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Generic Top Level Domain Name (gTLD) Decisions |
The American National Red Cross v. WMS
Enterprises Co. aka Wilfred Sherman
Claim Number: FA0203000105935
PARTIES
Complainant
is The American National Red Cross,
Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverberg
Goldman & Bikoff, LLP.
Respondent is WMS Enterprises Co.,
Chelsea, MA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <redcrosstravel.com>,
registered with Register.com.
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
Alan Crary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 19, 2002; the Forum received
a hard copy of the
Complaint on March 20, 2002.
On
March 19, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <redcrosstravel.com> is
registered with Register.com and that Respondent is the current registrant of
the name. Register.com has verified
that Respondent is bound by the Register.com 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
March 21, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 10,
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@redcrosstravel.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
April 22, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James
Alan 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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<redcrosstravel.com> domain name is identical to Complainant's RED
CROSS mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant has used the RED CROSS mark
in the United States since 1881. The
RED CROSS mark is protected under Statute U.S.C. § 706 and § 917. 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 works with National Societies in
175 countries and the International Federation of Red Cross and Red Crescent
Societies
to provide humanitarian assistance worldwide. Complainant is also the steward of the
United States’ blood supply. It
supplies some 3,000 hospitals with about half of the blood used in the United
States.
Complainant uses the good will associated
with its name in fundraising efforts.
Complainant raises millions of dollars annually to assist disaster
victims and their families, support emergency workers, and provide,
blood,
shelter, food and mental health services to those needing emergency
assistance. Complainant maintains a number
of websites including <americanredcross.com>,
<americanredcross.net>, <americanredcross.org>,
<redcross.info>, and <redcross.org>.
Respondent registered the disputed domain
name on February 6, 2001. Respondent
told Complainant that it intended to use the domain for a travel website
tailored to Complainant’s needs.
Respondent said that it would not begin to operate the website without
Complainant’s express approval. Complainant
asserted that it would not consider any offers from Respondent until the domain
name was transferred. Since that time,
Complainant has not heard anything from Respondent. Communications with the Respondent indicate that Respondent had
notice of Complainant’s rights when it registered <redcrosstravel.com>.
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 that it has
rights in the RED CROSS mark due to continuous use and the marks special
protected status
under the laws of the United States.
Respondent’s <redcrosstravel.com>
domain name is confusingly similar to Complainant’s mark because it
incorporates the entirety of Complainant’s mark and merely
adds the generic
term “travel” to the end. The addition
of a generic term to another’s well-known mark is not enough to create a mark
capable of overcoming a claim of confusing
similarity. 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
Complainant
combined with a generic word or term); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests
in the disputed domain name. 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
submit a Response the Panel is permitted to make all inferences in favor of
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”).
It can be inferred that Respondent
registered a confusingly similar domain name in order to cause Internet user
confusion and attract
people interested in Complainant to Respondent’s
website. This type of use is not
considered to be a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)
(finding no rights or legitimate interests where Respondent diverted
Complainant’s customers to
his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet
traffic is not a legitimate use of the
domain name).
Respondent, known to this Panel as WMS
Enterprises Co., has not come forward to offer any evidence that it is commonly
known by <redcrosstravel.com> pursuant to Policy ¶ 4(c)(ii) and
therefore has no rights or legitimate interests in the disputed domain
name. 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 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).
Furthermore, any use of the disputed
domain name would create a likelihood of confusion as to the source,
sponsorship and affiliation
of <redcrosstravel.com> and therefore
is not a legitimate, noncommercial or fair use pursuant to 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 Complainant's mark CATERPILLAR).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the fame of Complainant’s mark
and Respondent’s communications with Complainant, it can be inferred that
Respondent was on
notice as to Complainant’s rights in the RED CROSS mark when
it registered the disputed domain name.
Therefore, Respondent’s registration of <redcrosstravel.com>,
despite this notice, is evidence of bad
faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly
known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual
or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted
bad faith).
The <redcrosstravel.com>
domain name is confusingly similar to Complainant's mark and the Internet user
will likely believe that there is an affiliation
between Respondent and
Complainant. Registration of the
confusingly similar <redcrosstravel.com> domain name is evidence
of bad faith pursuant to Policy ¶ 4(b)(iv).
See Sony Kabushiki Kaisha
v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith
registration and use where it is “inconceivable that the respondent could
make
any active use of the disputed domain names without creating a false impression
of association with the Complainant”).
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 name <redcrosstravel.com> be transferred from
Respondent to Complainant.
James Alan Crary, Panelist
Dated: May 6, 2002
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