WIPO Domain Name Decision D2004-0756 for blue-cross-insurance.org

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blue Cross and Blue Shield Association v. John Kraus, d/b/a MrINTER.NET

Case No. D2004-0756

1. The Parties

The Complainant is Blue Cross and Blue Shield Association, Chicago, Illinois, United�States�of�America, represented by Hanson�Bridgett Marcus Vlahos & Rudy, LLP United�States�of�America.

The Respondent is John Kraus, d/b/a MrINTER.NET, Torrance, California, United�States�of�America.

2. The Domain Name and Registrar

The disputed domain name is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on September�18,�2004. On September�20,�2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September�20,�2004, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center subsequently verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the�“Policy”), 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 September�27,�2004. In accordance with the Rules, paragraph�5(a), the due date for Response was October�17,�2004. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October�19,�2004.

The Center appointed D. Brian King as the Sole Panelist in this matter on November�1,�2004. The Sole Panelist 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. The Panel finds that it was properly constituted.

4. Factual Background

The Respondent having failed to appear or to contest the Complainant’s allegations, the following facts are drawn from the Complaint unless otherwise noted. See Rules, paras.�5(e), 14, 15(a).

The Complainant is an association of 41 local member plans that are licensed by the Complainant to provide prepaid healthcare, health and life insurance services, health care delivery services, and related goods and services. The Complainant states that 90 million people are enrolled in the local member plans.

The Complainant claims to have 133 valid U.S. trademark and/or service mark registrations for “the word marks BLUE CROSS and BLUE SHIELD, the Blue Cross and Blue Shield design marks and a BLUE ‘family’ of trade names, trademarks and service marks.” Three sample service mark registrations for “Blue Cross” were attached to the Complaint. See U.S. Registration Nos. 554,488; 1,632,573; 1,691,498.

The Complainant contends that it, as well as its predecessors in interest and licensees, have been using Blue Cross and Blue Shield-related marks since 1938, and that it has spent “many�millions of dollars” promoting the connection between its marks on the one hand and itself, its licensees, and their services on the other. As reflected in published decisions of United States courts that were attached to the Complaint, the marks are famous symbols in that country representing the Complainant and its licensees. See, e.g., Central Benefits Mutual Ins. Co. v. Blue Cross & Blue Shield Ass’n, 711 F. Supp.�1423,�1433 (S.D.�Ohio�1989) (“The Blue Cross and Blue Shield Names and marks are strong and famous nationwide�.�.�.�.”) (citing other cases so holding).

The Complainant has registered at least three domain names that incorporate its registered trademarks and/or service marks: ; ; and . These registrations are evidenced by excerpts of MarkM’s WHOIS database, attached as Annex�4 to the Complaint.

In September�2003, the Respondent registered the domain name that is at issue in this proceeding: . Most or all of the Complainant’s trademarks and service marks had been registered long before the Respondent registered the disputed domain name.

The Respondent apparently has no current affiliation with or license from the Complainant. In correspondence between the parties, see Complaint, Annexes 9-10, the Respondent claimed that he had registered the disputed domain name as part of a plan put into effect at the request of Mr.�Larry�Brown, an agent of Blue Cross of California, which is one of the Complainant’s licensed local member plans. The Respondent’s written messages are not entirely clear, but the Panel has done its best to understand the Respondent’s contentions. It appears that the Respondent claimed to have registered the disputed domain name, along with a number of other domain names, in order to “fool” Internet search engines into putting the website of Mr.�Brown’s insurance agency at the top of the list when certain keywords (e.g.,�“insurance”) were used in a search. The Respondent’s technique appears to have involved a system of cross-linking among the registered domain names, among other means. The Respondent appears to have claimed that his technique worked, and that Google and Yahoo both ranked Mr.�Brown’s website at the top of their search results when the selected keywords were used in a search.

The Complaint alleges that Mr.�Brown denies requesting the Respondent to register the disputed domain name, although the Complainant concedes that Mr.�Brown asked the Respondent “to provide certain Internet services.” The case file does not include any description of what those “certain Internet services” consisted of, nor any documentation of the scope of the business relationship between Mr.�Brown and the Respondent, nor any instructions Mr.�Brown may have given the Respondent, nor any declaration or affidavit from Mr.�Brown. The Complainant contends that, in any event, Mr.�Brown had no authority to register the disputed domain name or to authorize the Respondent to do so. Again, however, there appears to be no documentation in the case file of the scope of Mr.�Brown’s authority on behalf of the Complainant’s licensee (nor, for that matter, of whether the terms of the license(s) permitted the licensee to register, or authorize its agents to register, domain names). According to the Complainant, whatever business relationship existed between Mr.�Brown and the Respondent was terminated at some unspecified time before Mr.�Brown spoke to the Complainant’s counsel on May�12,�2004.

