DECISION

Blue Cross and Blue Shield Association v. Azra Khan

Claim Number:  FA0306000162194

PARTIES

Complainant is Blue Cross and Blue Shield Association, Chicago, Illinois, USA (“Complainant”) represented by William R. Chan.  Respondent is Azra Khan, Rawalpindi, Pakistan (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bluecare.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 12, 2003; the Forum received a hard copy of the Complaint on June 16, 2003.

On June 13, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <bluecare.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@

bluecare.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <bluecare.com> domain name is confusingly similar to Complainant’s family of marks.

2. Respondent does not have any rights or legitimate interests in the <bluecare.com> domain name.

3. Respondent registered and used the <bluecare.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Blue Cross and Blue Shield Association (“BCBSA”), is an association of 42 independently operated local Blue Cross and Blue Shield Member Plans, which are licensed by Complainant to provide prepaid healthcare and health insurance services. 

Complainant is the registrant of two registrations for the BLUE CARE mark and one registration for the WWW.BLUECARES.COM mark (collectively Complainant’s “family of marks”) on the Principal Register.  The registrations for the BLUE CARE marks include United States Patent and Trademark Office (“USPTO”) Registration Nos. 1,961,619, registered on March 12, 1996 and 1,962,930, registered on March 19, 1996.  Complainant’s registration for the WWW.BLUECARES.COM mark is USPTO Reg. No. 2,201,446, registered on November 3, 1998. 

Complainant’s family of marks have been extensively used, advertised and promoted throughout the United States and internationally in connection with BCBSA, its Member Plans and licensees and the services they render.  In 2002, system-wide revenue derived from products and services sold under the BCBSA family of marks is expected to surpass $160 billion. 

Complainant has used the BLUE CARE marks since at least as early as December 1988, and the WWW.BLUECARES.COM mark since at least as early as June 1996. Currently, Complainant uses the BLUE CARE marks for a variety of health care services.  Complainant also uses the WWW.BLUECARES.COM mark to provide information services via a multi-user global computer network primarily concerning comprehensive health care benefit programs and prepaid financing and administration of medical, hospital and related health care services.

On January 24, 2002, Respondent registered the <bluecare.com> domain name.  Respondent is using the <bluecare.com> domain name to divert Internet users to a web portal which triggers a pop-up advertisiement for a gambling website.  The website associated with the disputed domain name also provides links to various websites connected to online gambling, adult entertainment, competing health insurance providers, a site that sells magazines relating to health care, and other commercial websites.    

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in its family of marks through registration with the USPTO and continuous use in commerce since at least as early as 1988.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).

Respondent’s <bluecare.com> domain name is identical to Complainant’s BLUE CARE and WWW.BLUECARES.COM marks except for the single “s” at the end of the latter mark.  The “www” prefix and the “.com” suffix are insufficient to distinguish Respondent’s domain name from Complainant’s family of marks.  Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s family of marks.  See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established. 

Rights or Legitimate Interests

Respondent has failed to submit a Response in this dispute.  Thus, the Panel may accept as true all reasonable allegations and inferences set forth in Complainant’s Complaint.  Furthermore, by not submitting a Response, Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise).

The WHOIS contact information identifies Respondent as Azra Kahn, not as <bluecare.com>.  Thus, the WHOIS information does not permit an inference that Respondent is commonly known by the <bluecare.com> domain name.  Furthermore, Complainant has not given Respondent permission or a license to use its family of marks.  Since there is no evidence before the Panel indicating that Respondent is commonly known by the disputed domain name, Policy ¶ 4(c)(ii) does not apply to Respondent.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Respondent is using the <bluecare.com> domain name to ensnare Internet users and direct them to a website that links users to websites associated with online gambling, adult entertainment, magazine sales and Complainant’s competitors.  Furthermore, the website hosted at the disputed domain name subjects Internet users to unsolicited pop-up advertisements and is a web portal for other sites.  Thus, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or making a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See TM Acquisition Corp. v. Sign Guards a/k/a William Moore, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services); see also Sony Kabushiki Kaisha a/k/a Sony Corp. v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that Respondent’s use of its domain name in order to divert Internet users to a website that offers links to adult orientated websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy); see also Wells Fargo & Co. v. Mahmoud Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that Respondent’s use of Complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Wells Fargo & Co. v. Party Night Inc. & Peter Carrington, FA 144647 (Nat. Arb. Forum March 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements was not a bona fide offering of goods or services).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

There are numerous UDRP decisions against Respondent holding that Respondent incorporated the famous marks of others and directed Internet users to other websites for commercial gain.  Each of these decisions against Respondent have resulted in orders transferring the disputed domain name from Respondent to Complainant.  See Bank of America v. Kahn, FA 114324 (Nat. Arb. Forum July 5, 2002); see also  Gruner + Jahr Printing & Publ’g. Co. v. Kahn, FA 114436 (Nat. Arb. Forum July 11, 2002); see also CompUSA Mgmt.  Co. v.  Kahn, FA 123921 (Nat. Arb. Forum Oct. 18, 2002); see also Bank of Am. Corp. v.  Khan; FA 124515 (Nat. Arb. Forum Oct. 28, 2002); see also Alltel Corp. v. Khan, FA 124995 (Nat. Arb. Forum Nov. 4, 2002); see also Kmart of Mich., Inc. v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002); see also Wells Fargo Co. v. Khan, FA135009 (Jan. 13, 2003).

Typosquatting, which is the practice of registering misspellings of well-known marks and then linking the misspelled domain names to other websites for Respondent’s commercial gain, is recognized as a bad faith use of a domain name under Policy ¶ 4(b)(iv).  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).    

Respondent is a well-known typosquatter. The Panel finds that Respondent registered and used the <bluecare.com> domain name in bad faith because it is diverting Internet users who misspell Complainant’s well-known mark to commercial websites for its commercial gain.  See Bank of Am. v. Kahn, FA 114324 (Nat. Arb. Forum July 5, 2002) (finding that “Respondent uses the <banckofamerica.com> domain name to divert unsuspecting Internet users who misspell “bank” to a website that offers subscriptions to financial magazines.”); see also CompUSA Mgmt. Co. v. Kahn, FA 123921 (Nat. Arb. Forum Oct. 18, 2002) (finding that “Respondent is diverting Internet users who mistype Complainant’s mark in the browser to Respondent’s own website for Respondent’s commercial gain”); see also Bank of Am. Corp. v.Khan; FA 124515 (Nat. Arb. Forum Oct. 28, 2002) (finding that “Respondent’s practice of ‘typosquatting’ has been recognized as a bad faith use of a domain name under the UDRP”).

Furthermore, it can be inferred that Respondent had knowledge of Complainant’s family of marks when it registered the disputed domain name since the registered domain name is a misspelling of Complainant’s family of marks.  Registration of a domain name with knowledge of Complainant’s rights is evidence of bad faith registration.  See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that Respondent’s registration of the <wwwremax.com> domain name, incorporating Complainant’s entire mark, was done with actual notice of Complainant’s rights in the mark prior to registering the infringing domain name, evidencing bad faith); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (stating that “in typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name”).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <bluecare.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Date:  July 25, 2003

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