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Generic Top Level Domain Name (gTLD) Decisions |
The American National Red Cross v. BV
a/k/a Brian Vo
Claim Number: FA0208000122225
PARTIES
Complainant
is The American National Red Cross,
Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverberg,
Goldman & Bikoff, LLP. Respondent
is BV a/k/a Brian Vo, Tracy,
CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <vietnamredcross.com>, <vietnamredcross.net>,
<vietnamredcross.org>, <vietnamredcross.info>,
<tphcmredcross.com>, <tphcmredcross.net>,
<tphcmredcross.org> and <tphcmredcross.info>, registered
with Go Daddy Software and Dotster.
PANEL
On
October 15, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James
P. Buchele as Panelist. 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 23, 2002; the Forum received
a hard copy of the
Complaint on August 21, 2002.
On
August 28, 2002 and August 29, 2002, Go Daddy Software and Dotster confirmed by
e-mail to the Forum that the domain names <vietnamredcross.com>,
<vietnamredcross.net>, <vietnamredcross.org>,
<vietnamredcross.info>, <tphcmredcross.com>,
<tphcmredcross.net>, <tphcmredcross.org> and
<tphcmredcross.info> are registered with Go Daddy Software and
Dotster and that Respondent is the current registrant of the names. Go Daddy Software and Dotster have verified
that Respondent is bound by the Go Daddy Software and Dotster registration
agreements
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
September 5, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of September 25, 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@vietnamredcross.com,
postmaster@vietnamredcross.net, postmaster@vietnamredcross.org,
postmaster@vietnamredcross.info,
postmaster@tphcmredcross.com,
postmaster@tphcmredcross.net, postmaster@tphcmredcross.org and
postmaster@tphcmredcross.info 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.
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
<vietnamredcross.com>, <vietnamredcross.net>,
<vietnamredcross.org>, <vietnamredcross.info>,
<tphcmredcross.com>, <tphcmredcross.net>,
<tphcmredcross.org> and <tphcmredcross.info> 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.
FINDINGS
Complainant owns Reg. No. 1,697,594 with
the United States Patent and Trademark Office for its AMERICAN RED CROSS
mark. Complainant’s mark is also
protected under U.S. statute 18 U.S.C. §§ 706 and 917. Complainant’s organization began in 1881
under the name American Association of the Red Cross, modeled on the
International Red Cross
and the Red Crescent Movement. The organization was created to serve the
United States during times of peace and war by providing disaster relief,
emergency aid,
first aid training programs and humanitarian assistance. The United States Congress chartered the
AMERICAN RED CROSS in 1905 to “carry on a system of national and international
relief in
time of peace and apply the same in mitigating the sufferings caused
by pestilence, famine, fire, floods and other great national
calamities, and to
devise and carry on measures for preventing the same.” Complainant responds on average to more than
67,000 disasters annually, and some 83,000 trained Red Cross volunteers help
survivors,
providing food, shelter, financial assistance, mental health
counseling and more. Complainant is also
the steward of almost half of United States’ blood supply.
Complainant provides humanitarian relief
to other nations around the world, including Vietnam. In 1997, 1999, and 2000 Complainant committed more than $4.4
million in cash and assistance for thousands of Vietnamese in response
to
flooding and typhoons. In 2001, for
example, Complainant provided over 3,500 families with new, flood-resistant
homes. Complainant has also provided
assistance to Vietnam War veterans, land mine victims, and persons affected by
Agent Orange.
Respondent registered the <vietnamredcross.org>
domain name on April 7, 2002. On April
9, 2002 Respondent registered <tphcmredcross.org>,
and between August 8-10, 2002 Respondent registered <vietnamredcross.net>,
<vietnamredcross.com>, <vietnameredcross.info>, <tphcmredcross.net>,
<tphcmredcross.com> and <tphcmredcross.info>. Respondent changed its WHOIS information
after receiving three cease and desist letters from Complainant in regards to
<vietnamredcross.org> and <tphcmredcross.org>. Respondent also proceeded to register the
six other disputed domain names <vietnamredcross.net>, <vietnamredcross.com>,
<vietnameredcross.info>, <tphcmredcross.net>, <tphcmredcross.com>
and <tphcmredcross.info> after receiving notice from Complainant
of Complainant’s rights in the AMERICAN RED CROSS mark via three cease and
desist letters. Respondent has not
received permission or a license from Complainant to use the AMERICAN RED CROSS
mark, or any derivative of the
mark.
Respondent is domiciled within the United States.
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 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.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the AMERICAN RED CROSS mark via continuous use and registration with
the United
States Patent and Trademark Office.
Complainant also holds federally protected rights in the mark codified
as 18 U.S.C. §§ 706 and 917.
