COMBINED
RESTRICTIONS DISPUTE RESOLUTION POLICY
DECISION
The American
National Red Cross v. TreeTops
Claim Number: FA0303000152121
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”).
The
domain name at issue is <red-cross.biz>, registered with Melbourne
It d/b/a Internet Names World Wide.
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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.
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.
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.
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.
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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