLUE CROSS, or BLUE SHIELD, or BLUE CROSS AND BLUE SHIELD ASSOCIATION or the BLUE CROSS AND BLUE SHIELD design marks since 1934, and that it is the owner of 221 U.S. trademark registrations for these marks (the “BLUE Marks”). Complainant provided as annexes copies of relevant certificates of registration in support thereof, including, among many others, the following:
- U.S. Reg. No. 554,488 for BLUE-CROSS, registered February 5, 1952, for use in connection with “distribution of hospital care on a pre-payment financing basis.”
- U.S. Reg. No. 1,426,942 for BLUE CROSS, registered January 27, 1987, for use in connection with “home healthcare services, preventive healthcare services, health care services rendered through a health maintenance organization, namely physician services, dental services, hospital services, health treatment and therapy services, diagnostic testing and examination services, family planning services, mental health services, nursing services and prescription drug services, and arranging for ambulance services.”
- U.S. Reg. No. 557,037 for BLUE SHIELD, registered April 1, 1952, for use in connection with “furnishing medical care on a pre-payment basis.”
- U.S. Reg. No. 2,016,013 for BLUE SHIELD, registered November 12, 1996, for use in connection with “underwriting, financing, administration, and brokerage of life insurance.”
- U.S. Reg. No. 1,744,958 for BLUE CROSS AND BLUE SHIELD ASSOCIATION, registered January 5, 1993, for use in connection with “association services; namely, promoting the delivery of quality, cost effective health care by health care plans.”
Complainant states that it is the registrant of “numerous” domain names that include the BLUE Marks, including <bluecrossblueshield.com>.
Each of the Disputed Domain Names was created on October 18, 2006.
Complainant states, and includes copies of correspondence in support thereof, that it communicated with Respondent on the following dates regarding the Disputed Domain Names:
- On July 24, 2008, counsel for Complainant sent a letter to Respondent demanding that Respondent “relinquish” its registration of the Disputed Domain Names, which were being used in connection with websites that caused confusion with Complainant.
- On July 28, 2008, counsel for Complainant sent another letter to Respondent.
- On July 29, 2008, Respondent sent an e-mail to counsel for Complainant, stating, in part, that he “ha[s] a buyer for my domains and will be selling them shortly [sic] on the other hand, if your client is interested in purchasing them we can discuss further. Currently, I have taken my sites down; my lawyers are investigating this matter as well.”
- On July 29, 2008, counsel for Complainant sent an e-mail to Respondent informing him that “there is no third party in a position to legitimately purchase or use these domain names” and requesting that Respondent transfer the Disputed Domain Names to Complainant.
- On September 5, 2008, counsel for Complainant sent another e-mail to Respondent.
- On September 5, 2008, Respondent sent an e-mail to counsel for Complainant stating, “I have a buyer for my domains and I am selling both of my domains to him in a week.”
- On October 24, 2008, counsel for Complainant sent another letter to Respondent again demanding transfer of the Disputed Domain Names.
- On December 2, 2008, counsel for Complainant sent another letter to Respondent again demanding transfer of the Disputed Domain Names.
Complainant states that “[s]ince the websites remained disabled, Complainant decided to monitor the situation and spend its resources on more egregious infringements. However, on or about January 12, 2010 Complainant became aware that the disputed domain names were again resolving to websites at which both the Complainant's services, as well as the services of its competitors were seemingly offered for sale. To this day, Respondent continues to use the sites in connection with the sale of health insurance services for his own financial gain.”
Complainant contends, in relevant part, as follows:
- Each of the Disputed Domain Names is confusingly similar to the Blue Marks because “[t]hese domain name merely combine Complainant's famous BLUE CROSS and BLUE SHIELD marks and in one case adds the generic term ‘the' and in the other, the generic terms ‘the' and ‘of' and the geographic term ‘texas.' It is well established that the addition of generic terms and geographic descriptors to a mark in a domain name does not prevent a finding of confusing similarity.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “Respondent is not commonly known by those names, nor to the best of Complainant's knowledge does Respondent have any common-law trademark or service mark, or registered trademark or service mark, or trademark or service mark application anywhere in the world for marks that correspond to the disputed domain names. Respondent is not affiliated with, nor has he been licensed or permitted to use, Complainant's Blue Marks, nor any domain names incorporating these marks. Furthermore, Respondent neither uses these domain names in connection with the bona fide offering of goods and services, nor in a non-commercial manner, nor in a manner that might be deemed a legitimate fair use.”