The Complainant sent the Respondent a cease-and-desist letter on February�2,�2004, demanding that the Respondent cease using the disputed domain name by February�17,�2004. Complaint, Annex�5. According to the Complaint and to the declaration of the Complainant’s counsel, Mr.�William�Chan, Mr.�Chan and the Respondent communicated by telephone and e-mail in February and March 2004. Mr.�Chan repeated the Complainant’s request that the Respondent transfer the disputed domain name to the Complainant, and the Respondent demanded “as much as”

US$ 35,000 to do so. The case file includes three written communications: (1) the February�2,�2004 cease-and-desist letter; (2) a fax from the Respondent to Mr.�Chan dated May�21,�2004; and (3) an e-mail from the Respondent to Mr.�Chan dated May�26,�2004. Complaint, Annexes�5,�9,�10.

The May�21, 2004 fax demanded that the Complainant provide “proof of a business license for BLUE-CROSS-INSURANCE.org not any silly other.” It appears that Mr.�Chan e-mailed a pdf file of samples of the Complainant’s U.S. trademark registrations on May�25,�2004. The Respondent replied via the May 26, 2004 e-mail that was attached to the Complaint. The Respondent began by saying, apparently with reference to the pdf file Mr.�Chan had sent: “Very IMPORTANT – I have and will NEVER open ANY attachment!!!” The Respondent repeated his request for “business registration with your city: called business license. This is the only what I will accept. And it have to say exact your domain requested to transfer at all! BLUE-CROSS-INSURANCE.org with hyphen and dot also org any other name, make your own.”

The case file does not reflect or refer to any communication between the parties after May�26,�2004.

When the cease-and-desist letter was sent in February 2004, the disputed domain name resolved to , another domain name allegedly owned by the Respondent. That site displayed, in large letters at the top of the page, a hyperlink reading “www.UltraCareC,” which directed the Internet user to the “www.ultracarec” website. Further down the page, the “www./larry” website invited visitors to “feel free to call Larry�Brown USA” and listed Mr. Brown’s telephone number.

If visitors chose to click on the UltraCareConcepts hyperlink, they were taken to a site that purported to permit visitors to compare various health insurance plans and submit application requests on-line. The plans included those offered by Blue Cross of California and Blue Shield of California, licensees of Complainant. The Complaint admits that Mr.�Larry Brown was an agent of Blue Cross of California.

The Respondent’s May 21, 2004 fax conceded that the UltraCareConcepts site had icons or logos of insurers who competed with the Complainant’s licensees. The Respondent claimed that those icons or logos were “NOT active to sign-up, or to click to a forward link.” When the Panel visited “www.ultracarec” on November�11,�2004, however, the icon for Kaiser Permanente, apparently a competitor of the Complainant’s licensees, was active as a hyperlink, as was the Blue Cross icon.1

The Blue Cross icon linked to “www.ultracarec/bluecross,” a page offering “a free quote, fast, free, and online” and bearing the marks of Blue Cross of California and Blue Shield of California. The page was headed “UltraCareC,” and, immediately underneath that, “Larry D. Brown Insurance Services.” The copyright notice on the page indicated that the copyright dated from 2001 and that the holder was “Larry D. Brown Insurance Services CA Lic# 0652570b.” Under the copyright notice at the bottom of the page was the disclaimer “ultracarec/bluecross provides a free service and is not an insurance company.” All of these items were visible without scrolling.

The Kaiser Permanente icon linked to “www.ultracarec/kaiser.” While the page repeated the license number and phone number available at “www.ultracarec/bluecross,” it did not include Mr.�Brown’s name. It did say that UltraCareConcepts was an authorized agent of Kaiser Permanente and invited visitors to “shop online for small business health plans.”

The disputed domain name resolved to the UltraCareConcepts website until March�2004, approximately six weeks after the Complainant sent its cease-and-desist letter. At that point, the Respondent started forwarding the disputed domain name to “,” although the UltraCareConcepts site continued (and still continues) to exist separately. The “” site, in turn, launched a screen saver displaying the Respondent’s contact information and the words “.” Although the Complaint uses the term “screen saver,” the user could not remove this display by moving the mouse or pressing a random key, as with most screen savers that users intentionally install. Rather, according to the Complaint, the user could “only regain control of the computer by effectively shutting down the Internet browser through a special combination of keys on the keyboard.”

