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Blue Cross and Blue Shield Association (BCBSA) v. Joe Guthrie and Tom Guthrie [2005] GENDND 186 (7 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blue Cross and Blue Shield Association (BCBSA) v. Joe Guthrie and Tom Guthrie

Case No. D2004-0894

1. The Parties

The Complainant is Blue Cross and Blue Shield Association (BCBSA) of Chicago, Illinois, United States of America, represented by Hanson Bridgett Marcus Vlahos & Rudy, LLP of San Francisco, California, United States of America.

The Respondents are Joe Guthrie and Tom Guthrie of Tulsa, Oklahoma, United States of America.

2. The Domain Names and Registrar

The disputed domain names <blue-cares-online-pharmacy-medication.com>, <blue-cross-prescriptions-online.com>, <blue-meds-online-pharmacy-prescription-medication.com> and <blue82.com> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2004. On October 29, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On November 1, 2004, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain names would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made WHOIS printouts, which showed that the disputed Domain Names were registered with eNom, and that Respondents Joe Guthrie and Tom Guthrie, were the current registrants of the disputed Domain Names. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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 Respondents of the Complaint, and the proceedings commenced on November 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2004. The Respondents did not submit any response. Accordingly, the Center notified the Respondents of their default on December 19, 2004.

The Center appointed Frank L. Politano as the sole panelist in this matter on January 31, 2005. 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 Rule 7.

Complainant has asked the Panel to combine these proceedings against the brothers Joe and Tom Guthrie into a single action pursuant to Rule 10(e). There is a clear factual nexus between the Respondents’ actions and consolidation is warranted where, as here, Respondents have the same contact details, the same service and are closely related. AT&T Corp. v. May Halabi and All Time Talk Cellular (WIPO Case Nos. D2002-0569 and 0606); Dell Computer Corporation v. Got Domain Names For Sale, a/k/a/ gotnames@mciworld.com, a/k/a wes2@bellsouth.net (WIPO Case No. D2000-0659). This Panel, which is given broad discretion to consolidate disputes under Paragraph 4(f) of the UDRP, believes consolidation is appropriate under the facts. Accordingly, the proceedings against Joe and Tom Guthrie are consolidated into this case.

4. Factual Background

Complainant, its predecessors in interest and its licensees have been using the service mark BLUE CROSS since before the Second World War until the present in connection with the provision of health and life insurance, medical and healthcare services, prescription and pharmacy services and related goods and services. Long before Respondents began using the domain names at issue, Complainant and its related companies extensively used, and promoted throughout the United States BLUE CROSS, BLUE SHIELD, BLUE CARE, BLUECARES.COM, related design marks comprising BLUE CROSS and BLUE SHIELD and a “Blue” family of trade names, trademarks, domain names and service marks in connection with healthcare, insurance and prescription pharmacy services (“Blue Marks”).

In 2003, Complainant’s revenues surpassed US$18.3 billion with an enrollment of more than 90 million members amounting to about 1 in 3 Americans. Through generations of such use, advertising and promotion, the Blue Marks have developed a commercial magnetism and have become icons for healthcare, insurance and pharmaceutical services.

Complainant owns 159 U.S. Federal trademark and service mark registrations of Blue Marks including 38 registrations for pharmacy services and 7 registrations for prescription services. (Annex 4) These registrations serve, under Section 22 of the Lanham Act, 15 U.S.C. §1072, as constructive notice of Complainant’s ownership of such registrations and, under Section 7(b) of the Lanham Act, 15 U.S.C. §1057(b), as prima facie evidence of the validity of the registered marks, of Complainant’s ownership of such marks and its exclusive right to use such marks in commerce on the goods and services specified in each registration. Moreover, many of Complainant’s Federal registrations have become incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C. §1065, and thus constitute conclusive evidence of the validity of such registered marks and of Complainant’s exclusive right to use such registered marks in commerce for the goods and services covered by such incontestable registrations. (15 U.S.C. §1115(b))

In mid-June 2003, Respondents registered the domain names <blue-cross-prescriptions-online.com>; <blue-cross-online-pharmacy-medication.com>; <blue-meds-online-pharmacy-prescription-medication.com> and <blue82.com>. (Annex 2). Complainant alleges that Respondents were using each of the above domain names to resolve to websites that sell prescription medications online. At the time of this decision, the Panel notes that all of the domain names involved in this proceeding except for the domain name <blue-cross-prescriptions-online.com> were in use and resolved to websites offering pharmaceutical products and services.

Before Complainant sent Respondents its first cease and desist letter, Respondents used the domain names to forward to websites selling prescription medications online. Such websites compete with the services of Complainant’s Member Plans.

