WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Blue Cross and Blue Shield Association v. Igor Nikolenko Case No. D2010-0037 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 Igor Nikolenko of Odessa, Armed Forces Europe, Ukraine. 2. The Domain Names and Registrar
The disputed domain names , , and are all registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2010. On January 11, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Disputed Domain names. On January 18, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In view of the fact that the Disputed Domain Names are due to expire between February 10, 2010 and March 24, 2010, following a request by the Center and the Complainant, Moniker Online Services LLC confirmed that the Disputed Domain Names were locked and that the Complainant would have the option to renew them should they expire during these administrative proceedings. The Center verified that 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 January 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 9, 2010.
The Center appointed Michael D. Cover as the sole panelist in this matter on February 15, 2010. 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 the Blue Cross and Blue Shield Association. The Complainant is an Illinois not-for-profit corporation, having its principal place of business at Illinois, United States of America (“US”).
The Complainant is an association of 39 independently-operated, local Blue Cross and Blue Shield Association Member plans, which are licensed to provide health and life assurance, healthcare delivery services and related goods and services. In 2008, total system-wide gross revenue surpassed USD 339 billion. Current total enrolment in the 39 independent member plans is more than 100 million individuals.
The Complainant, either itself or through its predecessors in interest, is the owner of approximately 205 currently valid and subsisting US federal trade mark and service mark applications and registrations containing the term “Blue” and approximately 76 of which are for the word marks BLUE CROSS or BLUE SHIELD or BLUE CROSS AND BLUE SHIELD ASSOCIATION or the BLUE CROSS and BLUE SHIELD design marks.
The Complainant owns various domain names incorporating its trade marks BLUE CROSS and BLUE SHIELD including: , , , and .
The Respondent in the administrative proceedings is Igor Nikolenko. 5. Parties' Contentions A. Complainant
The Complainant maintains that the Respondent in this proceedings is Igor Nikolenko and although the current WhoIs record for the Domain Name indicates that the registrant has chosen to mask his identity by registering the Disputed Domain Name through Moniker Privacy Services, the WhoIs history indicates that the Domain Name was, and likely still is registered to the Respondent.
The Disputed Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights.
The Complainant submits that the Disputed Domain Names are confusingly similar to what it calls its “Blue Marks”. It further submits that the Disputed Domain Names merely combine the Complainants famous BLUE CROSS and BLUE SHIELD marks and add a geographic term, and, the accepted abbreviation for the State North Dakota, or descriptive or generic terms, “federal”, “providers” or “insurance”. It cites in support of these contentions Six Continents Hotels, Inc v. Seweryn Novak, WIPO Case No. D2003-0022 and Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant submits that the Respondent has no rights to or legitimate interests in any of the Disputed Domain Names. It states that the Respondent is not currently known by those names nor does the Respondent have any trade mark that corresponds to the Disputed Domain Names. It also states that the Respondent is not affiliated with nor has he been licensed to use what the Complainant calls its “ Blue Marks “ and that the Respondent does not use the Disputed Domain Names in connection with the bona fide offering of goods and services nor in a noncommercial manner nor in a manner that might be deemed legitimate fair use.
The Complainant cites Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 in support of this contention.
The Disputed Domain Names were registered and are being used in bad faith.
(i) The Disputed Domain Names were registered in bad faith
The Complainant submits that the Respondent's registration of the Disputed Domain Names was in bad faith because he intentionally registered these names with the intent to get a free ride off the fame of the Complainant's marks. It goes on to submit that the Disputed Domain Names were registered in March 2007, 73 years after the first use of the BLUE CROSS and BLUE SHIELD famous marks and that it was inconceivable that the Respondent was unaware of these marks at the time he registered the Disputed Domain Names.
It cites various decisions in support of its contention that the very use of a famous mark by someone with no connection with the product connected to that famous trade mark suggested opportunities for bad faith. It also cites various decisions where its BLUE CROSS and BLUE SHIELD marks have been found to be famous, Blue Cross and Blue Shield Association (BCBSA) v. Domain Deluxe,WIPO Case No. D2005-0209.
