DECISION

 

Blue Cross and Blue Shield Association and Anthem Insurance Companies, Inc. v Igor Nikolenko

Claim Number: FA1805001784630

PARTIES

Complainant is Blue Cross and Blue Shield Association and Anthem Insurance Companies, Inc. (“Complainant”), represented by Susan G. O'Neill of Hanson Bridgett LLP, California, USA.  Respondent is Igor Nikolenko (“Respondent”), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <arkbluecrossblueshield.com>, <bluecrossbluesheildflorida.com>, <bluecrossbluesheildma.com>, <bluecrossblueshieldnm.com>, <bluecrossproviders.com>, and <bluecrossblueshieldanthem.com>, registered with Moniker Online Services LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 30, 2018; the Forum received payment on May 1, 2018.

 

On May 2, 2018, Moniker Online Services LLC confirmed by e-mail to the Forum that the <arkbluecrossblueshield.com>, <bluecrossbluesheildflorida.com>, <bluecrossbluesheildma.com>, <bluecrossblueshieldnm.com>, <bluecrossproviders.com>, and <bluecrossblueshieldanthem.com> domain names are registered with Moniker Online Services LLC and that Respondent is the current registrant of the names.  Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 May 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 2018 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@arkbluecrossblueshield.com, postmaster@bluecrossbluesheildflorida.com, postmaster@bluecrossbluesheildma.com, postmaster@bluecrossblueshieldnm.com, postmaster@bluecrossproviders.com, and postmaster@bluecrossblueshieldanthem.com.  Also on May 7, 2018, 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 June 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant represents the oldest and largest family of health benefits companies in the United States. For over 80 years, Complainant (including through its predecessors in interest and its licensees) has provided tens of millions of families with top-quality affordable health care plans. Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the BLUE CROSS (e.g., Reg. No. 1,426,942 registered Jan. 27, 1987), BLUE SHIELD (e.g., Reg. No. 1,319,824 registered Feb. 12, 1985), and ANTHEM (e.g., Reg. No. 2,751,535 registered Aug. 19, 2003) marks. See Compl. Annexes 5 and 7. Respondent’s disputed domain names are identical or confusingly similar to Complainant’s marks as the marks are fully incorporated into the disputed domain names. Further, Respondent merely adds generic, descriptive, or geographic terms to the disputed domain names such as “providers,” “ark” (Arkansas), “Florida,” “ma” (Massachusetts), and “nm” (New Mexico). Additionally, Respondent misspells the Complainant’s BLUE SHIELD mark in the <bluecrossbluesheildflorida.com> and <bluecrossbluesheildma.com> domain names. Finally, the domain names incorporate the generic top-level domain (“gTLD”) “.com”.

2.    Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s marks and is not commonly known by the disputed domain names. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent’s disputed domain names resolved to various websites, including to parked pages which displayed sponsored links, including to health insurance quotes for Complainant and its competitors, to unrelated commercial websites, or have not resolved at all. See Compl. Annex. 9.

3.    Respondent has engaged in a pattern of registering domain names in bad faith by incorporating Complainant’s marks in multiple domain names, and other well-known third party marks. Further, Respondent registered and used the disputed domain names in bad faith as Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. Using the domain names to display links to competitors also disrupts Complainant’s business. See Compl. Annex 9. Respondent’s bad faith is further evidenced through previously using several of the disputed domain names to resolve to inactive websites. Id. Moreover, Respondent engages in typosquatting. Lastly, Respondent has actual or constructive knowledge of Complainant’s rights to its marks prior to registering the disputed domain names.

 

B. Respondent

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

 

FINDINGS

1.    Respondent’s <arkbluecrossblueshield.com>, <bluecrossbluesheildflorida.com>, <bluecrossbluesheildma.com>, <bluecrossblueshieldnm.com>, <bluecrossproviders.com>, <bluecrossblueshieldanthem.com> domain names are confusingly similar to Complainant’s BLUE CROSS, BLUE SHIELD and ANTHEM marks.

2.    Respondent does not have any rights or legitimate interests in the <arkbluecrossblueshield.com>, <bluecrossbluesheildflorida.com>, <bluecrossbluesheildma.com>, <bluecrossblueshieldnm.com>, <bluecrossproviders.com>, <bluecrossblueshieldanthem.com> domain names.

3.    Respondent registered or used the <arkbluecrossblueshield.com>, <bluecrossbluesheildflorida.com>, <bluecrossbluesheildma.com>, <bluecrossblueshieldnm.com>, <bluecrossproviders.com>, <bluecrossblueshieldanthem.com> domain names in bad faith.

 

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."

 

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.”).

 

Preliminary Issue: Multiple Complainants

In the instant proceedings, there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”  The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

There are two Complainants in this matter: Blue Cross and Blue Shield Associate (“BCBSA”), and Anthem Insurance Companies, Inc (“Anthem”). BCBSA and Anthem have sufficient common interest in the disputed domain names to be joined as Complainants, as further factually discussed below, as Anthem is a licensee of BCBSA and therefore has a common grievance with BCBSA with respect to the licensed marks that Respondent has incorporated into its domain names. See Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661 (consolidation of strictly separate complainants appropriate when they share an interest in the marks at issue). It is therefore economical and efficient to join Complainants in one proceeding. Under these circumstances, Complainants submit that consolidation is supported by Panel authority and appropriate in respect of the disputed domain names.

