Blue Cross and Blue Shield Association just lost a Legal Rights Objection to Afilias Limited new gTLD application for .Blue

Here are the relevant findings by the three member WIPO panel:

“”The Applicant has not denied that it was aware of the Objector when it lodged the Application. However, on the evidence which has been produced, the Panel has no reason to doubt the Applicant’s assertion that it applied for the <.blue> gTLD for the purpose of establishing a new registry which would provide domain names to individuals, businesses, and organizations wishing to establish or enhance a presence on the Internet having “an affinity” with the color blue. The Applicant’s intention was to evoke a connection with the color, not with anyone’s “blue” trademark. The fact that the Applicant has applied for four other “[color]” gTLDs is consistent with that assessment.

There is no allegation that the Applicant has engaged in any pattern of conduct whereby it has applied for or operates TLDs, or registrations in TLDs, which are identical or confusingly similar to the marks of others.

The Applicant does not claim to have made any use of a sign corresponding to the <.blue> gTLD in connection with any bona fide offering of goods or services, or bona fide provision of information. However, the Applicant does submit that it has made demonstrable preparations to use the sign corresponding to the <.blue> gTLD in connection with such services.

In the <.express> case, and in at least one other LRO decision,4 expert panels have regarded the respondent’s efforts to establish the technical and administrative infrastructure to operate the new gTLD registry, as forming part of “preparations to use” the applied-for gTLD string.

However it seems to this Panel that factor 5 is concerned less with use of (or demonstrable preparations to use) the particular gTLD itself, and more with use (or demonstrable preparations to use) a sign corresponding to the gTLD separately in some way, whether as a trademark or service mark, or for the bona fide provision of information.

Before its application reaches the Legal Rights Objection stage, every applicant for a new gTLD string will presumably have carried out some work planning and/or creating the technical and administrative structure which will be necessary to operate its proposed new registry.

On that basis, the Panel would say on the evidence before it that the Applicant has not made use of, or made relevant demonstrable preparations to use, a sign corresponding to the <.blue> gTLD in connection with a bona fide offering of goods or services, or bona fide provision of information.

But even if activities associated with establishing the technical and administrative infrastructure necessary to operate the new registry could be regarded as relevant “demonstrable preparations” to use the sign “blue”, there is no evidence that such activities are “sufficiently well advanced to have created any material public awareness of the Applicant’s proposed use of the [.blue] string” (to borrow from the wording used by the panel in i-Registry Ltd v. Charleston Road Registry Inc., Case No. LRO 2013-0017).

The absence of proof of such “material public awareness” led the panel in that case to conclude that factor 5 considerations should be given little weight, and the Panel is of the view that the same assessment would be appropriate in this case.

The fact that “blue” is an extremely common generic expression in English, weighs heavily in the Applicant’s favor. As in the <.express> case, the Objector’s difficulties appear to arise in large part because it has seen fit to adopt a common word in the English language as its trademark. In such circumstances, the Objector’s rights in its “Blue” marks must be seen as relatively narrowly confined, being applicable only in respect of particular services in the health care and health insurance fields. As in the <.express> case, it may be said that what the Applicant is doing in this case is no more than “making available the use of a common term in the English language for Internet user registration in domain names.”

The panel in the <.express> case noted:

“… the Panel accepts that second-level domains in that registry relating to apparel and fashion [the field in which the objector in the case carried on business] may create a likelihood of confusion among Internet users …. But this is a problem that complainant will face because it has adopted a trademark that is a common dictionary or generic term, while using it in an arbitrary way.”

The introductory words of Section 3.5.2 state that LRO panels are required to apply the three standards in order to interpret and give meaning to the following GNSO Recommendation:

“Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law.”

The Panel is therefore obliged to give some consideration to the extent of the Objector’s enforceable rights in its “Blue” marks, and in particular to any limitations on those rights which might exist.

In that context the Panel records its agreement with the panel in the <.vip> case (LRO 2013-0014) where the panel said:

“In most trademark systems an honest use of a dictionary term is most unlikely to be found to be an infringement of a trademark registration of the term.”

In this case, the Applicant proposes to use the dictionary term “blue” in accordance with its dictionary meaning, and although the Applicant may have anticipated some confusion arising at the second level in its proposed <.blue> gTLD, the Panel does not believe there is any evidence that the Applicant will or may use the gTLD dishonestly, or otherwise in bad faith.””