DECISION

 

The American National Red Cross v. Mafiabusters.com LLC a/k/a Thomas Quinn

Claim Number: FA0206000114589

 

PARTIES

 

Complainant is The American National Red Cross, Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverberg Goldman & Bikoff, LLP.  Respondent is Mafiabusters.com LLC a/k/a Thomas Quinn, Tulsa, OK (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <redcrossmafia.com>, registered with Bulkregister.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.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 14, 2002; the Forum received a hard copy of the Complaint on June 17, 2002.

 

On June 18, 2002, bulkregister.com confirmed by e-mail to the Forum that the domain name <redcrossmafia.com> is registered with Bulkregister.com and that the Respondent is the current registrant of the name.  Bulkregister.com has verified that Respondent is bound by the Bulkregister.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 June 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 15, 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@redcrossmafia.com by e-mail.

 

A timely Response was received and determined to be complete on July 9, 2002.

 

Complainant’s Additional Submission was received and determined to be complete on July 15, 2002.

 

On July 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant states that the American National Red Cross was founded by Clara Barton on May 21, 1881, as the American Association of the Red Cross. Its objective was to serve the United States during times of peace and war by providing disaster relief, emergency aid, first aid training programs and humanitarian assistance. Since 1881, Complainant has used the words “Red Cross” as part of its name.

 

According to Complainant, the American Red Cross works in 175 countries and responds on the average to more than 67.000 disasters per year. The American Red Cross is also steward of almost half of the United States blood supply. Complainant has over 1.000 local chapters throughout the United States and is comprised of 36 blood service regions, a number of stations on military bases and hospitals worldwide, a national headquarter in Washington, D.C. and national biomedical testing and research laboratories. This, alongside with its history of service, makes Complainant well-known, including in the State of Oklahoma, Respondent’s state of residence, where Complainant has provided its services in connection with several disasters.

 

Complainant asserts that its distinguishable name and good will are important to fundraising, as it encourages corporations and individuals to contribute funds, knowing that the monies will be used to meet humanitarian needs. Complainant raises millions of dollars annually and since September 11, 2001 it has received nearly USD$1 billion in donations.

 

Complainant contends that it has long used “American Red Cross” and “Red Cross” as its service marks and trademarks to identify its humanitarian services, disaster relief and educational programs. Since 1905, the “American Red Cross” name and emblem have been protected by statute, now codified as 18 U.S.C. §706 and §917. These trademarks are protected except against users of a red cross logo or the words “Red Cross” prior to 1905. Additionally, the Anticybersquatting Consumer Protection Act, enacted by the United States Congress in 1999, incorporated a special protection to the signs mentioned in 18 U.S.C. §706, when used in the Internet.

 

The mentioned Complainant is also protected by the Paris Convention for the Protection of Industrial Property, in its Article 6ter. United States of America is a member of the Paris Convention.

 

Likewise, Complainant’s trademarks “American Red Cross” and emblem are protected by the United States Patent and Trademark Office (USPTO) under the special designation number 89-000,081, and registration of a mark containing such words or emblem must be denied on the ground that the mark falsely suggests a connection with an institution specified in federal statutes. The trademark “American Red Cross” is also registered before the USPTO under N° 1,697,594. Complainant contends that due to the extensive use and recognition of its trademarks for over 120 years, they are famous and entitled to protection under federal law and the UDRP.

 

Complainant owns a number of domain names such as <AmericanRedCross.com>, <AmericanRedCross.net>, <AmericanRedCross.org>, <RedCross.info> and <RedCross.org>. It has also been involved as Complainant in previous domain name disputes, by which Complainant obtained the transfer of the domain names <AnimalRedCross.com>, <AmericanRedCross.info>, <RedCrossTravel.com> and <AmericanRedCrossMusic.com> in its favor. Based in its statutory authority, Complainant has actively pursued websites, domain name registrations and e-mail campaigns that have used the “Red Cross” marks without authorization.

 

With respect to Respondent’s registration of the domain name, Complainant asserts that after the registration took place (October 31, 2001) it sent three (3) cease and desist letters, dated March 8, 2002, April 15, 2002 and May 13, 2002 to Respondent, without receiving any response. In the Complainant’s opinion, this lack of response evidences that Respondent was aware of Complainant’s previous trademark rights over the words “Red Cross” when he registered the domain name. Complainant contends that Respondent registered the domain name <RedCrossMafia.com> in bad faith, to falsely suggest an association with Complainant.