- The Disputed Domain Names have been registered and used in bad faith because Respondent “intentionally registered these names with the intent to get a free ride off the fame of Complainant's marks”; and “use of Complainant's marks in Respondent's domain names is deliberately designed to misdirect consumers away from Complainant” because the Disputed Domain Names “resolve to websites at which [Respondent] offers to provide health insurance quotes for both Complainant's licensees as well as Complainant's competitors… from which Respondent presumably earns revenue.”
Although Respondent did not file a formal response, it submitted an e-mail to the Center stating:
I would like to assure you that my domains / websites are not misleading to any online health insurance seekers
If you examine my websites, it clearly highlights that my domains / websites have absolutely nothing to do with BlueCross BlueShield Association. I am not using their logos, content, or any trademarks and it clearly states that, The Blue Cross Blue Shield is a free online resource for health insurance quotes. All Quotes are provided by Ehealthinsurance. Trademarks, logos and copyrights are the property of their respective owners.
I have not solicited or interested in soliciting any BlueCross BlueShield customers or potential customers via mail, email or any other methods available. I am willing to edit my website, as I did on 6-24-2008 as requested by [counsel for Complainant]…
Once again, my intentions are not to mislead, confuse or solicit BlueCross BlueShield customers and would live [sic] to resolve this case as soon as possible.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domains Name are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the BLUE Marks, and Respondent does not dispute the validity of the BLUE Marks.
As to whether the disputed domain names are identical or confusingly similar to the BLUE Marks, the relevant comparison to be made is with the second-level portion of each domain name only (i.e., “thebluecrossblueshield” and “thebluecrossblueshieldoftexas”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
The Panel agrees with Complainant's argument that “the addition of generic terms and geographic descriptors to a mark in a domain name does not prevent a finding of confusing similarity.” See Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456 (finding <harrodsdepartmentstores.com> and <harrodsstores.com> confusingly similar to HARRODS) and Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 (finding <rollsroycecanada.com> and <rollsroycecanada.net> confusingly similar to ROLLS-ROYCE).
Accordingly, each of the Disputed Domain Names is confusingly similar to Complainant's BLUE Marks, and the Panel is convinced that Complainant has proven the first element of the Policy.
Complainant alleges that, inter alia, Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “Respondent is not commonly known by those names, nor to the best of Complainant's knowledge does Respondent have any common-law trademark or service mark, or registered trademark or service mark, or trademark or service mark application anywhere in the world for marks that correspond to the disputed domain names. Respondent is not affiliated with, nor has he been licensed or permitted to use, Complainant's Blue Marks, nor any domain names incorporating these marks. Furthermore, Respondent neither uses these domain names in connection with the bona fide offering of goods and services, nor in a non-commercial manner, nor in a manner that might be deemed a legitimate fair use.”
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence in Respondent's e-mail to the Center of Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant appears to allege that bad faith exists pursuant to paragraph 4(b)(iv) given that the Disputed Domain Names “forward to… sites [that] have content related to healthcare and health insurance.” Indeed, screenshots provided by Complainant as annexes show that the Disputed Domain Names have been used by Complainant in connection with websites that contain prominent references to the BLUE Marks and the services offered by Complainant in connection with the BLUE Marks as well as Complainant's competitors. Such use is likely to cause confusion, as numerous panels have held, including those cited by Complainant: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; and Wells Fargo & Company v Azra Khan, NAF Case No. 135009.
Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.
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 <thebluecrossblueshield.com> and <thebluecrossblueshieldoftexas.com> be transferred to Complainant.
Douglas M. Isenberg
Dated: April 27, 2010