The American National Red Cross v. Juan
Carlos Linardi
Claim
Number: FA0505000472006
Complainant is The American National Red Cross (“Complainant”),
represented by James L. Bikoff, of Silverberg, Goldman and Bikoff, LLP, 1101 30th St, N.W., Suite 120, Washington, DC 20007. Respondent is Juan Carlos Linardi (“Respondent”), Rivadavia 6127 4 “r,” Buenos
Aires, 1414, AR.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwredcross.org>, registered with iHoldings.com,
Inc. d/b/a Dotregistrar.com.
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 electronically on May
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 5, 2005.
On
May 6, 2005, iHoldings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the National Arbitration Forum that the domain name <wwwredcross.org>
is registered with iHoldings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. iHoldings.com, Inc. d/b/a Dotregistrar.com has verified that
Respondent is bound by the iHoldings.com, Inc. d/b/a Dotregistrar.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
May 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 2005 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@wwwredcross.org
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 2, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <wwwredcross.org>
domain name is confusingly similar to Complainant’s RED CROSS mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwredcross.org> domain name.
3. Respondent registered and used the <wwwredcross.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
has used the RED CROSS mark in the United States since 1881. The RED CROSS mark is protected under
Statute U.S.C. § 706 and § 917. The
United States Congress chartered the American Red Cross in 1905 to “carry on a
system of national and international relief in time of peace and apply the same
in mitigating the sufferings caused by pestilence, famine, fire, floods and
other great national calamities, and to devise and carry on measures for
preventing the same.” Complainant works
with National Societies in 175 countries and the International Federation of
Red Cross and Red Crescent Societies to provide humanitarian assistance
worldwide. Complainant is also the steward
of the United States’ blood supply. It
supplies some 3,000 hospitals with about half of the blood used in the United
States.
Complainant
uses the good will associated with its name in fundraising efforts. Complainant raises millions of dollars annually
to assist disaster victims and their families, support emergency workers, and
provide, blood, shelter, food and mental health services to those needing
emergency assistance. Complainant
maintains a number of websites including <americanredcross.com>,
<americanredcross.net>, <americanredcross.org>,
<redcross.info>, and <redcross.org>.
Complainant
holds several trademark registrations with the United States Patent and
Trademark Office for the RED CROSS mark (e.g., Reg. No. 2,740,132 issued
September 11, 2002).
Respondent
registered the <wwwredcross.org> domain name on February 16,
2003. Respondent is using the disputed
domain name to redirect Internet users to a website featuring links to United
States-based charitable organizations as well as other third-party commercial
websites (i.e., <eBay.com> and <legalzoom.com>).
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
asserted in this proceeding that it has rights in the RED CROSS mark through
registration with the United States Patent and Trademark Office. The Panel finds that registration of
Complainant’s mark is prima facie evidence that Complainant has rights
in the mark pursuant to Policy ¶ 4(a)(i).
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The <wwwredcross.org>
domain name registered by Respondent is confusingly similar to Complainant’s
RED CROSS mark because the domain name incorporates Complainant’s mark in its
entirety, adds the letters “www” to the mark and removes the space between the
words “red” and “cross” in the mark. The
addition of the letters “www” and the removal of the space between the words in
the mark are insufficient to negate the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Porto Chico Stores, Inc. v. Otavio
Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of
identicality or confusing similarity is to be resolved “by comparing the
trademark and the disputed domain name, without regard to the circumstances
under which either may be used”); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that the respondent’s domain name <wwwbankofamerica.com>
is confusingly similar to the complainant’s registered trademark BANK OF
AMERICA because it “takes advantage of a typing error (eliminating the period
between the www and the domain name) that users commonly make when searching on
the Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683
(Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established
because the prefix "www" does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS
mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see
also Wembley Nat’l Stadium Ltd. v.
Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name
<wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Furthermore, the
addition of the generic top-level domain “.org” to Complainant’s registered RED
CROSS mark does not negate the confusingly similar aspects of Respondent’s
domain name pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar); see
also Microsoft Corp. v. Mehrotra,
D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name
<microsoft.org> was identical to the complainant’s MICROSOFT mark); see
also Koninklijke Philips Elecs. NV v.
Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name
<philips.org> was identical to the complainant’s PHILIPS mark); see
also BMW AG v. Loophole,
D2000-1156 (WIPO Oct. 26, 2000) (finding that there was “no doubt” that the
domain name <bmw.org> was identical to the complainant’s well-known and
registered BMW trademarks).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <wwwredcross.org>
domain name, containing Complainant’s RED CROSS mark in its entirety. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to show
that it does have rights to or legitimate interests in the domain name. Thus, due to Respondent’s failure to respond
to the Complaint, the Panel assumes that Respondent does not have rights or
legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat.
Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that
the respondent has no rights or legitimate interests with respect to the domain
name, it is incumbent on the 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 the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names).
The Panel finds
that Complainant has made the prima facie showing. Therefore, since Respondent has not
responded to the Complaint, the Panel is entitled to accept all reasonable
allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that, in the absence of a
response, the panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do);
see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure
to respond allows all reasonable inferences of fact in the allegations of the
complaint to be deemed true).
Nothing in the
record establishes that Respondent is commonly known by the <wwwredcross.org>
domain name. Respondent is not licensed
or authorized to register or use a domain name that incorporates Complainant’s
mark. Therefore, the Panel concludes
that Respondent does not have rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. 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
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) the respondent is not a
licensee of the complainant; (2) the complainant’s prior rights in the domain
name precede the respondent’s registration; (3) the respondent is not commonly
known by the domain name in question).
Additionally,
the <wwwredcross.org> domain name is confusingly similar to
Complainant’s RED CROSS mark and is used to redirect Internet users to a
website advertising links for a wide variety of third-party services and
products. The Panel finds that
Respondent’s use of the domain name that is confusingly similar to
Complainant’s mark to divert Internet users to a website that links to
third-party websites and for which Complainant presumably receives
click-through fees is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb.
Forum March 17, 2003) (finding that the respondent’s diversionary use of the
complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
disputed domain names); see also Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the
respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied
Respondent
intentionally registered a domain name that incorporates Complainant’s RED
CROSS mark for Respondent’s commercial gain.
Respondent registered and used the <wwwredcross.org> domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
intentionally attempted to attract potential Internet users searching for
Complainant to Respondent’s website by taking advantage of Internet users searching
under Complainant’s RED CROSS mark and diverting them to Respondent’s
commercial website. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with the complainant’s mark and offering the same services as the
complainant via his website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where the respondent attracted users to a website
sponsored by the respondent and created confusion with the complainant’s mark
as to the source, sponsorship, or affiliation of that website).
Moreover,
Respondent registered the <wwwredcross.org> domain name with
actual or constructive knowledge of Complainant’s rights in the RED CROSS mark
due to Complainant’s registration of the mark with the United States Patent and
Trademark Office and Respondent’s inclusion of the mark in its entirety, with only
minor differences. Registration of a
domain name that is confusingly similar to a mark, despite actual or
constructive knowledge of another’s rights in the mark, is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). 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
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwredcross.org> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
June 13, 2005
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