 

Complainant states that the domain name under controversy is confusingly similar to the “Red Cross” trademark and trade name because it incorporated the “Red Cross” trademark in its entirety. The addition of the descriptive term “mafia” does not create a new or different mark in which Respondent has rights or legitimate interests, nor does it alter the mark held by Complainant.

 

Complainant further contends that Respondent lacks of legitimate rights to the domain name <RedCrossMafia.com>, as he is not affiliated with Complainant, is not a Red Cross volunteer, a grandfathered user of the words “Red Cross” or has been authorized by Complainant to register or use the domain name containing its marks. Likewise, Respondent is not commonly known as the domain name and has not used the domain name for a bona fide offering of goods and services. On the contrary, Respondent is passively holding the domain name.

 

According to Complainant, Respondent also owns other domain names including <UnitedWayMafia.com>. In Respondent’s web site <RecallPetition.com>, he has listed the domain names registered by him along with solicitation for donations. Donors receive a Respondent’s “HITMAN” T-shirt, ball cap and bumper sticker.

 

Complainant believes that Respondent’s association of the “Red Cross” mark with the generic word “mafia” is likely to harm Complainant. The word “mafia” has a negative connotation and refers to organized crime, and its use in connection with the words “Red Cross” may dilute and harm the goodwill of Complainant’s marks.

 

Regarding bad faith, Complainant asserts that Respondent’s domain name creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the domain name. The domain name trades upon the reputation and goodwill of Complainant’s marks. This finding of bad faith is also supported by the recognition and fame of Complainant’s marks around the world. Therefore, Respondent knew or should have known of Complainant’s well-known marks prior to registering the domain name, and this shows his bad faith.

 

Complainant contends that Respondent has engaged in a pattern of bad faith by registering well-known marks of others, which is evidence of registration and use in bad faith.

 

Additionally, Complainant asserts that Respondent has not undertaken any efforts to develop the domain name since registering it on October 31, 2001. According to Complainant, this constitutes passive name holding, which supports a finding of bad faith. Moreover, Respondent is a sophisticated user of the Internet and was aware of Complainant’s prior rights over the “Red Cross” mark when registering the domain name. Consequently, Respondent registered the domain name in conflict solely to trade on the good will and reputation associated with the “Red Cross” marks.

 

B. Respondent

 

In its Response, Respondent contends that he will not tolerate the illegal confiscation of property or any violation of his civil rights.

 

Respondent contends that he is the rightful owner of the domain name <RedCrossMafia.com>, not Complainant or any of its affiliates. Respondent is devoted to investigating, exposing and purging organized crime from government, corporations and so-called non-profit charities.

 

According to Respondent, on January 8, 2002, he notified Dr. Bernadine Healy, former director of the American Red Cross, in writing, of his ownership of the domain name subject of the controversy. Said letter made clear Respondent’s dissatisfaction with the handling of disaster relief funds, and his intention to use the website as an open forum.

 

Respondent states that it is clear that the domain name <RedCrossMafia.com> is not associated with the Complainant and is not in the blood or disaster relief business and is not soliciting funds that would support the bad habits of Complainant. Respondent considers that the information related to Complainant’s activities is previously sanitized to exclude the corruption within the organization, the HIV tainted blood, veteran abuse, mishandling of funds, etc.

 

Respondent further states that Complainant’s marks and emblems have been emblazoned across television, movies, radio, books, magazines and newspapers, and the networks have made millions off the advertising of criticism against Complainant. To this effect, he enclosed a videocassette containing a CBS “60 Minutes” show, which was broadcast on national television.

 

According to Respondent, he is writing a book about organized crime and charities and will use the domain name at issue to gather information and promote his book. The book has been offered to publishing companies and one has already expressed its interest in publishing the book under the name “The Red Cross Mafia”, which further justifies ownership of the domain name.

 

Regarding the alleged passive domain name holding, Respondent asserts that failure to post a website in a timely fashion is not an issue that can be dictated by Complainant or any other third party.

 

Respondent contends that public criticism of Complainant or any other organization is simply an exercise of free speech and does not justify the confiscation of  private property. Respondent further contends that Complainant will never use the domain name at issue and only seeks ownership to quash public criticism and stifle freedom of speech.

