The American National Red Cross v. Domains
a/k/a Best Domains a/k/a John Barry
Claim Number: FA0301000143684
PARTIES
Complainant is The American National Red Cross, Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverberg, Goldman & Bikoff, LLP. Respondent is Domains a/k/a Best Domains a/k/a John Barry, Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redcrosspharmacy.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 28, 2003; the Forum received a hard copy of the Complaint on January 29, 2003.
On January 29, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <redcrosspharmacy.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 19, 2003 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@redcrosspharmacy.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 February 27, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <redcrosspharmacy.com> domain name is confusingly similar to Complainant’s RED CROSS mark.
2. Respondent does not have any rights or legitimate interests in the <redcrosspharmacy.com> domain name.
3. Respondent registered and used the <redcrosspharmacy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The American National
Red Cross, holds a federal trademark registration for the AMERICAN RED CROSS
mark (U.S. Reg. No. 1,697,594).
Furthermore, Complainant’s rights in the RED CROSS mark are protected
under 18 U.S.C. §706 and §917, as well as by Article 6ter of the Paris
Convention for the Protection of Industrial Property, codified in the United
States as 15 U.S.C. §1126.
In addition to these statutory
rights, Complainant has established common law rights in the RED CROSS mark
through widespread and continuous use of the mark since as early as 1881. Evidence of these rights is demonstrated by
the RED CROSS emblem’s standing as the second-most recognized non-commercial
mark in the world.
Complainant works with National
Societies in 175 countries and the International Federation of Red Cross and
Red Crescent Societies to provide humanitarian assistance worldwide. Annually, Complainant responds to more than
67,000 disasters, with the help of over 83,000 trained volunteers. Pharmaceutical and drug stores are important
to Complainant’s donation efforts; each year, Complainant receives donations
from prominent pharmaceutical companies.
Complainant also works with the leading biotechnology and pharmaceutical
companies to develop its intellectual property into an array of medical
products.
Respondent, Domains a/k/a Best Domains a/k/a John Barry, registered the <redcrosspharmacy.com> domain name on August 9, 2002, and is not licensed or authorized to use Complainant’s mark for any purpose. Respondent has been brought before both previous administrative panels and U.S. courts for cybersquatting, and is notorious for such activities.
Respondent initially used the disputed domain name to route Internet users to an online pharmacy at <e-scripts-md.com>. After Respondent was sent a cease-and-desist letter dated October 16, 2002, the domain name was used to redirect Internet users to an anti-abortion website at <abortionismurder.org>, which hosts graphic pictures of aborted fetuses.
A second cease-and-desist letter was sent to Respondent on December 24, 2002, reiterating Complainant’s demand that the infringing domain name be transferred. While Respondent failed to respond to this letter, Complainant did receive a message on December 30, 2002, informing Complainant that it could purchase the disputed domain name registration for $549 at the <jimfox.com> domain name. This website lists the same basic WHOIS contact information as does the WHIOS contact information for the disputed domain name, indicating that both are owned by Respondent. Additional attempts by Complainant to secure transfer of the disputed domain name resulted in no further contact with Respondent other than repetition of the offer to sell the domain name registration for $549.
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 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the RED CROSS mark through registration with the United States Patent and Trademark Office, as well as through the protections granted to the mark through several U.S. statutes.
Respondent’s <redcrosspharmacy.com>
domain name is confusingly similar to
Complainant’s RED CROSS mark. The
descriptive word “pharmacy” relates to a type of business that is closely
associated with many of Complainant’s services, and only serves to enhance any
confusing similarity with Complainant’s mark. See Space Imaging LLC v. Brownwell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where
Respondent’s domain name combines Complainant’s mark with a generic term that
has an obvious relationship to Complainant’s business); see also Westfield Corp., Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the WESTFIELD mark was the dominant
element).
Accordingly, the Panel finds that the <redcrosspharmacy.com> domain name is confusingly similar to Complainant’s RED CROSS mark under Policy ¶ 4(a)(i).
Absent a response, Complainant can
meet its burden of showing that Respondent has no rights or legitimate
interests in the disputed domain name by establishing that Respondent’s
behavior does not equate to any of the three enumerated examples demonstrating
rights or legitimate interests listed in Policy ¶¶ 4(c)(i)-(iii). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name).
Respondent uses the <redcrosspharmacy.com> domain name to divert Internet users
to websites that are not associated with or authorized by Complainant, such as
an online pharmacy and an anti-abortion website. Appropriating Complainant’s mark
for these purposes cannot equate to a bona fide offering of goods and services,
and does not evidence legitimate noncommercial or fair use of the domain
name. Thus, Policy ¶ 4(c)(i) and (iii)
do not apply in this dispute. See
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); see also Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole
purpose in selecting the domain names was to cause confusion with Complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use)
Respondent’s lack of rights and legitimate interests in the domain name
is further evidenced by Respondent’s attempt to sell its domain name
registration to Complainant, the rightful holder of the RED CROSS mark. See Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that,
by linking the confusingly similar domain name to an “Abortion is Murder”
website and subsequently asking for compensation beyond out-of-pocket costs to
transfer the domain name, Respondent has not demonstrated a right or legitimate
interest in the disputed domain name).
Given the nature of Complainant’s statutorily protected mark and Respondent’s notoriety as a cybersquatter, the Panel finds that Respondent is not “commonly known by” the name REDCROSSPHARMACY or <redcrosspharmacy.com>, thus making Policy ¶ 4(c)(ii) inapplicable to this dispute. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); Int'l Olympic Comm. & United States Olympic Comm. v. Russell Ritchey d/b/a EZ Fixin's, FA 128817 (Nat. Arb. Forum Jan. 20, 2003) (finding that the Olympic Amateur Sports Act, granting Complainant exclusive rights in the Olympic symbol and the word Olympic, preempts any chance for Respondent to claim rights or legitimate interests in an infringing domain name).
The Panel also chooses to view Respondent’s failure to respond in this proceeding as evidence that it lacks rights and legitimate interests in the 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); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of Complainant’s mark in connection with Respondent’s website is misleading and Respondent is intentionally diverting business from Complainant).
For these reasons, the Panel finds that Respondent does not have rights or legitimate interests in the <redcrosspharmacy.com> domain name under Policy ¶ 4(a)(ii).
Respondent registered and used the <redcrosspharmacy.com> domain name in bad faith. In coming to this conclusion, the Panel need look no further than 18 U.S.C. §706 and §917, a federal statute protecting Complainant’s rights in the RED CROSS mark. As both parties are residents of the United States, this statute alone permits the Panel to conclude that the domain name was registered and used in bad faith. See Int'l Olympic Comm. & United States Olympic Comm. v. Russell Ritchey d/b/a EZ Fixin's, FA 128817 (Nat. Arb. Forum Jan. 20, 2003) (finding that Respondent's registration was done in violation of a federal statute, and as such was held to be ipso facto bad faith); see also 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’”).
In addition, Respondent attempted to sell its infringing domain name registration to Complainant. Given the worldwide fame and statutory protections granted to Complainant’s mark, along with Respondent’s willingness to sell its registration, the Panel infers that Respondent’s primary objective in securing the <redcrosspharmacy.com> domain name was the ultimate sale of that registration to Complainant. This evidences bad faith use and registration pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).
The Panel thus finds that Respondent registered and used the <redcrosspharmacy.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <redcrosspharmacy.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 4, 2003
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