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Generic Top Level Domain Name (gTLD) Decisions |
The American National Red Cross v.
Inter-Net Research, Inc. a/k/a Martin Palmer
Claim Number: FA0205000114438
PARTIES
Complainant
is The American National Red Cross,
Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverber,
Goldman & Bikoff LLP.
Respondent is Inter-Net Research,
Inc. a/k/a Martin Palmer, Edmonds, WA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <redcrossplates.com>,
<redcrossplates.net>, <redcrossplates.org>, <redcrosslicenceplates.com>,
<redcrosslicenceplates.net>,
<redcrosslicenceplates.org>,
<redcross-scc.com>, <redcross-scc.net>, and <redcross-scc.org>,
registered with Intercosmos Media Group.
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.
James
A. Crary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 30, 2002; the Forum received
a hard copy of the Complaint
on May 31, 2002.
On
May 30, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the
domain names <redcrossplates.com>,
<redcrossplates.net>, <redcrossplates.org>, <redcrosslicenceplates.com>,
<redcrosslicenceplates.net>,
<redcrosslicenceplates.org>,
<redcross-scc.com>, <redcross-scc.net>, and <redcross-scc.org>
are registered with Intercosmos Media Group and that Respondent is the current
registrant of the names. Intercosmos
Media Group has verified that Respondent is bound by the Intercosmos Media
Group 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 4, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 24,
2002 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@redcrossplates.com, postmaster@redcrossplates.net, postmaster@redcrossplates.org,
postmaster@redcrosslicenceplates.com,
postmaster@redcrosslicenceplates.net, postmaster@redcrosslicenceplates.org,
postmaster@redcross-scc.com, postmaster@redcross-scc.net,
and postmaster@redcross-scc.org>
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 8, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James
A. Crary 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domain names are confusingly similar to Complainant’s AMERICAN RED
CROSS mark.
Respondent has no rights or legitimate
interests in the disputed domain names.
Respondent registered and used the
disputed domain names in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns U.S. Trademark/Service
Mark Registration No. 1,697,594 for AMERICAN RED CROSS, which is registered on
the Principal
Register of the U.S. Patent and Trademark Office (“USPTO”). Complainant has long used the AMERICAN RED
CROSS mark in connection with humanitarian services, disaster relief and
educational programs. Since 1881,
Complainant has used the words “Red Cross” as part of its name. Complainant has extensively used “Red Cross”
for over 120 years. Consequently, “Red Cross” and Complainant’s AMERICAN RED
CROSS mark
have gained worldwide notoriety.
As a fundraising tool, Complainant has a
specialty license plate program. Groups
or organizations can purchase, pending application approval, specialty license
plates and the proceeds help provide additional
funding for Complainant’s
charitable chapters.
Respondent registered the disputed domain
names on July 23, 2001. Respondent was
once affiliated with one of Complainant’s Oregon Chapters. However, Complainant never granted
Respondent permission, express or implied, to use its AMERICAN RED CROSS mark.
In a response to a letter from
Complainant, Respondent noted that he had a detailed plan to create vanity
license plates as a fundraising
project for his Oregon Chapter. Respondent also stated that he suggested the
domain names to Complainant’s local “staff people” and that he will “sit” on
the disputed
domain names until he receives a “public apology” or “a payment of
$10,000 per domain name.”
In subsequent correspondence with
Complainant, Respondent apparently denies and recants the $10,000 per domain
name demand, but claims
to have rights in the license plate program and demands
that Complainant give him “a public and private apology and pay $15 for each
ARC-related domain.”
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 the 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 the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant
has rights; and
(2)
the 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.
Complainant established its rights in
the AMERICAN RED CROSS mark through registration with the United States Patent
and Trademark
Office and longstanding continuous use of the mark.
Respondent’s <redcrossplates.com>,
<redcrossplates.net>, <redcrossplates.org>, <redcrosslicenseplates.com>,
<redcrosslicenseplates.net> and <redcrosslicenseplates.org>
domain names are confusingly similar to Complainant’s famous AMERICAN RED CROSS
mark for three reasons: (1) the
omission of “American” in the domain names is not sufficient to detract from
the dominant presence of Complainant’s mark;
(2) the addition of the generic
word “plates” or phrase “licenseplates” to a significant portion of
Complainant’s mark does not create
a distinct mark, especially since
Complainant operates a fundraising license plate program; and (3) the addition
of the top-level
domains (“gTLDs”) “.com,” “.net” and “.org” are
inconsequential when conducting a “confusingly similar” analysis.
First, Respondent only uses the “Red
Cross” portion of Complainant’s AMERICAN RED CROSS mark. However, Complainant has been using “Red
Cross” as a part of its name for over 120 years. Also, deleting words from a mark does not create a distinct
domain name, especially when the dominating part of the mark is kept in
the
domain name. See WestJet Air Center, Inc. v. West Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to Complainant’s
mark, where Complainant
holds the WEST JET AIR CENTER mark); see also Wellness Int’l Network, LTD v. Apostolics.com,
FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name
<wellness-international.com> is confusingly similar
to Complainant’s
“Wellness International Network”).
Second, the addition of generic words or
phrases, such as “plates” or “licenseplates,” fails to create a distinct domain
name that
is wholly different than Complainant’s famous mark. In addition, Complainant has a license plate
program that helps its fundraising efforts.
