COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

The American National Red Cross v. TreeTops

Claim Number: FA0303000152121

PARTIES

The Complainant is The American National Red Cross, Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverberg Goldman & Bikoff, LLP.  The Respondent is TreeTops, Minnetonka, MN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <red-cross.biz>, registered with Melbourne It d/b/a Internet Names World Wide.

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. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum” electronically on March 27, 2003: the Forum received a hard copy of the Complaint on March 28, 2003.

On March 27, 2003, Melbourne It d/b/a Internet Names World Wide confirmed by e-mail to the Forum that the domain name <red-cross.biz> is registered with Melbourne It d/b/a Internet Names World Wide and that Respondent is the current registrant of the name.  Melbourne It d/b/a Internet Names World Wide has verified that Respondent is bound by the Melbourne It d/b/a Internet Names World Wide registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with the Restrictions Dispute Resolution Policy (the “RDRP Policy”) and the Uniform Domain Name Dispute Resolution Policy (the “UDRP Policy”).

On March 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 21, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent pursuant to paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as supplemented by the Supplemental Restrictions Dispute Resolution Policy (the “Rules”).

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 29, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 “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 makes the following assertions:

1. Respondent is not making a bona fide business or commercial use of <red-cross.biz>.

2. The <red-cross.biz> domain name is identical to Complainant’s RED CROSS mark.

3. Respondent has no rights or legitimate interests in the <red-cross.biz> domain name.

4. Respondent registered and used the <red-cross.biz> domain name in bad faith. 

            B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, The American Red Cross, was founded in 1881 to serve the United States during times of peace and war by providing disaster relief, emergency aid, first aid training programs and humanitarian assistance.  Complainant has used the words “Red Cross” as part of its name since 1881.  Specifically, Complainant has used AMERICAN RED CROSS and RED CROSS (the “RED CROSS marks”) as trademarks or service marks in connection with humanitarian services, disaster relief and educational programs. 

The RED CROSS marks are protected by statute, codified as 18 U.S.C §§ 706 and 917.  Section 706 grants Complainant exclusive use of the distinctive Red Cross words and symbols, except for persons who used a red cross logo or the words “Red Cross” prior to 1905.  In addition, the RED CROSS marks are protected by international treaty.  The United States is a member of the Paris Convention for the Protection of Industrial Property, an international treaty that recognizes certain trademarks for protection.  Complainant’s AMERICAN RED CROSS mark, registered with the United States Patent and Trademark Office, has been granted special recognition such that the mark receives protection under the Paris Convention. 

Complainant responds on the average to more than 67,000 disasters, including fires, hurricanes, floods, earthquakes, tornadoes, hazardous material spills, transportation accidents, explosions and other natural or man-made disasters.  Around 83,000 trained RED CROSS volunteers per year help survivors, providing food, shelter, financial assistance, mental health counseling and much more.  Complainant is also the steward of almost half of the United States’ blood supply. 

Over one million Americans serve as RED CROSS volunteers attending to local community needs.  Complainant has nearly 1,000 RED CROSS local chapters located throughout the United States.  Because of Complainant’s breadth of services and the high profile nature of such services, the RED CROSS marks are well-known and hold a significant amount of goodwill for Complainant. 

Respondent registered the <red-cross.biz> domain name on August 7, 2002.  Complainant sent Respondent three cease and desist letters from October 2002 to February 2003.  Respondent did not respond in a manner that was consistent with Complainant’s demands.  On March 12, 2003, Complainant sent Respondent a final letter warning Respondent that a domain name dispute would be filed unless Respondent transferred the <red-cross.biz> domain name registration.  Respondent denied receipt of the letter telling the Federal Express agent that it feared the letter contained Anthrax. 

Complainant discovered that Respondent has registered other domain names containing reputable trademarks, specifically <ebay-confirm.info>, <ebayupdates.com> and <hotmail-greetings.net>.  Respondent used the <ebayupdates.com> domain name in December 2002 to defraud eBay users of credit card numbers, social security numbers and other identity information. 

Respondent has not actively used the <red-cross.biz> domain name since registration in August 2002. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a Complainant 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.”

Paragraph 4(a) of the UDRP 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 the Complainant has rights;

(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.

Paragraph 4(b) of the RDRP Policy defines “bona fide business or commercial use” as the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

(1) to exchange goods, services, or property of any kind; or

(2) in the ordinary course of trade or business; or

(3) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.

Bona Fide Business or Commercial Use

The RDRP requires that a domain name Regitrant use the domain name for a bona fide business or commercial purpose.  RDRP ¶¶ 4(b)(i)-(iii) prescribe examples of bona fide business or commercial purposes.  Moreover, RDRP ¶ 4(a) expressly states that “the complainant will bear the burden of proving that [the domain name is not used primarily for a bona fide business or commercial purpose.]”

Complainant points to Respondent’s lack of use and history of bad faith use of other domain names in order to establish an absence of bona fide business or commercial use.  However, RDRP ¶ 4(a) states “[a] complaint under the RDRP will not be considered valid if based exclusively on the alleged non-use of [the] domain name.”  Complainant fails to establish an active use of the <red-cross.biz> domain name that would warrant a finding of no bona fide business or commercial purpose.  Complainant presents no circumstances that are specific to the disputed domain name alone that persuades this Panel to decide in its favor under the RDRP.  Complainant’s speculation of potential bad faith use of the <red-cross.biz> domain name based on Respondent’s past infringing activities in regard to the <ebayupdates.com> domain name does not fulfill the requirements of the RDRP. 