It argues that there are many UDRP decisions against this Respondent, demonstrating a pattern of registering domain names incorporating famous mark. It cites decisions including Pelle Pelle, Inc v. Mr. Igor Nikolenko, WIPO Case No. D2002-1002 and also the fact that the Respondent owns numerous other domain names incorporating famous marks.
(ii) The Disputed Domain Names are being used in bad faith
The Complainant submits that the Respondent has intentionally attempted to attract Internet users to his websites by creating a likelihood of confusion with the Complainant's marks. The Disputed Domain Names, it says, were originally used to divert unsuspecting Internet users looking for the Complainant's websites to websites that contained nothing more than sponsored links.
The Complainant states that it has approached the Respondent and secured the transfer of other domain names. Following another approach, one of the Disputed Domain Names, , was subsequently moved to a privacy service. It further states that previous panels have held a respondent's failure to respond is evidence of bad faith and cites Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (failure to respond) and Standard Radio Inc v. CHOM Family Medicine CPR 0319 (moving a domain name or masking the owner's identity) in support.
Finally, the Complainant submits that even the passive holding of a domain name that is substantially similar to a well-known trade mark can be indicative of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant requests that, for the reasons set out in the Complaint, the Panel issue a decision transferring all the Disputed Domain Names to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel has adopted a cautious approach to the evidence and submissions, in view of the fact that the Respondent has not replied to the contentions of the Complainant.
The Panel finds that the Respondent, Igor Nikolenko, is properly joined as the Respondent, in view of the WhoIs records submitted by the Complainant (Complaint Annex 1 and 2). A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Names are confusingly similar to trade marks or service marks in which the Complainant has rights. The Panel finds this based on the mere addition to the Complainant's BLUE CROSS and BLUE SHIELD marks, which are each contained in the Disputed Domain Names, of a geographical or descriptive term and accepts the Complainant's submission that it is well-established that this does not prevent confusion. Without such additions, the Disputed Domain Names are identical to the Complainant's BLUE CROSS and BLUE SHIELD marks respectively.
The Panel does not find it necessary, in light of this finding, to decide on whether the Disputed Domain Names are confusingly similar with all the marks that the Complainant calls its “Blue Marks”. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Complainant has established that the Respondent is not commonly known by those names and is not affiliated with or licensed to use the Complainant's BLUE CROSS and BLUE SHIELD marks nor does it use the Disputed Domain Names in connection with the bona fide offering of goods and services nor in a noncommercial manner nor in a manner that might be deemed a legitimate fair use. C. Registered and Used in Bad Faith
The Panel finds that the Disputed Domain Names were registered in bad faith. It is highly unlikely in light of the circumstances that the Respondent could not have been aware of the Complainant's BLUE CROSS and BLUE SHIELD marks when it registered the Disputed Domain Names (and did so in light of their trademark value). The Panel also notes that the uncontroverted record shows that the Respondent has also engaged in a pattern of behavior of registering domain names in bad faith, which appears to have extended to other domain names which Complainant alleges infringed the Complainant's rights in its BLUE CROSS trade mark. The Panel accepts the submissions of the Complainant in that regard.
As to use in bad faith, the Disputed Domain Names appear to have (or at least in the case of ) been diverted to a website that contained nothing more than sponsored links related to the trademark value of the Disputed Domain Names. The Complainant contends (and the Respondent does not dispute) that the other Disputed Domain Names also resolved to similar pages with sponsored links related to insurance but that such use was discontinued. Nevertheless, the Panel notes that these Disputed Domain Names at one point resolved to a google search results page related to insurance (the Complainant's field of business) and that this combined with the continued passive holding of the other Disputed Domain Names which contain the well-known marks of the Complainant (see Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003) support a finding in light of the present record that the Dispute Domain Names have been and are being used in bad faith. 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 Disputed Domain Names , , and be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Dated: March 1, 2010
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