On February 27, 2004, Complainant wrote to Respondents advising that the Complainant is the owner of the incontestable registrations for the marks, BLUE CROSS and BLUE SHIELD, which registrations give it the exclusive right to use or license others to use the registered marks in commerce. Complainant further informed Respondents that Respondents’ domain names were confusingly similar to Complainant’s BLUE CROSS, BLUE CARE, WWW.BLUECARES.COM, and other BLUE marks and that Respondents’ use of the subject domain names was likely to cause confusion among the public as they suggested a relationship between Respondents and Complainant which did not exist. Complainant informed Respondents that its actions not only violated U.S. Federal trademark law, but also the UDRP, and requested that Respondents discontinue use of the domain names by March 12, 2004. (Annex 9).

Receiving no response from Respondents to its first cease and desist letter, Complainant again wrote to Respondents on or about March 25, 2004, and attached its original letter. (Annex 10).

Receiving no response from Respondents to either of its letters, Complainant’s counsel attempted to contact Respondents by telephone at the telephone number listed in the public WHOIS database on April 16, 2004. After several failed attempts, Complainant’s counsel spoke with Respondent Joe Guthrie on May 25, 2004. On that date, Respondent Joe Guthrie informed Complainant’s counsel that the domain names no longer forwarded to the websites selling prescription medications, which Complainant confirmed. Complainant requested that Respondents transfer the domain names to Complainant, which Respondents refused to do. (Annex 2, Paragraph 5).

On July 8, 2004, Complainant discovered the <blue-cross-prescriptions-online.com> domain name forwarded to a website that sells contact lenses, and the <blue-cares-online-pharmacy-medication.com>, <blue-meds-online-pharmacy-prescription-medication.com>, and <blue82.com> domain names forwarded to websites that sell prescription medicine. All of these websites compete with the services offered by Complainant’s Member Plans. Moreover, Respondents continued to forward all of the domain names to these websites as of the date the Complaint was filed. (Annex 11).

Complainant again tried to contact Respondents by telephone after July 8, 2004. Having received no response from Respondents, and further discovering that instead of allowing the <blue-cross-prescriptions-online.com>, <blue-cares-online-pharmacy-medication.com>, and <blue-meds-online-pharmacy-prescription-medication.com> domain names to expire on June 18 and 19, 2004, Respondents had renewed the registrations, and had extended the registration of <blue82.com> until October 17, 2005, Complainant then filed a Complaint under the UDRP.

Because Respondents failed to submit a response to the Complaint, this Panel accepts as true all of the supported allegations of the Complaint. AT&T Wireless Services, Inc. and AT&T Corp. v. Phone Center, Mark Henrich (WIPO Case No. D2000-0678); Talk City, Inc. v. Michael Robertson (WIPO Case No. D2000-0009).

5. Parties’ Contentions

A. Complainant

Complainant argues Respondents’ domain names at issue are all confusingly similar to Complainant’s Blue Marks. Complainant contends <blue-cross-prescriptions-online.com> and <blue-cares-online-pharmacy-medication.com> are legally identical to Complainant’s BLUE CROSS and BLUE CARES marks because the addition of the generic words “prescriptions”, “online”, “pharmacy” and “medication” to “blue cross” and “blue cares” do not obviate a finding of likelihood of confusion. Complainant further argues that Respondents’ <blue-meds-online-pharmacy-prescription-medication.com> and <blue82.com> are confusingly similar to Complainant’s family of Blue Marks because of the strength of Complainant’s Blue Marks and because the addition of generic terms such as meds, online, pharmacy, and the number 82 are insufficient to avoid a finding of confusing similarity. Complainant also argues that the addition of the “.com” suffix to each of Respondents’ marks is insufficient to distinguish any of the domain names at issue from Complainant’s Blue Marks.

Complainant further submits Respondents have no rights or legitimate interests with respect to any of the domain names at issue and points out that Respondents are not licensees, are not known by the domain names at issue, and are not using the domain names for legitimate, non-commercial or fair use purposes.

Complainant also contends that the domain names at issue are being used in bad faith to divert unsuspecting Internet users to Respondents’ websites.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy and paragraph 3(b)(ix) of the Rules require that the Complainant must prove each of the following:

- The domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

- The domain names have been registered and are being used in bad faith.

The Panel will deal with each element seriatim.

A: Identical or Confusingly Similar Marks

1. <blue-cares-online-pharmacy-medication.com>, <blue-cross-prescriptions-online.com> and <blue-meds-online-pharmacy-prescription.com>

It is clear from the evidence that Complainant’s Blue Marks are well-known and recognized for services and products in the insurance, health care and pharmacy fields. For over sixty-five years, Complainant has used BLUE CROSS and BLUE SHIELD, and the various other Blue Marks were all in widespread use and registered long before Respondents commenced using any of the domain names at issue. Moreover, Complainant’s long and extensive use of the Blue Marks, along with the resulting notoriety and Complainant’s incontestable Federal registrations, provide it with powerful and incontestable rights to such marks in Complainant’s fields of use.

