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Generic Top Level Domain Name (gTLD) Decisions |
The
American National Red Cross v. Michael Rogers
Claim
Number: FA0202000104581
PARTIES
Complainant is The American National Red Cross,
Washington, DC (“Complainant”) represented by James L. Bikoff, of
Silverberg, Goldman & Bikoff, LLP.
Respondent is Michael Rogers,
Boynton Beach, FL (“Respondent”).
The domain name at
issue is <animalredcross.com>,
registered with Network Solutions, Inc.
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.
Judge Harold Kalina
(Ret.) as Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on
February 8, 2002; the Forum received
a hard copy of the Complaint on February
11, 2002.
On February 13, 2002,
Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <animalredcross.com> is registered
with Network Solutions, Inc. and that Respondent is the current registrant of
the name. Network Solutions, Inc. has
verified that Respondent is bound by the Network Solutions, Inc. 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 February 14, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”),
setting a deadline of March 6, 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@animalredcross.com 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 March 14, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Judge
Harold Kalina (Ret.) 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 name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
1. The <animalredcross.com> domain name
is confusingly similar to Complainant’s distinctive RED CROSS trademark. The disputed domain name incorporates
Complainant’s famous mark in its entirety and is therefore confusingly similar
to RED CROSS.
2. Respondent has used
the disputed domain name to solicit funds.
By using a domain name that incorporates Complainant’s mark in its
entirety, a mark that is synonymous for soliciting funds for donation,
Respondent is not making a bona fide offering of goods or services nor is
making a legitimate noncommercial or fair use of <animalredcross.com>.
Further, due to federal statutory protections and the fame attained by
RED CROSS, Respondent cannot possibly claim that he is commonly
known as <animalredcross.com>.
3. Because of the fame
attained by Complainant’s mark, Respondent knew or should have known about the
mark prior to registering <animalredcross.com>,
therefore, mere registration of the disputed domain name is evidence that
Respondent has acted in opportunistic bad faith. The disputed domain name also creates a likelihood of confusion
with the RED CROSS mark as to the source, sponsorship, affiliation,
or
endorsement of Respondent’s website.
Respondent’s offer to sell the disputed domain name for $10,000 is
evidence that Respondent registered <animalredcross.com>
in bad faith. Therefore, Respondent
has registered and used the disputed domain name in bad faith.
No Response was
received.
FINDINGS
Complainant’s
RED CROSS mark is one of the most famous marks in the United States. Since 1881, Complainant has used the mark in
connection with providing those in need with emergency aid, first aid training
and humanitarian
assistance. In 1948,
Congress enacted a federal criminal statute, 18 U.S.C. §706 and §917, to
protect the famous RED CROSS marks and the RED CROSS
words and emblem. Section 706 grants Complainant exclusive use
of the distinctive RED CROSS words and symbols, except for users of a RED CROSS
logo
or the words RED CROSS before 1905.
Complainant’s RED CROSS mark is also used in connection with assisting
pet owners, information on performing first aid on pets are
offered at
Complainant’s <redcross.org> website.
Complainant owns numerous RED CROSS marks filed with the United States
Patent and Trademark office.
Respondent
registered <animalredcross.com> on
June 5, 2001. On July 17, 2001,
Respondent sent a letter to the Colgate-Palmolive Corporation, in which he
asked for “a check for as much as you
can make payable to the Animal Red
Cross,” on “Animal Red Cross, A Not For Profit Agency” letterhead, which also
included a cross
similar to Complainant’s cross. Colgate-Palmolive has been a major contributor to Complainant in
the past and contributed $1 million to Complainant in 2001.
Complainant
had sent three cease and desist requests to Respondent. The last request, sent via fax, was the only
request in which Respondent answered.
In a telephone conversation, Respondent disputed that he registered <animalredcross.com>
in bad faith. However, two weeks later,
January 18, 2002, Respondent offered to transfer the disputed domain name to
Complainant for $10,000.
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.
Identical
and/or Confusingly Similar
Complainant
has established its rights in RED
CROSS. Complainant has: federal
statutory protection for its mark, registered its mark with the USPTO, and used
the famous RED CROSS mark
for over 120 years.
The
disputed domain name <animalredcross.com>
incorporates Complainant’s famous RED CROSS mark in its entirety and adds the
generic term “animal.” Because RED
CROSS is the dominant feature of the disputed domain name, there is a confusing
similarity between <animalredcross.com>
and RED CROSS. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9,
2000) (finding that “[n]either the addition of an ordinary descriptive word…nor
the suffix ‘.com’ detract
from the overall impression of the dominant part of
the name in each case, namely the trademark SONY” and thus Policy 4(a)(i) is
satisfied); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum
Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks
with the domain name, consumers
will presume the domain name is affiliated with
the Complainant …the Respondent is attracting Internet users to a website, for
commercial
gain, by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, or endorsement of the Respondent’s
website).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Respondent
has failed to file a Response in this matter.
Therefore, the Panel may presume that Respondent has no rights or
legitimate interests in <animalredcross.com>.
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).
Respondent
cannot prove that he is commonly known as <animalredcross.com>
since the dominant portion of the disputed domain name is RED CROSS and because
of 18 U.S.C. §706 and §917 provide that the only
entity who can use that mark
is Complainant. Therefore, Respondent cannot possibly
satisfy 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).
There
is evidence presented that Respondent has attempted to make the public believe
that there is a relationship between him and
Complainant. The letterhead Respondent sent to
Colgate-Palmolive contained “Animal Red Cross, A Not For Profit Agency” and a
cross similar to Complainant’s
cross.
Although there is an appearance that this is a noncommercial use, there
is no evidence presented that the solicitation was actually
intended for a
noncommercial use. The only conclusion
the Panel can arrive at is that Respondent intended to infer that there is a
relationship between the disputed
domain name <animalredcross.com> and Complainant. Therefore, Respondent fails to satisfy
Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest
in using the domain names <caterpillarparts.com>
and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with the Complainant's mark CATERPILLAR)
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent
registered a domain name that incorporates Complainant’s famous RED CROSS mark
and then Respondent used the disputed domain
name and attempting to solicit
funds from one of Complainant’s major contributors. This action by Respondent is evidence that he used <animalredcross.com> in bad faith
as outlined by Policy ¶ 4(b)(iv). See Nat’l Rifle Ass'n. v. fredg.com, FA
95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent
registered the domain names <friendsofnra.com>,
<friendsofnra.net>,
and <friendsofnra.org> with
the intention of using the domain names in connection with individual NRA
fundraising, but without permission from Complainant
to use the registered
marks).
Furthermore,
pursuant to 18 U.S.C. §706 and §917 no one in the United States has a right to
use RED CROSS other than Complainant.
Registration and subsequent use by Respondent to solicit funds to an
apparent fund-raising organization is evidence of oportunistic
bad faith. See
Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001)
(finding that Respondent's registration and use of the famous Chanel mark
suggests opportunistic
bad faith); see
also Singapore Airlines Ltd v. P & P
Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The
domain name ‘singaporeairlines.com’ is so obviously connected with a well-known
airline that
its very registration and use by someone with no connection to the
airline suggests opportunistic bad faith.
Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).
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 be hereby granted.
Accordingly,
it is Ordered that the domain name <animalredcross.com>
be transferred from Respondent
to Complainant.
Judge Harold Kalina (Ret.)
Dated: March 20, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/422.html