 

C. Complainant’s Additional Submission

 

Considering that Respondent raised in his Response new claims concerning his prior correspondence with the Red Cross, his rights and legitimate interest in the domain name at issue and his use of the domain name for criticism of the Red Cross, Complainant decided to file an additional submission, which is accepted by the Panel.

 

Complainant asserts that on November 1, 2001, one day after registering the domain name at issue, Respondent sent an e-mail to info@usa.redcross.org, concerning “Questions about National Red Cross Programs and Services”. Respondent requested the phone number, address and e-mail for Harold Decker and Dr. Bernadine Healy, which were provided to him on November 7, 2001 also by e-mail. Notwithstanding, Respondent states that he sent a letter to Complainant on January 8, 2002, addressed to Dr. Bernadine Healy, which according to Complainant was sent to a different P.O. Box than the one previously provided to him, and at a time when Dr. Healy was no longer working for Complainant. Respondent’s letter was sent to the American Red Cross International Response Fund address and not to the National Headquarters and there is no evidence in Complainant’s records of ever receiving it.

 

Regarding Respondent’s statements that the domain name <RedCrossMafia.com> will be use for the purpose of criticizing the Red Cross, Complainant contends that it is not true, since this criticism can be developed through any other of Respondent’s domain names without including the statutorily protected marks of Complainant. Additionally, Respondent made no effort to create a website of any kind at the domain name under controversy.

 

Complainant also contends that Respondent’s letter dated January 8, 2002, evidences that he planned to use the domain name for a commercial purpose. Furthermore, Complainant believes that through that letter, Respondent intended to develop into some form of relationship with Complainant. This intention to use the domain name to sell t-shirts and ball caps constitutes bad faith under the UDRP.

 

Complainant cites a number of precedents, in which Panels have found that the argument of free speech does not give Respondent the right to utilize Complainant’s marks in domain names without specific, written authorization of Complainant. According to Complainant, Respondent was obviously aware of the Complainant’s trademark rights when he registered the domain name and was familiar with Complainant’s website, <RedCross.org>.

 

Complainant asserts that Respondent is free to promote his book on his website <Mafiabusters.com>. The letter from the publishing company does not provide sufficient evidence that Respondent has rights to use Complainant’s mark in a domain name, it only demonstrates use of the domain name for a commercial purpose. Respondent has not made any effort to use the domain name with a website of any kind, not for the promotion of any book.

 

With respect to bad faith, Complainant considers that Respondent has only produced bare denials of his registration and use of the domain name in bad faith. According to Complainant, previous UDRP Panels have found that criticism sites do not constitute fair use of a mark. The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. The addition of other terms does not affect such finding.

 

Further, Complainant contends that Respondent has passively held the domain name since October 31, 2001, and that does not meet the requirements of fair use, as well as it does not constitute use for criticism purposes.

 

Complainant concludes that Respondent lacks of rights or legitimate interests in the domain name, and registered it and used it in bad faith, and requests the Panel to transfer the domain name to Complainant.

 

DISCUSSION AND FINDINGS

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the present controversy, the Panel notes that the Complainant, the Respondent and the registrar are all domiciled in the United States of America. Consequently, the Panel will refer to the law of the United States of America and judicial decisions under such law. (See McLane Company, Inc. v. Fred Craig[1]).

 

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;

(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

 

Under the UDRP proceedings, a UDRP Complaint may be filed when the domain name in dispute is identical or confusingly similar to a trademark or service mark in which Complainant has rights. 

 

Complainant has established its rights in the “Red Cross” trademark. The mark is protected under statute by 18 U.S.C. §706 and §917, against its unauthorized use. Likewise, the trademark “American Red Cross” and emblem is registered under the special designation N° 89-0000,081, granted by the USPTO. The “American Red Cross” mark is also registered before the USPTO under Registration N° 1697594 alongside with the whale design. The marks “American Red Cross” and “Red Cross” have been used by Complainant since at least 1881, which gives it also common law rights over the signs. These rights have not been contested by Respondent. Additionally, Article 6ter of the Paris Convention gives special protection to Complainant’s marks and emblems.

 

As it has been repeatedly accepted by UDRP Panels (e.g. Wal-Mart Stpres, Inc. v. Walsucks[2], stating that: “[t]he addition of the generic top-level domain (gTLD) name ".com" is without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services”), the existence of the “.com” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical or confusingly similar to the mark in which the Complainant asserts rights. Therefore, this Panel will not take into consideration the suffix “.com” when deciding over the similarity between the signs.

