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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blue Cross and Blue Shield Association v. domain admin, Global Access

Case No. D2017-1218

1. The Parties

The Complainant is Blue Cross and Blue Shield Association of Chicago, Illinois, United States of America (“United States”), represented by Hanson Bridgett LLP, United States.

The Respondent is domain admin, Global Access of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <bluechoice.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2017. On June 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 3, 2017.

The Center verified that the Complaint together with the amended Complaint (hereafter 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2017.

The Center appointed Nicholas Smith as the sole panelist in this matter on July 28, 2017. 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 36 locally-owned United States entities that offer Blue Cross and Blue Shield Association Member plans licensed by the Complainant to provide health and life insurance, health care delivery services and related goods and services to consumers across the United States. The Complainant, its predecessors and licensees have been offering health care insurance plans for over 80 years, under a variety of trade marks featuring the word “blue”, such as BLUE CROSS, BLUE SHIELD and BLUE CHOICE. The Complainant (including its licensees) has used a mark comprising the words “blue choice” (the “BLUE CHOICE Mark”) since 1985.

The Complainant is the owner of three trade marks in the United States for the BLUE CHOICE Mark, with the BLUE CHOICE Mark first being registered in the United States on January 31, 1989 with a stated date of first use on January 2, 1985 (registration no. 1,522,890) for “pre-paid financing and administration of health care services rendered through a health maintenance organization, namely physician services, dental services, hospital services, physical therapy, home health care, diagnostic testing and examination, family planning, mental health services, nursing services, pharmacy services and ambulance services”.

The Domain Name <bluechoice.com> was created on May 16, 2002 but registered by the Respondent at some point between August 2007 and November 2007. It presently redirects to a website (the “General Insurance Website”) at “www.generalinsurance.com” that appears to offer insurance quotes and recommendations including links and recommendations for health insurance providers in direct competition to the Complainant. The General Insurance Website is clearly targeted at consumers in the United States, with a United States phone number and a requirement that potential users enter their Zip Code.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s BLUE CHOICE Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the BLUE CHOICE Mark, having registered the BLUE CHOICE Mark in the United States. The Domain Name is identical to the the BLUE CHOICE Mark, with the presence of the Top-Level Domain “.com” being disregarded.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor has the Complainant provided a license or permission to register the Domain Name. There is no evidence, since the Respondent registered the Domain Name, of the Respondent’s use of, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose. The Domain Name which incorporates the BLUE CROSS Mark redirects to a website which offers competitive services to the Complainant. This evidences a lack of rights or legitimate interests under the Policy, see Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.

The Domain Name was registered and is being used in bad faith. The BLUE CHOICE Mark was well-known at the time of registration of the Domain Name, having been used in the United States for 22 years prior to the Respondent’s registration of the Domain Name. The Respondent is also using the Domain Name in bad faith by registering and using a domain name that is identical to the BLUE CHOICE Mark to intentionally attract, for commercial gain, Internet users to a website offering services in competition with the Complainant. Finally the Respondent has demonstrated a pattern of conduct of registering domain names using the well-known marks of third parties order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, having being an unsuccessful participant in at least 19 separate UDRP proceedings.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the BLUE CHOICE Mark, having registrations for the BLUE CHOICE Mark as a trade mark in the United States. As the generic Top Level Domain suffix “.com” may be disregarded for the purposes of comparison, the Domain Name is identical to the BLUE CHOICE Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BLUE CHOICE Mark or a mark similar to the BLUE CHOICE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use or a bona fide offering of goods and services.

The Respondent is using the Domain Name to redirect visitors to a website that operates under the name “General Insurance” and appears to offer links to or recommendations for health insurance services that are similar to and in direct competition to the Complainant. The use of a domain name that is identical to the Complainant’s BLUE CHOICE Mark to redirect to a website of a differently-named competitor of the Complainant does not amount to a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of any rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or 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 trade mark 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 Domain Name; or

(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).

The Panel finds that it is highly likely that the Respondent was aware of the Complainant and its reputation in the BLUE CHOICE Mark at the time the Respondent registered the Domain Name. The Complainant had used the BLUE CHOICE Mark for at least 22 years prior to the Respondent’s registration of the Domain Name. The Respondent has provided no explanation for its registration of the Domain Name. Given the Respondent’s use of the Domain Name to redirect to the General Insurance Website, an entirely differently named website that provides services or recommendations for health insurance services in direct competition to the Complainant and the absence of any alternative explanation, it is highly unlikely that the Respondent chose to register the Domain Name unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and its BLUE CHOICE Mark. The registration of the Domain Names in awareness of the BLUE CHOICE Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

As noted above, the General Insurance Website provides services or recommendations for services in direct competition to the Complainant. The Respondent’s actions in registering a Domain Name that is identical to the BLUE CHOICE Mark and use it to redirect visitors to the site of a competitor amounts to the registration and use of the Domain Name primarily for the purpose of disrupting the business of a competitor.

Alternatively, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s BLUE CHOICE 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. Finally the evidence in the Complainant as to the Respondent’s pattern of conduct of registering domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name is unequivocal. The Panel finds that the circumstance in paragraph 4(b) of the Policy is also established.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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 Domain Name, <bluechoice.com>, be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: August 4, 2017

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