5. Parties’ Contentions

A. Complainant

The Complaint makes the foregoing allegations and contends that the facts entitle it to relief because: (1) the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (3) the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

In order to establish its right to relief, the Complainant must satisfy all three elements of Paragraph�4(a) of the Policy. Each of these elements is considered in turn below.

A. Identical or Confusingly Similar

The Complainant has satisfied the first element: the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy, para.�4(a)(i).

It is undisputed that the Complainant has several valid and existing trademarks and service marks in the words “Blue Cross” for use in various contexts in connection with the provision of health insurance. It is also undisputed, and in any event clearly established, that those marks are famous among consumers in the health insurance market in the United States and that consumers associate the marks with the Complainant, its local member plans, and the services they provide.

Although not identical to any of the Complainant’s marks, is confusingly similar to many of them. The Respondent’s insistence that the Complainant prove that it had a “business license” for the term “,” including the hyphens and the “.org” gTLD, demanded much more than the Policy requires. See InfoS, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075 (hyphens); Koninklijke Philips Electronics NV v. Ramazan Goktas, WIPO Case No. D2000-1638 (“.org” gTLD). Nor can the Respondent avoid the Policy’s proscription by adding the generic term “insurance,” which refers to the very service with which the Complainant’s marks are associated. See Harrods Ltd. v. Pierre, WIPO Case No. D2001-0456 (generic term “department store” added to complainant’s mark to create ); Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No.�D2003-0888 (generic term “auto parts” added to complainant’s mark to create ). It cannot reasonably be doubted that consumers would assume the disputed domain name was connected to the Complainant, particularly when it resolved to a website offering health insurance. Indeed, it appears that the Respondent’s own explanation for choosing this domain name was to help in his plan to “fool” search engines into ranking Mr.�Brown’s page highly when users sought information about health insurance.

Under the circumstances, the Complainant has easily satisfied the first element.

B. Rights or Legitimate Interests

The Complainant has also satisfied the second element required by the Policy: the Respondent has “no rights or legitimate interests in respect of the [disputed] domain name.” Policy, paragraph�4(a)(ii).

It is at least conceivable that the Respondent could acquire a “legitimate interest” in a domain name similar to the Complainant’s marks if he were engaged by one of the Complainant’s licensees or agents to register the domain name. The case file, however, contains uncontradicted – if less than overwhelming – evidence that Mr.�Brown had no authority to grant the Respondent a “legitimate interest” in the disputed domain name.

Mr.�Chan declares under penalty of perjury that he told the Respondent that “Mr.�Brown was prohibited from registering any domain name with the word ‘Blue’ or ‘Cross’ by [the Complainant’s] advertising guidelines, and that Mr.�Brown could not have properly authorized registration of the domain name.” Mr.�Chan’s testimony would probably not be admissible in a United States court to establish Mr.�Brown’s lack of authority, and it would have been preferable for the Complainant to demonstrate his lack of authority through direct documentation; the Complainant could have submitted the “advertising guidelines” referred to by Mr.�Chan, for example. For purposes of the present proceeding, however, the Panel may admit any evidence that it deems relevant. See Rules, para.�10(d). As the Complainant’s counsel, Mr.�Chan would likely have investigated Mr.�Brown’s authority, and there is no reason to doubt that what Mr.�Chan told the Respondent on that subject was correct. Certainly, the Respondent has provided no evidence to contradict Mr.�Chan’s declaration. Exercising its discretion under Paragraph�10(d) of the Rules, the Panel accepts Mr.�Chan’s statement as evidence that Mr.�Brown could not convey to the Respondent a “legitimate interest” in respect of the disputed domain name; in the absence of any other evidence on the point, the Panel finds that Mr.�Brown did not, or at least did not validly, do so.

The Panel further finds that the Respondent did not acquire “rights or legitimate interests” in respect of the disputed domain name from any source other than Mr.�Brown. So far as appears from the case file, the Respondent’s sole use of the disputed domain name has been to forward it to two websites that he owns. One of them, “www./larry,” linked to another site offering services of both the Complainant’s licensees and at least one of its competitors. Prior decisions under the Policy leave little doubt that a registrant cannot have a right or a legitimate interest in using a domain name that is confusingly similar to registered trademarks or service marks in order to compete with the marks’ owner. See CompUSA Mgmt. Co. v. Khan, NAF Case No. 123921 (commercial competition); Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 (criticism of non-profit complainant designed to tarnish complainant’s marks). More generally, a registrant usually has no rights or legitimate interest in a domain name if he: (a) is not affiliated with the marks’ owner; (b) has not been known by, or had a business known by, a name similar to the domain name in question; and (c) has selected the domain name to divert users who intended to visit the complainant’s site. See Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; The Sportsman’s Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116. Since the Respondent used the disputed domain name to direct visitors to information about Kaiser Permanente, a competitor of Complainant’s licensees, the Panel need not decide whether the Respondent could hypothetically have a legitimate interest in giving the Complainant unwanted “help” by linking the disputed domain name to a site that offered the services of only the Complainant’s member plans.