 

Now, the addition of the word “mafia” to the “Red Cross” mark must be studied by the Panel to determine whether or not it is sufficient to give the sign enough distinctiveness. According to Complainant, the word “mafia” can be understood as a generic term, that is intended to describe activities that the Respondent considers illegal, through the website at <RedCrossMafia.com>. Therefore, the word “mafia” should not interfere in a finding of confusingly similarity in this controversy. However, the Panel finds that the particularities of the present case lead to a different conclusion as to the alleged confusingly similarity between the signs. As analyzed below when studying the Respondent’s registration and use of the domain name in bad faith, the use of the word “mafia” together with the Complainant’s mark “Red Cross” precludes any possibility of confusion between the domain name and the mark. It has been previously established by the Panel in the case of Mc Lane Co., Inc. v. Craig[3], as follows:

 

As to "mclanenortheastsucks.com", this Panel determines that the domain name is not identical or confusingly similar to a mark in which Complainant has rights. This is true even if the Panel assumes that Complainant holds a valid service mark in MCLANE NORTHEAST. This domain name includes the term "sucks." While often the inclusion of a generic term will not serve to distinguish a domain name from a trademark, in the case of the term "sucks," the addition of the generic term does reduce the likelihood of confusion. It is unlikely that a viewer would confuse the domain name "mclanenortheastsucks.com" with the trademark mclane northeast. Instead, it should be evident to a viewer that any site reached using "mclanenortheastsucks.com" is not sponsored or endorsed by the trademark owner.

 

In the same sense, the United States District Court for the Eastern District of Virginia, Alexandria Division, in the case between Lucent Techs., Inc. and Lucentsucks.com[4], stated the following:

 

The likelihood of confusion is a key element when determining whether trademark infringement or dilution has occurred. Petro Stopping Centers, L.P. v. James River Petroleum, Inc., 130 F.3d 88, 91 (4th Cir. 1997) (plaintiff must show that it has a valid trademark and that the defendant's reproduction, counterfeit, copy, or colorable limitation of it creates a likelihood of confusion). The Fourth Circuit has acknowledged that effective parody "diminishes any risk of consumer confusion," and can therefore not give rise to a cause of action under the Trademark Act. Anheuser-Busch, Inc. v. L&L Wings, Inc., 962 F.2d 316, 321 (4th Cir. 1992). Defendant argues persuasively that the average consumer would not confuse lucentsucks.com with a web site sponsored by plaintiff.

 

It is the Panel’s opinion that in the present controversy the inclusion of the word “mafia” in the domain name at issue adds enough distinctiveness to the domain name that diminishes, if not eliminates, the risk of confusion among the users. As stated by the Panel in the case of Lockheed Martin Corp. v. Parisi[5]: “[b]oth common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word "sucks" or other language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark.”  Therefore, although the domain name includes the Complainant’s mark in its entirety, it is not confusingly similar to the Complainant’s mark as an average user would never be led to the belief that Respondent’s domain name has an affiliation with the American National Red Cross.

 

When the domain name is studied as a whole, the lack of similarity is even greater. According to the criteria used when comparing two signs, they must be analyzed in its entirety and not by separating their elements. The Panel finds that the domain name <RedCrossMafia.com> is distinctive enough when compared with the mark “Red Cross” and the consuming public will not be lead to the belief that there is any affiliation or connection between Complainant and Respondent if both signs coexist.

 

Also, the notoriety of Complainant’s trademarks, which has been raised in the Complaint and its additional submission, acts against the Complainant’s argumentation of likelihood of confusion between the domain name and its marks. Due to the notoriety and good will of the “Red Cross” mark in connection with humanitarian services, the Internet users will not be diverted by the existence of the domain name at issue and will not believe that there is any connection or affiliation between it and the Complainant.

 

Due to the above, the Panel finds that the mark “Red Cross” and the domain name <RedCrossMafia.com> are neither identical nor confusingly similar and Complainant has not met the requirement of paragraph 4(a)(i) of the UDRP.