Respondent’s <vietnamredcross.com>,
<vietnamredcross.org>, <vietnamredcross.net> and <vietnamredcross.info>
domain names are confusingly similar to Complainant’s AMERICAN RED CROSS mark
because they merely replace the word “American”
with “Vietnam.” Because Complainant’s organization is
actively working and contributing humanitarian aid to Vietnam the use of
“Vietnam” before “red
cross” in the disputed domain names merely describes
Complainant’s activities and therefore does not create a distinct mark capable
of overcoming a claim of confusing similarity.
See Sunkist Growers, Inc.
v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding
that the domain names <sunkistgrowers.org>, <sunkistgrowers.net>
and <sunkistasia.com>
are confusingly similar to Complainant’s registered
SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark);
see
also Net2phone Inc, v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the
domain name <net2phone-europe.com> is confusingly
similar to
Complainant’s mark…"the combination of
a geographic term with the mark does not prevent a domain name from being found
confusingly similar").
Furthermore, Respondent’s <tphcmredcross.org>,
<tphcmredcross.com>, <tphcmredcross.net>, and <tphcmredcross.info>
domain names are confusingly similar to Complainant’s AMERICAN RED CROSS mark
because Respondent has merely replaced the word
“American” with the letter
string “tphcm.” “TPHCM” is the
Vietnamese acronym for Ho Chi Minh City, the capital of Vietnam, therefore this
string of letters is also descriptive
of Complainant’s efforts in Vietnam and
does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i)
confusingly similar
analysis. See VeriSign, Inc. v. Tandon, D2000-1216
(WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s
VERISIGN mark and the <verisignindia.com>
and <verisignindia.net>
domain names where Respondent added the word “India” to Complainant’s mark); see
also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000)
(finding that the domain name, <walmartcanada.com> is confusingly similar
to Complainant’s famous
mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to respond to
Complainant’s Compliant, therefore it is assumed that Respondent lacks rights
or legitimate interests
in the disputed domain names. When Complainant asserts a prima facie case against
Respondent, the burden of proof shifts to Respondent to show that it has rights
or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in
respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which
could demonstrate any
rights or legitimate interests in the domain name).
Furthermore, because Respondent has not
submitted a Response, it is appropriate for the Panel to accept all reasonable
allegations
and inferences in the Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (failure to respond allows all reasonable inferences of fact in
the allegations of Complainant
to be deemed true); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply
to the Complaint).
Respondent has parked <tphcmredcross.com>,
<tphcmredcross.net>, <tphcmredcross.info>, <vietnamredcross.net>,
<vietnamredcross.info>, and <vietnamredcross.com> at
<godaddy.com> and has not developed a website for any of them. The <godaddy.com> website features
advertisements and links to other websites.
Respondent’s parking of these domain names is not considered to be in
connection with a bona fide offering of goods or services pursuant
to Policy ¶
4(c)(i), or a legitimate, noncommercial or fair use pursuant to Policy ¶
4(c)(iii), and therefore does not establish
rights or legitimate interests in
the disputed domain names. See Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that
Respondent’s website, which is blank but for links to other websites, is
not a
legitimate use of the domain names); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000)
(finding no rights or legitimate interests in the domain names
<faoscwartz.com>, <foaschwartz.com>,
<faoshwartz.com>, and
<faoswartz.com> where Respondent was using these domain names to link to
an advertising website).
Respondent has failed to establish a
website, or make any use out of <tphcmredcross.org> or <vietnamredcross.org>
since their registration in April 2002.
The passive holding of domain names is not considered to be in
connection with a bona fide offering of goods or services pursuant
to Policy ¶
4(c)(i), or a legitimate, noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint
and had made no
use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (finding that “merely registering the domain name is not
sufficient to establish rights or legitimate
interests for purposes of
paragraph 4(a)(ii) of the Policy”).
Furthermore, Respondent has not submitted
a Response in this proceeding and therefore has submitted no evidence to
establish that
it is commonly known as VIETNAM RED CROSS, TPHM RED CROSS, or
any of the disputed domain names. As a
result, it can be inferred, based on the status of Complainant’s AMERICAN RED
CROSS mark, that Respondent is not commonly known
by any of the disputed domain
names and therefore has no rights or legitimate interests in them pursuant to
Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and
never applied
for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent
has registered more than one domain name that incorporates Complainant’s mark
in a very a short amount of time.
Respondent first registered <vietnamredcross.org> and <tphcmredcross.org>
in April of 2002, and proceeded to register the remaining disputed domain names
in August of 2002. This type of pattern
of registering domain names that are confusingly similar to Complainant’s mark
is evidence of bad faith registration
and use pursuant to 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 Nabisco Brands
Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that
registration of numerous domain names is one factor in determining registration
and
use in bad faith).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby
GRANTED.
Accordingly, it is Ordered that the
domain names <vietnamredcross.com>, <vietnamredcross.net>,
<vietnamredcross.org>, <vietnamredcross.info>,
<tphcmredcross.com>, <tphcmredcross.net>,
<tphcmredcross.org> and <tphcmredcross.info>, be
TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: October 21, 2002
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