The second website to which the Respondent forwarded the disputed domain name was the aggressive “screen saver” at “.” The Complainant correctly analogizes the “screen saver” to the technique of “mousetrapping,” in which a registrant causes a user’s browser to open windows onto multiple websites, making it difficult for the user to get rid of the unwanted websites and regain control of his computer. Using the Complainant’s marks to lure consumers into a very annoying trap, with little or no benefit to anyone (including the Respondent), is not a legitimate noncommercial use of the disputed domain name; it harms the Complainant for no apparent reason other than spite or malice. See NIHC, Inc. v. Zuccarini, WIPO Case No.�D2001-1260 (mousetrapping).

The evidence does not support any of the three non-exhaustive means in which, according to Paragraph�4(c) of the Policy, the Respondent could demonstrate a right or legitimate interest in respect of the disputed domain name. Under Paragraph�4(c)(i), the Respondent could attempt to show that he used the disputed domain name “in connection with a bona fide offering of goods and services.” Given the Policy’s core purpose of preventing registrants from exploiting consumer confusion to compete with trademark and service mark owners, however, the Respondent’s offering of Kaiser Permanente’s insurance cannot be a bona fide offering of goods and services. See CompUSA Mgmt. Co. v. Khan, NAF Case No. 123921. Nor could the Respondent rely on Paragraph�4(c)(ii), as he has not “been commonly known by the [disputed] domain name,” or Paragraph�4(c)(iii), as he is not making use of the disputed domain name “without intent for commercial gain to misleadingly divert consumers.”

Accordingly, the Panel finds that the second required element of the Complainant’s claim has been established.

C. Registered and Used in Bad Faith

Finally, the Complainant has established the third element required by the Policy: the disputed domain name “has been registered and is being used in bad faith.”

As with the second element, this element would be indisputably established were it not for the Respondent’s relationship with Mr.�Brown. The case file is frustratingly ambiguous concerning that relationship. Again, part of the blame can be laid at the Complainant’s feet: rather than presenting Mr.�Chan’s brief hearsay account of what Mr.�Brown told him in May�2004 about his dealings with the Respondent, the Complainant could have provided some direct documentation of those dealings. This would have been particularly helpful because, by the time of his conversation with Mr.�Chan, Mr.�Brown was presumably aware of the imbroglio between the Complainant and the Respondent and had an interest in protecting his position as a Blue Cross of California agent by minimizing his own responsibility for the situation. Unless Mr.�Brown and the Respondent conducted their business completely by oral communication, which seems unlikely, there would be contracts, letters, faxes or e-mails between them that might have been extremely useful to the Panel.

In fairness to the Complainant, however, the Respondent would also have had access to such correspondence and could have provided it, had it supported a claim of good-faith registration or use of the disputed domain name. Perhaps the documents, if they exist, might show that the Respondent had an honest and reasonable, if mistaken, belief that he had been duly authorized by a Blue Cross of California agent to register the disputed domain name. Even if Mr.�Brown did not explicitly tell the Respondent to register , it might be that his more general instructions could have been understood to request the Respondent to use whatever means were necessary to “fool” search engines, implicitly including the use of the Complainant’s intellectual property. As the case file stands, however, such a finding would be pure speculation. The Respondent’s failure to participate in these proceedings was his own choice, and by doing so he has left the Complainant’s allegations and evidence unrebutted.