 

Rights or Legitimate Interests

 

Paragraph 4 (c) of the UDRP, determined that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall demonstrate the Respondent’s rights or legitimate interests to the domain name:

 

(i)         Before any notice to Respondent of the dispute, it has used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)       Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii)     Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant has contended that Respondent lacks of rights or legitimate interests in the domain name at issue and that it registered the domain name for the purpose of tarnishing the goodwill and prestige of Complainant. Respondent on the contrary has asserted that he has rights and legitimate interests over the domain name, because he plans to use it as a criticism site in use of his right to free speech.

 

As set forth above, the Panel finds that the parties involved in the present controversy are both United States citizens, and consequently the applicable law is the one of the United States of America. Complainant has proved that its “Red Cross” mark is protected under statute by 18 U.S.C. § 706, as follows:

 

“Whoever wears or displays the sign of the Red Cross or any insignia colored in imitation thereof for the fraudulent purpose of inducing the belief that he is a member of or an agent for the American National Red Cross; or

 

Whoever, whether a corporation, association or person, other than the American National Red Cross and its duly authorized employees and agents and the sanitary and hospital authorities of the armed forces of the United States, uses the emblem of the Greek red cross on a white ground, or any sign or insignia made or colored in imitation thereof or the words “Red Cross” or “Geneva Red Cross” or any combination of these words -

 

Shall be fined under this title or imprisoned not more than six months or both.

 

This section shall not make unlawful the use of any such emblem, sign, insignia or words which was lawful on the date of enactment of this title.

 

Likewise, 18 U.S.C. § 917 provides the following:

 

Whoever, within the United States, falsely or fraudulently holds himself out as or represents or pretends himself to be a member of or an agent for the American Red Cross for the purpose of soliciting, collecting, or receiving money or material, shall be fined under this title or imprisoned not more than one year or both.

 

Complainant asserts that Respondent’s use of the “Red Cross” mark is in violation of the statute, since it is unauthorized by Complainant. Notwithstanding, the Panel wishes to make a deeper interpretation of the cited texts. It is clear for the Panel that the purpose of the statute was to prevent the use of the Complainant’s marks and emblems by unauthorized persons, corporations or associations, when they were trying to create the false impression in the public that they were agents or employees of  Complainant. In other words, the statute’s objective is to prevent the unlawful use of Complainant’s marks and emblems when such use could cause confusion among the public with the humanitarian activities developed by the Complainant. This could happen, for example, when an unauthorized person uses the “Red Cross” mark to request donations making the false representation that he is an agent for Complainant. On the contrary, the use of Complainant’s marks for legitimate purposes, although not authorized by Complainant, can not be penalized under the statute, as it would contradict its spirit.

 

The Panel notes that all acts, including federal ones, are under the authority of the Constitution of the United States of America. The First Amendment of the Constitution states the following:

 

“Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the government for a redress of grievances.”

 

This amendment established the right to free speech, used by the Respondent to justify the registration of the domain name <RedCrossMafia.com>. According to Respondent, the domain name will be used as a criticism site where Respondent will post information regarding the activities of the Complainant that he considers illegal or corrupt. Respondent contends that he sent a letter to Complainant serving it with his intentions of developing a website to criticize the American Red Cross. Notwithstanding, Complainant asserts that it never received the letter. Another evidence of Respondent’s purposes through the domain name at issue is that Respondent is currently developing such criticism against Complainant and other entities, through his website <RecallPetition.com>. The Panel visited the mentioned website on August 1, 2002, and could evidence that Respondent is indeed exercising his right to free speech through it. Respondent is also selling bumper stickers at USD$1.oo each bearing expressions such as “ONGsucks.com” and “TurnpikesSuck.com”. Likewise, Respondent is soliciting donations at the website http://www.recallpetition.com/page776238.htm, with the following text:

 

If you can afford to contribute, please consider becoming a MAFIABUSTER! Make a donation of $50.00 or more and get a really cool MAFIABUSTERS "HITMAN" T SHIRT, BALL CAP AND BUMPER STICKER. NOTE: T shirts and ball caps are all black with white letters. Please specify size and quantity when placing your order.

 

NOTICE: We do not accept nor do we endorse the use of credit cards. Please send a check or money order to:

 

The Take America Back Foundation
P.O. Box 702165
Tulsa, Oklahoma 74132
Phone 918-298-2677
Fax 918-298-0806

 

It is clear for the Panel that such sales do not interfere with Respondent’s exercise of free speech. The items offered to the users are intended to promote the Respondent’s criticism activities. On the other hand, the request for donations can not be understood as connected in any way to the Complainant’s humanitarian activities. Such request for donations is fair and the users and donors are perfectly informed about the purpose of the money. A prudent visitor to the website will never be confused about the nature of the site and will not be led to believe that he is visiting a website of the “American Red Cross” or giving donations to support the Complainant’s humanitarian services.

