World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blue Cross and Blue Shield Association v. Whois Privacy Service

Case No. D2011-1767

1. The Parties

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 Whois Privacy Service of Shanghai, China.

2. The Domain Names and Registrars

The disputed domain names <blucrossbluesheild.com> and <cabluecross.com> are registered with Fabulous.com.

The disputed domain name <febblue.org> is registered with Answerable.com (I) Pvt Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2011. On October 18, 2011, the Center transmitted by email to Fabulous.com and Answerable.com (I) Pvt Ltd. a request for registrar verification in connection with the disputed domain names. On October 19, 2011, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 19, 2011, Answerable.com (I) Pvt Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 19, 2011 the Complaint was notified of a formal deficiency with its Complaint in accordance with paragraph 4(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). An Amendment to the Complaint was filed with the Center on October 20, 2011.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. An email communication from the Respondent was received by the Center on November 11, 2011.

The Center appointed Andrew Brown QC as the sole Panelist in this matter on November 17, 2011. 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

The Complainant, Blue Cross and Blue Shield Association, is a non-profit corporation based in Illinois, United States of America. The Complainant is an association of 39 independently-offered Blue Cross and Blue Shield association member plans which are licensed by the Complainant to provide health and life insurance, healthcare delivery services, and related goods and services.

The Complainant is the registered proprietor of numerous United States trademark registrations including word and device marks containing BLUE CROSS and BLUE SHIELD. These include BLUE-CROSS dating from September 30, 1947, BLUE CROSS dating from August 29, 1985, BLUE SHIELD logo mark dating from December 15, 1949, BLUE SHIELD dating from August 1, 1983, and BLUE CROSS AND BLUE SHIELD ASSOCIATION dating from April 17, 1992. The Complainant states that these marks, along with unregistered common law marks, comprise its “BLUE family” of marks.

In addition, the Complainant is the owner of a series of United States trademark registrations incorporating FEP and FEP BLUE. The FEP and FEP BLUE marks refer to the Federal Employment Program overseen by the Complainant. Such marks include the word mark WWW.FEPBLUE.ORG dating from May 8, 1998, and FEP and FEP BLUE VISION logo marks dating from May 5, 2005 and November 3, 2005.

The Complainant asserts that its marks containing FEP and BLUE have been extensively advertised, promoted, and used throughout the United States in connection with the Complainant, its member plans and services. In 2002, its total gross revenue surpassed USD 360 billion. Current total enrolments in services connected with the Complainant amount to roughly one in three Americans. The Complainant asserts that the widespread use, promotion and recognition of its marks has led to the public recognizing its FEP and BLUE marks as identifying the Complainant, and that this recognition long preceded the conduct of the Respondent.

The Complainant is also the owner of a number of domain name registrations for domain names incorporating BLUE CROSS, BLUE SHIELD, and FEP BLUE, including <bluecross.com> registered on June 17, 1996; <bluecrossblueshield.com> registered on April 1, 1999; <fepblue.org> registered on October 15, 1995.

The Complainant asserts that it has been using its BLUE CROSS and BLUE SHIELD marks in commerce for more than 70 years, and its FEP marks for over 50 years.

The disputed domain name <febblue.org> was first registered on August 30, 2000. The disputed domain name <cabluecross.com> was first registered on October 12, 2004 and <blucrossbluesheild.com> was first registered on October 2, 2005. The WhoIs records provided by the Complainant list the current registrant of all of the disputed domain names as “Whois Privacy Service”. That entity appears to be a privacy or proxy registrant service.

Evidence filed by the Complainant shows that the Respondent was not the initial registrant of two of the three disputed domain names. WhoIs records provided by the Complainant indicate that as at June 2010 the registrant of <febblue.org> was Adjaele Global Internet Limited of Shanghai, China. As at May 2010 the registrant of <blucrossbluesheild.com> was also Adjaele Global Internet Limited. Further WhoIs records provided by the Complainant show that in July and August 2010 the registrant for both of these disputed domain names had changed to WhoIs Privacy Service. The Panel does not have evidence as to the exact date on which these changes of registrant took place, nor evidence of any transactions or similar which underlie the changes.

The WhoIs records provided by the Complainant show that Whois Privacy Service was the registrant for <cabluecross.com> from at least February 2009. The Panel does not have evidence of the existence of any prior registrant of that disputed domain name.