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and shall treat them all as a single entity in this proceeding.

 

Identical and/or Confusingly Similar

Complainant claims rights in the BLUE CROSS (e.g., Reg. No. 1,426,942 registered Jan. 27, 1987), BLUE SHIELD (e.g., Reg. No. 1,319,824 registered Feb. 12, 1985), and ANTHEM (e.g., Reg. No. 2,751,535 registered Aug. 19, 2003) marks through registrations with the USPTO. See Compl. Annexes 5 and 7. Registration of a mark with the USPTO is sufficient to demonstrate rights to a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Accordingly, the Panel finds Complainant has demonstrated rights in the BLUE CROSS, BLUE SHIELD, and ANTHEM marks per Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s disputed domain names are identical or confusingly similar to its marks for the following reasons:

·         Respondent fully incorporates Complainant’s marks in the disputed domain names.

·         Respondent merely adds the generic, descriptive, or geographic terms “providers,” “ark” (Arkansas), “Florida,” “ma” (Massachusetts), and “nm” (New Mexico) to the disputed domain names.

·         Respondent misspells the Complainant’s marks in the <bluecrossbluesheildflorida.com> and <bluecrossbluesheildma.com> domain names.

·         Respondent adds the gTLD “.com”.

Such circumstances do not typically distinguish domain names from a finding of confusing similarity per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel finds that the disputed domain name is identical to Complainant’s mark.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”). Accordingly, the Panel finds Respondent’s changes and additions to the disputed domain names are insufficient for purposes of distinguishing the domain names from confusing similarity per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues Respondent has no rights or legitimate interests in the disputed domain names. Complainant avers that Respondent is not permitted or licensed to use Complainant’s marks, and the WHOIS information lists the registrant for the disputed domain names as “Igor Nikolenko.” See Compl. Annex. 2. Such circumstances can indicate a respondent is not commonly known by a domain name per Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). As a result, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).

 

Complainant contends Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Complainant indicates Respondent’s disputed domain names resolve to various websites, including to parked pages which display sponsored links, including to health insurance quotes for Complainant and its competitors, to unrelated commercial websites, or have not resolved at all. Such uses of domain names are not typically considered bona fide offerings of goods or services, or legitimate noncommercial or fair uses per Policy ¶¶ 4(c)(i) and (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”); see also Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”); see also Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services… 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 provides screenshots of the resolving webpages, which confirm Complainant’s assertions. See Compl. Annex 9. Accordingly, the Panel finds Respondent’s uses of the disputed domain names are not bona fide offerings of goods or services, or legitimate noncommercial or fair uses per Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant contends Respondent has engaged in a pattern of bad faith registration and use. Bad faith may be demonstrated where a respondent has engaged in a pattern of bad faith registration and use per Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists). Here, Complainant avers Respondent registered six domain names incorporating Complainant’s marks that are currently in dispute, and ten total domain names incorporating Complainant’s marks. Further, Complainant claims other third-parties owning rights in marks such as SHERATON and YAHOO, among others, have brought five successful UDRP proceedings against Respondent. Accordingly, the Panel finds Respondent’s pattern of bad faith registration demonstrates Respondent registered the current at-issue domain names in bad faith per Policy ¶ 4(b)(ii).

 

Complainant argues Respondent disrupts Complainant’s business by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website featuring links in competition with Complainant. Such uses of a domain name can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant provides screenshots of the resolving webpages, and it appears that all of the domain names at one point resolved to webpages displaying links to competing services. See Compl. Annex 9. As a result, the Panel finds Respondent has registered and used the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

 

Next, Complainant avers Respondent’s bad faith is further evidenced through inactive use of the disputed domain names, and through typosquatting. Such circumstances can demonstrate bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, 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 or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Here, Complainant provides screenshots of the resolving webpages for the domain names, which show that Respondent previously failed to use the <bluecrossbluesheildflorida.com>, <bluecrossbluesheildma.com>, and <bluecrossblueshieldnm.com> domain names in connection with active websites. See Compl. Annex 9. Complainant claims Respondent’s typosquatting is shown by misspelling Complainant’s marks in the <bluecrossbluesheildflorida.com> and <bluecrossbluesheildma.com> domain names. Consequently, the Panel agrees with Complainant’s arguments, and finds Respondent’s inactive use and typosquatting are indicative of bad faith under Policy ¶ 4(a)(iii).

 

Lastly, Complainant asserts Respondent had actual or constructive knowledge of Complainant’s rights in its mark prior to registering the disputed domain names. The Panel is reminded that while constructive knowledge is insufficient to support a finding of bad faith, actual knowledge is sufficient for a finding of bad faith registration under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant avers that Complainant’s marks are well known among the United States public, and many of the disputed domain names resolve to websites featuring sponsored links promoting health insurance for Complainant and its competitors in the United States. See Compl. Annex 9. As a result, the Panel finds Respondent had actual knowledge of Complainant’s rights in the marks prior to registering the disputed domain names.

 

DECISION

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

 

Accordingly, it is Ordered that the <arkbluecrossblueshield.com>, <bluecrossbluesheildflorida.com>, <bluecrossbluesheildma.com>, <bluecrossblueshieldnm.com>, <bluecrossproviders.com>, and <bluecrossblueshieldanthem.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

John J. Upchurch, Panelist

Dated:  June 14, 2018