 

The activity performed by Respondent through the website <RecallPetition.com> is an evidence of his history as an activist in freedom of speech. This right can be exercised through such website or through any other, and the use of the domain name <RedCrossMafia.com> to criticize the Complainant is lawful. Prohibiting Respondent from using such domain name would constitute an illegitimate limitation of his right to free speech.

 

Consequently, the Panel finds that Respondent has shown that he plans to use the domain name in connection with a legitimate noncommercial or fair use of the domain name, consistent of criticizing the Complainant in use of its constitutional right to free of speech.

 

A previous Panel has found legitimate interests in a similar case. In the UDRP case between Bridgestone Firestone, Inc. v. Myers[6], the Panel stated:

 

The question presented in this case is whether fair use and free speech are defenses to a claim for transfer of a domain name under the Policy. Under Paragraph 4 (c)(iii) of the Policy, noncommercial fair use is expressly made a defense, as noted above. Although free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name, the list is not exclusive, and the Panel concludes that the exercise of free speech for criticism and commentary also demonstrates a right or legitimate interest in the domain name under Paragraph 4 (c)(iii). The internet is above all a framework for global communication, and the right to free speech should be one of the foundations of Internet law.

 

The Panel agrees with Respondent that the Internet should be given the same consideration as any other mean of communication. The criticism of Complainant’s activities has been done in the past in television, magazines and newspapers, as evidenced in the video attached by Respondent to its Response, and it should also be allowed in the Internet. Although as Complainant contends, this criticism could be developed through any other of Respondent’s websites, the Panel finds that there is nothing that can prevent him from doing so from a website under the domain name <RedCrossMafia.com>, when Complainant’s marks are used as an exercise of  free speech.

 

The practice of using words such as “sucks” and similar language in domain names intended to be criticism websites is not uncommon and is a phenomenon known as “cybergriping”. The right to make such use of third party’s trademarks is based on the First Amendment of the United States Constitution and is considered a legitimate use. In the already cited case between McLane Company and Fred Craig[7], the Panel stated:

 

Paragraph 4(c) of the Policy sets out circumstances that demonstrate the Registrant’s rights or legitimate interests in the name. One such circumstance is the legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleading divert consumers. Respondent is using the domain name "mclanenortheast.com" as a means of protesting against Complainant. Respondent has a grievance against Complainant and has chosen to publicize this grievance via a web site. Protest and commentary is the quintessential noncommercial fair use envisioned by the Policy. Protest and commentary are also considered typical fair use under U.S. law relating to domain names. When commenting on the "Anticybersquatting Consumer Protection Act", the House Judiciary Committee specifically referred to comment and criticism as lawful noncommercial fair use of a mark. Thus Respondent has raised a plausible claim that he has a legitimate interest in the domain name "mclanenortheast.com" and Complainant has not met its burden of proving an absence of such a legitimate interest. Complainant’s bare allegation of tarnishment does not overcome Respondent’s claim of a legitimate interest.

 

The Panel also notes that Respondent plans to publish a book that could be named “The Red Cross Mafia”, and one publishing company has shown interest in it. Respondent also plans to sell bumper stickers, T-shirts and caps bearing such expression. This would constitute a commercial use of the domain name, since Respondent will obtain economical benefits from the sale of the book and other articles. The commercial use of a domain name for economical gain is not by itself forbidden by the Policy as Complainant tries to represent. On the contrary, such use is unlawful only when it is not related to a bona fide offering of goods or services. But a bona fide offering of goods, as the one intended by Respondent through the domain name, which is intended to advertise his inconformity with Complainant’s services, is considered by the Policy as an evidence of rights and legitimate interests. The Panel considers that such commercial use does not interfere with a finding of rights and legitimate interests in the head of Respondent. On the contrary, such commercial use, being a fair and lawful use, gives the Respondent further justification to register and use the domain name at issue.