While Respondent has not come forward to establish a bona fide business or commercial purpose in connection with the <red-cross.biz> domain name, Complainant has not satisfied its burden to demonstrate a lack of such a purpose with more than a showing of non-use in regard to the <red-cross.biz> domain name specifically.  Because the Panel finds that the requirements of the RDRP have not been met, the Panel will proceed to analyze the dispute under the UDRP. 

Identical and/or Confusingly Similar

Complainant has established its rights in the RED CROSS marks through proof of substantial use for over 120 years and various forms of statutory protections.  In addition, Complainant has registered the AMERICAN RED CROSS mark with the United States Patent and Trademark Office. 

Respondent’s <red-cross.biz> domain name incorporates Complainant’s distinct RED CROSS mark.  The <red-cross.biz> domain name hyphenates the two words of the mark and adds the top-level domain “.biz.”  Both the addition of hyphens and top-level domains have no bearing on a Policy ¶ 4(a)(i) “identical” determination.  Therefore, Respondent’s <red-cross.biz> domain name is identical to Complainant’s RED CROSS mark.  See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Moreover, the deletion of the word “American” from the AMERICAN RED CROSS mark does not alter the <red-cross.biz> domain name’s confusingly similar status in relation to that mark.  The dominant portion of the AMERICAN RED CROSS mark is the words “Red Cross.”  The <red-cross.biz> domain name incorporates those words while leaving out the most insignificant part of the mark.  Complainant has established the importance of the words “Red Cross” in designating its services.  Hence, Respondent’s <red-cross.biz> domain name is confusingly similar to Complainant’s well-established AMERICAN RED CROSS mark.  See 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”); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard” and “Miss Asprey” marks).

The Panel finds that Policy ¶ 4(a)(i) is satisfied. 

Rights or Legitimate Interests

Complainant argues that Respondent has no rights or legitimate interests in the <red-cross.biz> domain name.  While Complainant has the burden to affirmatively prove no such rights or legitimate interests exist, Respondent’s failure to answer Complainant’s allegations is tantamount to admitting the truth of such allegations.  See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on the Respondent’s failure to respond: (1) the Respondent does not deny the facts asserted by the Complainant, and (2) the Respondent does not deny conclusions which the Complainant asserts can be drawn from the facts).

Furthermore, due to the lack of response, the Panel will accept all reasonable allegations and inferences of fact made by Complainant, unless clearly contradicted by the evidence before the Panel.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent does not actively use the <red-cross.biz> domain name and, as Complainant demonstrated, Respondent has a history of registering other domain names containing trademarks, such as eBAY and HOTMAIL.  Respondent’s non-use of the <red-cross.biz> domain name for nearly eight months and past infringing activity with prior domain names, in particular the <ebayupdates.com> domain name, allows the Panel to infer that Respondent has no intentions or plans to use the domain name in connection with a bona fide offering of goods or services, or in association with a noncommercial fair use.  Such an inference is further supported by the broad recognition of the RED CROSS marks and Respondent’s failure to assert a legitimate interest in the <red-cross.biz> domain name.  The Panel concludes that the passive holding of the <red-cross.biz> domain name in this case warrants a finding of a lack of rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (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 Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

There is no indication that Respondent is commonly known by the <red-cross.biz> domain name.  The WHOIS information lists the administrative contact for the <red-cross.biz> domain name as Eulalia Bergenthal with an apparent professional name being TreeTops.  The WHOIS information has the same address listed under the administrative contact as the registrant, and thus the Panel infers that Bergenthal d/b/a TreeTops is the registrant.  The Panel concludes that Bergenthal is Respondent’s common identity with TreeTops serving as Respondent’s apparent business identity.  Moreover, since the <red-cross.biz> domain name is identical to the notorious RED CROSS mark, the Panel finds it improbable that Respondent is commonly known by the <red-cross.biz> domain name.  Thus, Respondent has no rights or legitimate interests under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name; thus, Policy ¶ 4(a)(ii) is satisfied.

Registration and Use in Bad Faith

Policy ¶ 4(b) sets out a set of circumstances that represent bad faith registration and use.  However, that list of circumstances is nonexclusive and the Panel is permitted to look at the totality of circumstances in adjudicating the bad faith issue.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

The Panel finds that, because Respondent has previously registered domain names that incorporate well-known marks and the RED CROSS marks are well-known, Respondent was aware of Complainant’s interest in the RED CROSS marks when registering the <red-cross.biz> domain name.  Registering a domain name with knowledge of another entity’s interest in a mark identical to the domain name constitutes bad faith registration.  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 Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).  Hence, Respondent registered the <red-cross.biz> domain name in bad faith.

Respondent has held registration rights in the <red-cross.biz> domain name since August 2002.  Normally, a mere eight months of passive holding does not warrant a finding of bad faith use.  However, the Panel need not wait until a bad faith infringing use has transpired.  Under the circumstances of this case it is reasonable to infer that Respondent could not possibly have a potential use for the <red-cross.biz> domain name that would not confuse Internet users as to Complainant’s affiliation, and thus intrude upon Complainant’s rights in the RED CROSS marks.  This is due to the significant amount of goodwill the RED CROSS marks have established in over 120 years of use, and the fact that Respondent has a history of using an infringing domain name to appropriate valuable confidential customer information.  Moreover, Respondent has not come forward to refute the inferences that Complainant makes and the Panel adopts.  Therefore, the Panel concludes from the totality of circumstances that Respondent’s actions amount to bad faith use.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

DECISION

The Panel finds that Complainant failed to satisfy the requirements under the RDRP.  However, Complainant has established all three elements required under the UDRP, and thus the Panel concluded that the relief should be hereby GRANTED.

Accordingly, it is Ordered that the <red-cross.biz> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: May 5, 2003

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