The Complainant states that as at the time of the Complaint, all of the disputed domain names hosted websites containing sponsored links to further websites selling health insurance services including websites of the competitors of the Complainant. The Respondent in its response advised that the disputed domain names have been “parked,” and that advertisements automatically optimized for the interests of visitors to the disputed domain names are displayed.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain names be transferred to it.

B. Respondent

The Respondent responded to the Complainant’s contentions out of time. The due date for a Response was November 10, 2011, and the Response was received on November 11, 2011. In such cases, it is at the discretion of the Panel whether to consider any Response. The Panel has elected to consider the Respondent’s Response. The Respondent’s Response is, in summary:

(a) The domain name <febblue.org> is clearly different from <fepblue.org>. (No comment is made in relation to the other disputed domain names.)

(b) The domain names are being used for a bona fide offering of goods or services. In particular the domains have been “parked” and advertisements automatically optimized to the interests of visitors to the domain names are being shown. In the Respondent’s opinion it is providing a service to visitors to the domain names by giving them the opportunity to click on advertisements for goods and services that might interest them;

(c) Investment in domain names is not inherently bad faith. In a dispute where the Complainant is actively making use of a mark while the Respondent is merely parking a domain name similar to that mark, the inference is drawn by Panelists that the parking activity is a bad faith attempt to profit from the Complainant’s business activities. Panelists who hold this view do not give credence to the possibility that domain names have inherent value due to their generic meaning, or that those generic domains will attract traffic;

(d) The Respondent’s use of the domain names, which is to display different advertisements depending on the time viewed and location of the visitor, does not equate to setting out to mislead Internet users. Internet users viewing the pages would not be in any doubt that the Respondent’s web pages are unofficial web pages.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Given that a Response to this Complaint was received from a person providing as a return email address the registrant email address listed for “Whois Privacy Service” in each of the disputed domain name registrations, and given that the Panel is not aware of the identity of any underlying registrant, the Panel is treating Whois Privacy Service as the proper Respondent to this Complaint

A. Identical or Confusingly Similar

The disputed domain name <febblue.org>

The disputed domain name <febblue.org> was first registered on August 30, 2000. The Panel considers that the Complainant had clear registered and unregistered rights in the trademark FEP BLUE as at that date.

In particular, the Complainant’s registered rights include its registration for the word mark WWW.FEPBLUE.ORG from May 8, 1998. The Complainant also had unregistered rights in the trademark FEP BLUE by way of its registration of domain names incorporating FEP BLUE including <fepblue.org> registered on October 15, 1995 and <fepblue.com> created on September 1, 1999, and by way of its commercial use prior to the relevant date of its marks containing FEP.

The Panel considers that the disputed domain name <febblue.org> is a typo-variant of the Complainant’s registered trademark WWW.FEPBLUE.ORG and is therefore confusingly similar.

The disputed domain names <cabluecross.com> and <blucrossbluesheild.com>.

The disputed domain name <cabluecross.com> was first registered on October 12, 2004. The disputed domain name <blucrossbluesheild.com> was first registered on October 2, 2005.

The Panel considers that the Complainant had clear registered and unregistered rights in the trademarks BLUE CROSS and BLUE SHIELD as at the date of registration of these two disputed domain names.

In particular, the Complainant’s registered rights include its registrations for the word mark BLUE CROSS dating from August 29, 1985, BLUE SHIELD dating from August 1, 1983, and BLUE CROSS AND BLUE SHIELD ASSOCIATION dating from April 17, 1992. The Complainant’s unregistered rights in the marks BLUE CROSS and BLUE SHIELD date from much earlier and include its domain names incorporating those marks including <bluecross.com> registered on June 17, 1996 and <bluecrossblueshield.com> registered on April 1, 1999, and its longstanding commercial use of its Blue family of marks.

The Panel considers that the disputed domain name <blucrossbluesheild.com> is a clear typo-variant of the Complainant’s registered trademarks, incorporating a deliberate mis-spelling of “blue” and “shield” (i.e. “blu” and “sheild”). The Complainant’s distinctive trademarks are the dominant component of that disputed domain name.

The Panel considers that the disputed domain name <cabluecross.com> is confusingly similar to its trademark BLUE CROSS, that registered trademark being a dominant component of <cabluecross.com>. The letters “CA” are a widely used abbreviation to denote the State of California. The addition of geographic wording to a trademark in a domain name is not sufficient to avoid a finding of confusing similarity under this element of the Policy.