 

Additionally, Complainant contends that Respondent’s intention is to tarnish its “Red Cross” mark. As stated above, the Panel finds that the use of the Complainant’s marks as an exercise of free speech is lawful and the criticism of third party’s products or services is free under the United States Constitution. A special statutory protection and the trademark rights held by Complainant can not prevail over the constitutional right of the people to freely express their opinion.

 

To this end, the precedents mentioned by Complainant of previous cases related to the “Red Cross” mark[8] are not applicable, since in those cases the Respondents were acting in bad faith and their registrations of domain names including the Complainant’s marks could not be justified under the provisions of the Policy. However, this is not the present case.

 

Consequently, the Panel finds that Respondent has demonstrated its rights and legitimate interests in the domain name under controversy and that the Complainant has failed to meet the requirements of paragraph 4 (c) of the UDRP.

 

Registration and Use in Bad Faith

 

The finding of existence of Respondent’s rights and legitimate interests in the domain name base on the freedom of speech, could virtually preclude any possibility of registration and use of the domain name in bad faith. In this sense, the House Judiciary Committee, when commenting the 15 U.S.C. § 1125(B)(i)(IV), explained that: “[t]he fact that a person may use a mark in a site in such a lawful manner may be an appropriate indication that the person's registration or use of the domain name lacked the required element of bad-faith.”[9]

 

Notwithstanding, the Panel considers appropriate to make the following comments with respect to the Complainant’s statements of bad faith in the part of Respondent.

 

According to paragraph 4 (b) of the UDRP, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(i)         Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii)       Circumstances indicating that Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii)     Circumstances indicated that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)     Circumstances indicating that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.

 

Complainant has contended that Respondent registered the domain name at issue in bad faith, for the purpose of tarnishing the goodwill and prestige of Complainant and to create a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of his website. In this respect, the Panel finds that the contention that the domain name can create confusion among the users of the Internet can not be accepted. It is clear for the Panel that a reasonably prudent Internet user will not visit the website at the domain name <RedCrossMafia.com> under the belief that such is one of the official websites of the Complainant. A reasonably prudent user of the Internet will access the website <RedCrossMafia.com> at least under suspicion that he will enter a site that criticizes the Complainant’s activities. Therefore, the Panel does not believe that the existence of the domain name at issue has the likelihood of confusing users as to the source, sponsorship, affiliation or endorsement of the website.

 

The above also leads to conclude that Respondent’s purpose could not have been to prevent the owner of the “Red Cross” trademark from reflecting the mark in a correspondent domain name. Complainant already develops its activities through a number of websites, and the domain name registered by Respondent will not interfere in the presence of Complainant in the Internet. It is obvious for the Panel that Complainant will never use the domain name at issue even if the name were to be transferred to it, as sought in the Complaint. The Panel assumes that the transfer was requested with the intention of keeping the domain name out of the commerce and prevent it from any future use by third parties.

 

According to Complainant, the domain name trades upon the reputation and goodwill of Complainant’s marks. The domain name at issue is particularly damaging Complainant’s goodwill by using the word “mafia” in connection with the “Red Cross” mark. According to Complainant, the word “mafia” refers to a criminal organization, and its use beside Complainant’s mark dilutes and harms the reputation of Complainant and its humanitarian services. In this regard, the Panel notes that indeed the term “mafia” has criminal connotations in its original meaning. However, the word has turned out to be of common use by the public when referring to any kind of corruption inside a corporation, association or entity. It is not the job of this Panel to determine whether the use of such word in connection with Complainant’s mark has criminal connotations. The Panel will then limit to assert that for the purposes of deciding this controversy, the domain name <RedCrossMafia.com> by itself does not tarnish the reputation of Complainant due to the common use of the word mafia without necessary connection with criminal actions. Likewise, as set forth above by the Panel, the use of the word “mafia” together with the “Red Cross” mark, disregard of any other consideration, gives the domain name enough distinctiveness to prevent any risk of confusion among the users with Complainant’s official websites, products or services due to its particular meaning in the public’s mind. However, in case that through the website at the domain name subject to this controversy, the Respondent makes accusations or posts information that Complainant considers in violation of criminal laws, it will then have to bring the case before a Criminal Court which will make a decision on that point. It is then the Panel’s opinion that the domain name <RedCrossMafia.com> can not be considered tarnishing or damaging by itself.

