Blue Cross and Blue Shield Association v. Yanli Li / Yanli
Claim Number: FA1708001742918
Complainant is Blue Cross and Blue Shield Association (“Complainant”), represented by Susan G. O'Neill of Hanson Bridgett LLP, California, USA. Respondent is Yanli Li / Yanli (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co>, registered with 1API GmbH.
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2017; the Forum received payment on August 3, 2017.
On Aug 4, 2017, 1API GmbH confirmed by e-mail to the Forum that the <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> domain names are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bcbscoreglobal.com, postmaster@bcbsglobelcore.com, postmaster@bcbsglobulcore.com, postmaster@bcbsglobalcore.co. Also on August 9, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global provider of health and life insurance, and healthcare-related goods and services. Complainant uses the BCBS GLOBAL mark in conjunction with its business practices. Complainant registered the BCBS GLOBAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,152,371, registered Feb. 28, 2017; originally filed Dec. 2, 2015, Ser. No. 86-836,575). Respondent’s <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> are confusingly similar to Complainant’s BCBS GLOBAL mark because it incorporates the mark in its entirety, eliminating spaces, adding the generic term “core,” misspelling the word “global,” and adding the “.com” and “.co” generic top level domains (“gTLDs”).
Respondent does not have rights or legitimate interests in <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the BCBS GLOBAL mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> resolve to parked webpages hosting click-through links offering Complainant’s goods and services and those in direct competition with Complainant.
Respondent registered and is using <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> in bad faith. Respondent has a history of registering domain names that infringe upon third-party marks, along with past UDRP decisions against it, thereby evincing a pattern of bad faith registrations. Respondent has engaged in typosquatting, as evidenced by the spelling variations of the word “global” in the disputed domain names. Furthermore, the disputed domain names capitalize on Complainant’s well-known mark to attract internet users to Respondent’s websites presumably for commercial gain. Respondent had actual knowledge of Complainant and its rights to the BCBS GLOBAL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Blue Cross and Blue Shield Association (BCBSA), of Chicago, IL, USA. Complainant is the owner of hundreds of domestic and international registered marks, constituting the BCBSA family of marks, including BCBS, BCBS GLOBAL, and variations thereof, which it has used continuously since at least as early as 1939 in real space, and since the 1990’s in cyberspace. Complainant is a global provider of health and life insurance, and healthcare-related goods and services.
Respondent is Yanli Li / Yanli, of Jiangsu, People’s Republic of China. Respondent’s registrar’s address is indicated as Homborg, Germany.
The Panel notes that Respondent registered <bcbscoreglobal.com>, <bcbsglobelcore.com>, and <bcbsglobulcore.com>, and <bcbsglobalcore.co> on or about January 18, 2017.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is a global provider of health and life insurance, and healthcare-related goods and services. Complainant uses the BCBS GLOBAL mark in conjunction with its business practices. Complainant registered the BCBS GLOBAL mark with the USPTO (e.g., Reg. No. 5,152,371, registered Feb. 28, 2017; originally filed Dec. 2, 2015, Ser. No. 86-836,575). Past panels have found that registrations with the USPTO are sufficient to show rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel here finds that Complainant’s USPTO registration is sufficient to indicate Complainant’s rights in the BCBS GLOBAL mark.
Complainant argues that Respondent’s <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> are confusingly similar to Complainant’s BCBS GLOBAL mark because it incorporates the mark in its entirety, eliminating spaces, adding the generic term “core,” misspelling the word “global,” and adding the “.com” and “.co” gTLDs. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). Likewise, “[t]he addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.” Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017); see also Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Prior panels have also held that the elimination of spaces between words do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007). Because Respondent’s <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> “wholly incorporate[ ] . . . Complainant’s registered mark,” the Panel may conclude that is “sufficient to establish . . . confusing similarity for purposes of the Policy despite the addition of other words to such marks.” See also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). The Panel here finds that Respondent’s registrations are confusingly similar to Complainant’s BCBS GLOBAL mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant asserts that Respondent does not have rights or legitimate interests in <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co>. To support its assertion, Complainant indicates that Respondent is not commonly known by the disputed domain names under WHOSIS. WHOIS information identifies Respondent as “Yanli Li” of “Yanli.” Absent a response, where “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name,” previous panels have determined that the respondent is not commonly known by that name. Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003), see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). herefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the [domain name] in any derivation.” Here nothing in the WHOIS information indicates that Respondent is ‘commonly known by’ the disputed domain names, and Respondent has provided no evidence to contradict Complainant’s assertions. The Panel here finds that Respondent is not commonly known by <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co>.
Complainant avers it has not authorized or licensed Respondent to use the BCBS GLOBAL mark in any regard, nor is Respondent affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. In support of its contention, Complainant demonstrates that Respondent’s <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> resolve to parked webpages hosting click-through links offering Complainant’s goods and services and those in direct competition with Complainant. A respondent is not making a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent is using the disputed domain name to host generic links to third-party websites, some of which directly compete with the complainant’s business. See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015), see also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015). The Panel here finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain names as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where Respondent is hosting web pages featuring links to services that compete with those of Complainant.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant maintains that Respondent registered and is using <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> in bad faith. Complainant argues that Respondent has a history of registering domain names that infringe upon third-party marks, along with past UDRP decisions against it, thereby evincing a pattern of bad faith registrations. In support of its argument, Complaint provides evidence of prior UDRP adverse actions involving Respondent. A bad faith pattern of conduct may be found where the respondent registers many domain names unrelated to its business, infringing on famous marks and websites. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Forum Mar. 16, 2000). Moreover, where the record reflects that the respondent has been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants, that establishes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012).
Next, Complainant asserts that the disputed domain names capitalize on Complainant’s well-known mark to attract internet users to Respondent’s websites presumably for commercial gain. As previously noted, Respondent’s <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> resolve to webpages that host click-through links to goods and service related to and in competition with Complainant. Panels have found that a “[r]espondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of [c]omplainant, some which direct Internet users to [c]omplainant’s own website, and some of which are unrelated to [c]omplainant’s business; evince bad faith attraction for commercial gain.” See The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel here finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant further contends that Respondent has engaged in typosquatting, as evidenced by the spelling variations of the word “global” in the disputed domain names. “Typosquatting is a practice whereby a domain name registrant . . . deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited.” Twitter, Inc. v. Domain Admin, FA1503001607451 (Forum Apr. 2, 2015). In the instant proceeding, Respondent simply changes a single letter in Complainant’s trademark before incorporating the mark into some of the domain names at issue. The Panel here finds that Respondent’s typosquatting is evidence of registration and use in bad faith under Policy ¶ 4(a)(iii) bad faith.
Therefore, given the evidence provided by Complainant, the Panel finds that Respondent registered and is using <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> in bad faith under the UDRP.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bcbscoreglobal.com>, <bcbsglobelcore.com>, <bcbsglobulcore.com>, and <bcbsglobalcore.co> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 8, 2017
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