Hence, Respondent’s use of “plates” and “licenseplates” in conjunction
with Complainant’s famous mark only amplifies the likelihood
of confusion. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the
Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the Respondent’s domain name combines the Complainant’s
mark
with a generic term that has an obvious relationship to the Complainant’s
business).
Finally, gTLDs, such as
“.com,” “.net” and “.org,” are negligible when conducting a confusingly similar
analysis. The addition of gTLDs are
required when creating a domain name and are therefore of no significance. Thus, Respondent’s <redcrossplates.com>, <redcrossplates.net>, <redcrossplates.org>,
<redcrosslicenseplates.com>, <redcrosslicenseplates.net>
and <redcrosslicenseplates.org> domain names are confusingly similar
to Complainant’s famous mark.
Respondent’s <redcross-scc.com>,
<redcross-scc.net> and <redcross-scc.org> domain
names are confusingly similar to Complainant’s AMERICAN RED CROSS mark. As previously stated, the omission of
“American” in Respondent’s domain name and the addition of a gTLD does not have
an impact on
a “confusingly similar” analysis.
Furthermore, the addition of a hyphenated suffix of letters to
Complainant’s famous mark fails to detract from the overall presence
of the
domain name, which is Complainant’s famous mark. See InfoSpace.com v.
Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain
name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark.
The
addition of a hyphen and “.com” are not distinguishing features”); see also
Am. Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and
"520" to the ICQ trademark does
little to reduce the potential for
confusion).
Accordingly, the Panel finds that all
disputed domain names are confusingly similar to Complainant’s famous AMERICAN
RED CROSS mark,
thus, Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
In light of Complainant’s assertion that
Respondent has no rights or legitimate interests in the disputed domain names
and Respondent’s
failure to respond, the Panel may presume that Respondent has
no such rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names). Furthermore, when Respondent fails to
respond, all inferences may be drawn in favor of the Complainant. See 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”).
Respondent demanded on two separate
occasions that Complainant apologize to him and buy the disputed domain names
from him. Respondent has not made an
active use of the disputed domain names in connection with a website and has
only used them as bait to
lure Complainant into settling the dispute. Respondent’s demands and inactive use of the
disputed domain names do not constitute a bona fide offering of goods or
services pursuant
to Policy ¶ 4(c)(i), nor do they constitute a legitimate
noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale &
Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites
that are
located at the domain names at issue, other than to sell the domain names for
profit); see also Cruzeiro
Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding
that rights or legitimate interests do not exist when one holds a domain name
primarily
for the purpose of marketing it to the owner of a corresponding
trademark).
Complainant’s AMERICAN RED CROSS mark is
so famous that it is hard to conceive of anyone else holding rights in a mark
similar to
it or that anyone is commonly known by a name similar to the
mark. In fact, Respondent is not known
by REDCROSSPLATES, REDCROSSLICENSEPLATES, or REDCROSS-SCC. Rather, Respondent was affiliated with one
of Complainant’s Oregon chapters but was never authorized to use Complainant’s
famous mark
for any objective.
Therefore, Respondent has no rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak,
FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that
Respondent was not commonly known by a domain name confusingly
similar to
Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established
use of the mark); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant;
(2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the
domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by
the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the disputed domain names;
thus, Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent made two separate demands for
payment per domain name in response to requests to transfer the domain names to
Complainant. Respondent first demanded
$10,000 per domain name and later denied that demand and amended it to $15 per
domain name. Holding infringing domain
names and demanding payment in excess of Complainant’s out-of-pocket costs
evidences bad faith use. That
Respondent adjusted its asking price is inconsequential, as Respondent’s
primary purpose in registering the domai names appears
to have been for
profit. See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding Respondent's offer to sell the domain name at issue to
Complainant was evidence
of bad faith); see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded,
are evidence of bad faith”).
Furthermore,
Respondent initially informed Complainant that he was going to “sit” on the
disputed domain names. Respondent has
done exactly that by not actively using the disputed domain names. Hence, Respondent appears to have registered
the disputed domain names in order to prevent Complainant from reflecting its
mark in
corresponding domain names.
Moreover, Respondent’s knowledge of Complainant’s rights in the AMERICAN
RED CROSS mark and subsequent registration of nine infringing
domain names
constitutes bad faith registration under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000)
(finding that one instance of registration of several infringing domain names
satisfies
the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000)
(finding that registering multiple domain names in a short time frame
indicates an intention to prevent the mark holder from using its mark and
provides evidence
of a pattern of conduct); see also Pep Boys Manny, Moe, & Jack v.
E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that,
where the Respondent registered many domain names, held them hostage, and
prevented
the owners from using them, the behavior constituted bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under
the ICANN Policy, the Panel concludes that the requested relief should be
hereby
GRANTED.
Accordingly, it
is Ordered that the <redcrossplates.com>,
<redcrossplates.net>, <redcrossplates.org>,
<redcrosslicenceplates.com>, <redcrosslicenceplates.net>,
<redcrosslicenceplates.org>, <redcross-scc.com>,
<redcross-scc.net>, and <redcross-scc.org> domain names be
TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated: July 15, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1156.html