WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blue Cross and Blue Shield Association v. Private Whois bluecross-empire.com, Private Whois bluecrossblueshieldofdelaware.net
Case No. D2011-2275
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 Private Whois bluecross-empire.com, Private Whois bluecrossblueshieldofdelaware.net of Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <bluecrossblueshieldofdelaware.net> and <bluecross-empire.com> are registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2011. On December 28, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain names. On January 2, 2012, Internet.bs Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 10, 2012.
The Center verified that the Complaint together with the amended 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 January 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2012.
The Center appointed Michael J. Spence as the sole panelist in this matter on February 10, 2012. 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 is an association of independently operated providers of life insurance, health care delivery services and related goods or services. It has 245 registered trade and service marks, including many registrations consisting of, or containing BLUE CROSS, BLUE SHIELD or BLUE CROSS AND BLUE SHIELD ASSOCIATION. One of the Complainant’s member plans operates under the trade mark EMPIRE, usually in combination with BLUE CROSS or BLUE CROSS BLUE SHIELD (the “BLUE marks”). These BLUE marks have been used in relation to businesses that had, system-wide, a gross revenue surpassing USD 360 billion in 2010. There can be little doubt that the BLUE marks are, as the Complainant claims, “famous symbols representing the Complainant, its Member Plans and licensees and the quality health care and related services they render”. Some versions of these marks have been in use since 1932. The Respondent operates web sites under the disputed domain names that include health and health insurance related information, along with several pay-per-click advertisements for insurance products and services.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to its trade marks; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names have been registered and are being used, in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Each of the disputed domain names contains trade marks belonging to the Complainant in their entirety with the addition of material that is incapable of distinguishing each disputed domain name from the mark. Given the extremely well established and longstanding reputation of those marks, there can be no doubt that the disputed domain names are identical, or confusingly similar to, the Complainant’s trade marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain names.
B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case the only use that seems to have been made of the disputed domain names is use for web sites that suggest a strong association with the Complainant, when no such association exists. This use cannot give rise to rights or legitimate interests in the disputed domain names, and indeed is good prima facie evidence that no such rights or legitimate interests exist. The Respondent has not rebutted this prima facie case.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain names.
C. Registered and Used in Bad Faith
Given the strength of the Complainant’s marks, the Respondent must have been aware at the time of registration that the likelihood of confusion existed with the disputed domain names. Moreover, there is evidence, in the pay-per-click advertising on the Respondent’s web sites, of an intention to profit from that confusion. This is perhaps the most classic case of registration and use in bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <bluecrossblueshieldofdelaware.net> and <bluecross-empire.com> be transferred to the Complainant.
Michael J. Spence
Dated: February 24, 2012