Blue Cross and Blue Shield of Florida, Inc. v. Jerry Garcia
Claim Number: FA2202001985129
Complainant is Blue Cross and Blue Shield of Florida, Inc. (“Complainant”), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, Georgia, USA. Respondent is Jerry Garcia (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guidewellinsuranceagency.com>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2022; the Forum received payment on February 21, 2022.
On February 22, 2022, 1API GmbH confirmed by e-mail to the Forum that the <guidewellinsuranceagency.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 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 February 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2022 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@guidewellinsuranceagency.com. Also on February 22, 2022, 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 March 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Blue Cross and Blue Shield of Florida, Inc., uses the GUIDEWELL mark in association with services relating to insurance, health, wellness, and medical care.
Complainant has rights in its GUIDEWELL mark based on registration with the United States Patent and Trademark Office (“USPTO”).
The <guidewellinsuranceagency.com> domain name is identical or confusingly similar to Complainant’s GUIDEWELL mark because it wholly includes Complainant’s mark while adding in the generic terms “insurance” and “agency” and the “.com” generic top-level domain (“gTLD”) to form the domain name.
Respondent does not have any rights or legitimate interests in the <guidewellinsuranceagency.com> domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s GUIDEWELL mark. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent’s website displays various hyperlinks, including links related to Complainant’s business in health insurance.
Respondent registered and uses the <guidewellinsuranceagency.com> domain name in bad faith because Respondent’s website displays links that are related to Complainant’s business. Further bad faith is found through Respondent’s use of a privacy service. Finally, Respondent acted with actual knowledge of Complainant’s rights in the GUIDEWELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GUIDEWELL trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its GUIDEWELL trademark.
Respondent’s uses the at-issue domain name to address a website that displays various hyperlinks, including links related to Complainant’s business in health insurance.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar or identical to a trademark in which Complainant has rights.
Complainant’s USPTO registration for GUIDEWELL is sufficient to show that Complainant has rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <guidewellinsuranceagency.com> domain name contains Complainant’s entire GUIDEWELL trademark followed by the suggestive term “insurance agency” with all followed by the top-level name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish <guidewellinsuranceagency.com> from Complainant’s GUIDEWELL trademark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s domain name is confusingly similar to C GUIDEWELL. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Jerry Garcia” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <guidewellinsuranceagency.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <guidewellinsuranceagency.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar domain name to address a website displaying various links, including links related to Complainant’s business including a link for “Individual Health Insurance Plans” and other healthcare-related links. Respondent’s use of <guidewellinsuranceagency.com> in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <guidewellinsuranceagency.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and interests, Respondent uses the at-issue domain name to display hyperlinks to thirds parties including Complainant’s competition. Using the at-issue domain name in this manner demonstrates Respondent’s bad faith registration and use of the <guidewellinsuranceagency.com> domain name pursuant to Policy ¶¶ 4(b)(iii) and (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also, American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”); see also, Tommy John, Inc. v. Domain Administrator, FA 1912001876247 (Forum Jan. 26, 2020) (use of tommyjonm.com for a website that hosted hyperlinks both competing with complainant and unrelated to complainant was evidence of bad faith registration and use);
Moreover, Respondent registered <guidewellinsuranceagency.com> knowing that Complainant had trademark rights in GUIDEWELL and thus in <guidewellinsuranceagency.com>. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from the inclusion of the suggestive term “insurance agency” in the at-issue domain name. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <guidewellinsuranceagency.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guidewellinsuranceagency.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 22, 2022
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