The Panel accordingly finds that all three disputed domain names are confusingly similar to trademarks in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain names, among other circumstances, by showing any of the following elements:

(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names lies with the Complainant.

However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain names.

The Complainant states and the Panel accepts that it has never given the Respondent any license or authority to use any of its marks containing BLUE CROSS or FEP. Further, the Respondent’s use of the disputed domain names does not indicate any bona fide offering of goods and services or legitimate noncommercial use. Rather, the disputed domain names were at the time of the Complaint being used to host websites containing sponsored links to further websites selling health insurance including websites of the Complainant’s competitors.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain names in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names; or

(ii) that the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) that the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The consensus view of UDRP Panelists is that registration in bad faith must occur at the time the current registrant took possession of a disputed domain name. That date is approximately July/August 2010 for the disputed domain names <febblue.org> and <blucrossbluesheild.com> (no evidence on the record reflects the exact date). The Panel does not have evidence of the date on which the Respondent took possession of <cabluecross.com>, or indeed whether or not the Respondent was the first registrant of that domain name. Accordingly, the Panel finds that in order for the Complaint to succeed in relation to that disputed domain name bad faith must be found to occur at the date of first registration namely October 12, 2004.

The disputed domain names <febblue.org> and <blucrossbluesheild.com> are clear typo-variants of the Complainant’s trademarks. The Respondent’s conduct is a classic case of typo-squatting. It is well established in Panel decisions that “typo-squatting” is inherently parasitic and of itself evidence of bad faith Thomson Broadcast and Media Solution Inc., Thomson v Alvaro Collazo WIPO Case No. D2004-0746. The fact that the Respondent has registered or become subsequent registrant (by transfer) of more than one domain name that is a deliberate typo-variant of the Complainant’s distinctive trademarks is a clear indication of bad faith.

Previous UDRP Panelists have noted that the Complainant’s BLUE CROSS and BLUE SHIELD marks enjoy a very high degree of acquired distinctiveness, and considered it was unlikely that there was no awareness of the existence of the Complainant and its trademark rights at the time the relevant domain names were registered (see e.g. Blue Cross and Blue Shield Association (BCBSA) v. Domain Deluxe WIPO Case No. D2005-0209; Blue Cross and Blue Shield Association v. Garrett Ltd./John Nunley WIPO Case No. D2003-0028).

In the present case, the Panel considers that the Respondent plainly must have had an awareness of the Complainant’s widely-recognised and long-established marks. This is because the Respondent at the relevant dates and on two separate occasions registered or acquired disputed domain names that are typographical variants of the Complainant’s marks. In the case of <cabluecross.org>, the addition of the letters CA (likely for California) before the Complainant’s mark is an unusual combination and can only have been done with the Complainant’s mark in mind.

The Panel is therefore satisfied that each of the disputed domain names was registered in bad faith.

The Panel is also satisfied that all of the disputed domain names are being used in bad faith, in particular for attracting Internet users to the Respondent’s websites by way of domain names which are confusingly similar to the Complainant’s trademarks. Links on the Respondent’s websites operate as sponsored links tailored to match the Complainant’s core services (i.e. insurance related services) so there is an intent to attract Internet users to the Respondent’s websites for commercial gain.

The websites hosted at each of the three disputed domain names contain a link titled “febblue.org may be for sale”. Internet users who click on that link are redirected to another website, “www.parklogic.com”, which purports to offer “domain asset management” services, and offers members the opportunity to negotiate price and term for transfer of ownership of the disputed domain name. The Panel considers that this conduct is a further indication of bad faith.

In its Response, the Respondent raised the argument that Panelists who infer that parking activity is a bad faith attempt to profit from the Complainant’s business activities “do not appear to give credence to the possibility that domains have inherent value due to their generic meaning or that these generic domains will attract direct navigation traffic”.

This submission carries no weight in respect of the three disputed domain names since none of them could possibly be said to have generic meaning or be generic. The Panel is satisfied that the three disputed domain names were registered and are being used in bad faith – thus satisfying both limbs of this requirement.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <blucrossbluesheild.com>, <cabluecross.com>, and <febblue.org> be transferred to the Complainant.

Andrew Brown QC
Sole Panelist
Dated: December 1, 2011.

 

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