Under U.S. law, the Respondent had constructive notice of the Complainant’s ownership of the Blue Cross trademarks and service marks because they were listed on the United States Patent and Trademark Office’s principal register. See 15 U.S.C. ��1072. In this case, that legal fiction is unnecessary: the Respondent clearly knew the significance of the marks that he exploited, as he used the disputed domain name in part to offer the services of the Complainant’s member plans. Paragraph 4(b) of the Policy enumerates four nonexclusive indicia of bad faith, and the Complainant has made out a clear violation of Paragraph�4(b)(iv): the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [his] website�.�.�.�.” The Respondent’s statement, in his May�21, 2004 fax, that “We make maybe only $4-5000 on sales monthly” is ambiguous; “we” might refer to the Respondent, Mr.�Brown, and others named in the fax collectively, rather than, as the Complainant interprets the statement, suggesting that the Respondent himself derived a $5000 monthly benefit from his use of the disputed domain name. Nonetheless, it is a fair inference that the Respondent received some financial benefit. He therefore used the disputed domain name “for commercial gain,” as Paragraph�4(b)(iv) requires. See Club M�diterran�e v. Gaddoor Hasidim, WIPO Case No.�D2000-1350 (respondent received a “finder’s fee” by routing visitors to a third-party commercial site); The Sportsman’s Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116 (same). It is also reasonable to infer that this was the Respondent’s purpose when he first applied to register the disputed domain name, satisfying the Policy’s requirement that the disputed domain name be both registered and used in bad faith. See Policy, para.�4(a)(iii).

Although it does not relate to the original registration, the Respondent’s continued use of the disputed domain name after Mr.�Chan informed him of the Complainant’s ownership of its marks and Mr.�Brown’s lack of authority to permit the Respondent to use the marks was in bad faith. Even if he had originally had no reason to think his use was improper – a proposition that, as previously noted, is contrary to the evidence – the Respondent could not have labored under that misconception once he received the cease-and-desist letter and spoke to Mr.�Chan.

One aspect of the Respondent’s communications with Mr.�Chan that does relate to the original registration is his offer to transfer the disputed domain name for a payment of $35,000. Paragraph�4(b)(i) of the Policy says it is a bad-faith use of a domain name to register it primarily for the purpose of selling it to the trademark or service mark owner for an amount exceeding the registrant’s “documented out-of-pocket costs directly related to the domain name.” The Respondent’s offer suggests that it was his intention all along to sell the disputed domain name to the Complainant for a profit. See CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243. The matter is not without doubt on this record, however: the Respondent claimed in his May 21, 2004 fax that “I�spend more than $35,000 on registration, hosting, web-design, yahoo, google etc.�.�.�. We need this money back ASAP.” But these amounts have not been “documented,” as required by Paragraph�4(b)(i), and it is at best questionable whether they are all “directly” related to the disputed domain name. The Respondent’s position is further undermined by a remark in his May�26, 2004 e-mail: “Make a nice for both party accepted offer, and with no any other questions, I’ll tranfer [sic] the name to your company or what ever his name is.” Making allowances for the Respondent’s apparently imperfect command of English, this statement could not by itself prove his bad faith; but it does add to the impression that he was trying to extort a payment from the Complainant irrespective of whether he had any legal right to do so.

Finally, the Respondent’s decision to forward the disputed domain name to a destructive “screen saver” also shows bad faith. The Respondent initially claimed that resolving the disputed domain name to “/larry” was necessary to his plan to help Mr.�Brown sell Blue Cross of California insurance. Nonetheless, once the dispute began, he redirected the disputed domain name to a site that had nothing to do with insurance and could only annoy consumers who entered the disputed domain name into their browsers. There seems to have been no reason for this action other than spite or malice toward the Complainant, triggered presumably by the cease-and-desist letter.

Again, it is unfortunate that the Respondent has chosen not to participate in these proceedings. If he had, perhaps he could have provided evidence negating the Complainant’s allegations – and evidence – of bad faith. On the other hand, it is certainly possible that the reason the Respondent did not even attempt to provide such evidence is because none exists. In any event, on the evidence of record, the Complaint succeeds.

7. Decision

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 name be transferred to the Complainant.

D. Brian King
Sole Panelist

Date: November�15,�2004

1 The Panel exercises considerable caution in undertaking independent factual research. Nonetheless, in appropriate cases, other Panels have done so. See Rodale, Inc. v. Resource Marketing, WIPO Case No. DBIZ2002-00156 (referring to related trademark registration found by Panel on U.S. Patent and Trademark Office (“PTO”) website); Thrive Networks, Inc. v. Thrive Ventures, Inc., WIPO Case No. D2003-0534 (referring to Panel’s research on PTO website and registrar’s website, along with investigation into respondent’s claim that it had used disputed domain name as e-mail address). The “www.ultracarec” home page is part of the case file, having been attached as Annex 8 to the Complaint, and the Panel believes it is helpful in the context of this case to take the limited additional step of clicking on the links on that page to see where they lead. In any event, on the evidence in this case, the Panel would have reached the same result even without this limited additional research.

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