 

Regarding the allegation of passive domain name holding, the Panel finds that indeed, Respondent has not created a website under the domain name and has not used it in any way since its registration in October 31, 2001. Although such passive holding could be used as an evidence of bad faith, the Panel considers that the particularities of the present case leads to a different conclusion. The passive holding of domain names is a conduct developed with some purpose. Commonly, it is a conduct developed by domain name registrants with the main purpose of  preventing the rightful owner of a trademark from reflecting its mark in the Internet. In any case, the passive holding as an evidence of bad faith must be causing damage to the owner of the mark instead of benefiting it. In the present controversy, the Panel finds that the lack of use of the domain name is an evidence that the sole presence of the domain name does not damage the image of Complainant. What could be damaging is the web site posted at the domain name but not the domain name by itself even more when it is not in operation. Respondent could have its reasons not to have developed any activity through the domain name that are not known to the Panel. However, the period of time in which a domain name must be operating through a website can not be determined by the Panel and depends on a number of circumstances. The fact is that in this case, the passive holding of the domain name has acted in Complainant’s favor and does not evidence bad faith in the Respondent’s side, considering that the lack of use of the domain name shows that there has not been tarnishing of Complainant’s marks, as alleged in the complaint.

 

In this regard, the Panel in the case of Casual Corner Group, Inc. v. Young[10] found that:

 

The fact that Respondent has not yet actually made any use of the domain name does not undermine the fact that Respondent has shown demonstrable preparations to use the domain name. The failure to develop a site over a lengthy period of time raises the inference that the Respondent has no bona fide intent to use the name. See Mondich and Amer. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (failure to develop a site in two years raises the inference of lack of bona fide intent to use the name). About ten months have elapsed since Respondent registered the domain name, therefore not enough time has passed to raise the inference of lack bona fide intent.

 

Respondent’s knowledge of the existence of the Complainant’s trademarks rights can not be used either in the present case as an evidence of bad faith. It is obvious that if Respondent registered a domain name with the purpose of criticizing the Complainant, it was perfectly aware of the existence of Complainant’s rights over the mark “Red Cross”. The freedom of speech is exercised against something known; it can not be exercised against something which existence is ignored. Ordinarily, critics have studied the object of their criticism deeply and the use of the mark when criticizing can not be understood as an infringement of such trademark. As already stated, the Panel considers that in the present case, Respondent did not register the domain name with the purpose of diluting or infringing Complainant’s marks. Therefore, Respondent’s awareness of Complainant’s rights over the “Red Cross” mark is not an evidence of its bad faith.

 

All the aforementioned leads the Panel to conclude that there is no evidence of bad faith in the part of Respondent, and the findings regarding the use by Respondent of the domain name <RedCrossMafia.com> can be summarized as done by the Panel in the case of Wal-Mart Stores, Inc. v. wallmartcanadasucks.com[11]:

 

Applying the Bally analysis to the instant case, I conclude that wallmartcanadasucks.com is not identical or similar to Wal-Mart's marks. They serve fundamentally different purposes. Wal-Mart's domain names serve as commercial advertisements and indications of sources of products and services. Wallmartcanadasucks.com is criticism. As in Bally, a reasonably prudent user would not mistake the wallmartcanadasucks.com site for any of Wal-Mart's official sites. As in Bally, the primary purpose of the accused site is criticism, not promotion of goods related to Wal-Mart goods. Thus the information disseminated through the sites of Respondent and Complainant are not related. As in Bally, prohibiting the Respondent from using wallmartcanadasucks.com and variants on the name would effectively isolate him from Internet users he wishes to reach in connection with his criticism of Wal-Mart. As in Bally, the Respondent cannot exercise his right to publish critical commentary about Wal-Mart without making reference to Wal-Mart. As in Bally, there is little likelihood that Wal-Mart will extend its business to operate an official anti Wal-Mart site. The Bally analysis, therefore, is strong authority for finding no likelihood of confusion.”

 

Consequently, the Panel finds that Complainant failed to meet its burden of proof with respect to the Respondent’s bad faith in the registration and use of the domain name at issue.

 

DECISION

 

For al the foregoing reasons, the Panel decides that the domain name registered by Respondent is neither identical nor confusingly similar to Complainant’s mark, Respondent has rights and legitimate interests over the domain name and has acted in good faith based in his freedom of speech rights, and therefore Complainant’s Complaint is hereby dismissed.

 

 

Fernando Triana, Esq., Panelist
Dated: August 6, 2002

 

 

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