It is equally clear that Respondents’ <blue-cares-online-pharmacy-medication.com>, <blue-cross-prescritpions-online.com> and <blue-meds-online-pharmacy-prescriptions-online.com> domain names, which all are or were used to provide online prescription ordering services, are either identical to or confusingly similar to Complainant’s Blue Marks. The first two domain names simply comprise Complainant’s famous BLUE CARES and BLUE CROSS marks with insignificant addition of dashes, generic terms used in the health care and pharmaceutical field, and the obligatory ‘.com’ suffix. As such, they are confusingly similar to Complainant’s Blue Marks. Respondents’ <blue-meds-online-pharmacy-prescription-medication.com> domain name, which comprises Complainant’s well-known BLUE mark and simply adds generic terms used to denote pharmaceutical products is thus confusingly similar to Complainant’s Blue Marks.

It is well established that the addition to a powerful mark of generic words related to the service or product does not defeat the argument that the marks are identical or confusingly similar. See, e.g. Harrods Limited v. Peter Pierre (WIPO Case No. D2001-0456); Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin (WIPO Case No. D2003-0888); Dixons Group PLC v. Mr. Abu Abdullaah (WIPO Case No. D2000-1406). Here, Respondents’ domain names capture the very essence of Complainant’s BLUE CROSS, BLUE CARE, and BLUECARE.COM marks and domain names and add generic terms relating to the identical services being provided by Complainant and Respondents. As such, Complainant has made a strong case that these three terms at issue are identical or confusingly similar to Complainant’s marks.

2. <blue82.com>

The case for confusing similarity with respect to <blue82.com> is a more difficult one to make. It is not clear from the record what the addition of 82 to blue signifies. <blue82.com> differs from the other three domain names and is less similar to Complainant’s Blue Marks than the other three. Is the scope of Complainant’s rights in “Blue” wide enough to prohibit the use of <blue82.com>? After careful consideration, this Panel finds it is and that on this uncontested record there is confusing similarity given Complainant’s strong use rights in the Blue Marks in this field, Respondents’s use of <blue82.com> for online prescription services, and the fact that <blue82.com> was registered by Respondents in connection with the other identical or confusingly similar domain names and is being used to direct consumers to a website that is identical to the website that is reached by the other domain names, this Panel rules that <blue82.com> is confusingly similar to the Complainant’s Blue Marks.

B. Rights or Legitimate Interests

Respondents have no rights or legitimate interests in the domain names at issue. The uncontested record shows that Respondents are not licensees or permitted users. They are not affiliated with Complainant in any way. Respondents make no legitimate noncommercial or fair use of the subject domain names. Respondents’ use of these identical or confusingly similar domain names to divert Internet traffic to websites that compete with Complainant and its licensees is not a bona fide or legitimate offering of good or services under the UDRP.

C. Registered and Used in Bad Faith

The record is replete with evidence that each of the domain names at issue were registered and used in bad faith:

1. Complainant’s Blue Marks are well-known to a large portion of the American public and are so ubiquitous in the health, insurance, and pharmaceutical prescription fields that this Panel can only conclude Respondents adopted and used their domain names in the same field to trade off of the goodwill of Complainant’s Blue Marks.

2. Respondents are charged under the Lanham Act with constructive notice of Complainant’s extensive portfolio of Blue Marks and yet, in the face of such notice, adopted, registered and used domain names for competitive services which are identical or confusingly similar to Complainant’s Blue Marks.

3. Respondents initially agreed to disable the websites that could be reached by the domain names at issue and did so. After Respondent’s initial actions, the domain names were reactivated and resolved to online prescription websites. This action alone can be sufficient for a finding of bad faith.

4. After receiving actual notices of infringement from Complainant, Respondents renewed <blue-cross-prescriptions-online.com>, <blue-cares-online-pharmacy-medication.com> and <blue-meds-online-pharmacy-prescription-medication.com>. They also extended this line of registrations to include <blue82.com>. This factor is strong evidence of bad faith use.

5. Although Respondents may have inactivated the <blue-cross-prescriptions-online.com> website after receiving the Complaint, bad faith is still present here because of Respondents’ pattern of registering other confusingly similar or identical domain names and because there is the continuing risk that the inactive website will be reactivated. AT&T v. May Halabi and All Time Talk Cellular, supra.

6. Respondents have failed to answer Complainant’s Complaint or otherwise respond in this proceeding. Respondents’ failure to comply with the UDRP Rules can only be interpreted by this Panel, acting in accordance with Rule 14(b), as evidence of bad faith.

Accordingly, this Panel holds that Respondents registered and used the subject domain names in bad faith.

7. Decision

In light of the above findings, this Panel holds:

1. The domain names <blue-cares-online-pharmacy-medication.com>, <blue-cross-prescriptions-online.com>, <blue-meds-online-pharmacy-prescription-medication.com> and <blue82.com> are identical to or confusingly similar to Complainant’s Blue Marks; and

2. Respondents have no rights or legitimate interests in the domain names involved in this dispute; and

3. The domain names at issue were registered and are being used in bad faith.

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, <blue-cross-prescriptions-online.com>, <blue-cares-online-pharmacy-medication.com>, <blue-meds-online-pharmacy-prescription-medication.com> and <blue82.com> be transferred to the Complainant.

Frank L. Politano
Sole Panelist

Dated: February 7, 2005