National Arbitration Forum




Christopher T.C. Smith and American Green Cross v. Educational Video Network

Claim Number: FA0707001036640



Complainant is Christopher T.C. Smith and American Green Cross (“Complainant”), 236 Red Ryder Circle, Pagosa Springs, CO 81147.  Respondent is Educational Video Network (“Respondent”), represented by Lanny D. Ray, of Cantrell, Ray, Maltsberger & Barcus, LLP, P.O. Box 1019, Huntsville, TX 77342.



The domain name at issue is <>, 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.


James A. Carmody, Esq., as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 18, 2007.


On July 16, 2007, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with eNom, Inc. and that the 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 July 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2007 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 by e-mail.


A timely Response was received and determined to be complete on August 13, 2007.


The Complainant filed an Additional Submission in hard copy only (electronic mail submission is also required) and was thus defective.  Notwithstanding, the Panel elected to consider the Additional Submission.


On August 21, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.



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



A. Complainant


1.      Respondent’s <> domain name is confusingly similar to Complainant’s AMERICAN GREEN CROSS mark.


2.      Respondent does not have any rights or legitimate interests in the domain name at issue.


3.      Respondent registered and used the domain name at issue in bad faith.


B. Respondent


1.   Respondent registered the domain name at issue in 1998, many years before any alleged use by Complainant of the AMERICAN GREEN CROSS MARK.


2.   Respondent is using the domain name at issue in connection with a religious entity.


3.   Respondent did not register and is not using the domain name at issue in bad faith.


C. Additional Submissions


Complainant filed a defective Additional Submission which was considered by the Panel but which did not address the defenses of the Respondent.



Complainant is the owner of an application to register the mark AMERICAN GREEN CROSS with the U. S. Patent & Trademark Office, Serial number 78753027.  The application for such registration was made on November 14, 2005 with no date of first use in commerce shown on the application record provided.  In the Complaint, there is no allegation of common law use prior to November of 2005.  Apparently, Complainant uses the mark in connection with a charitable organization dedicated to environmental protection and operates a website at <> in support of these activities.  Complainant alleges that Respondent has not been given license to use Complainant’s AMERICAN GREEN CROSS mark, that Respondent warehouses many domain names that he does not legitimately use and he is using the domain name at issue in bad faith.


Respondent points out that he registered the domain name at issue in 1998, roughly seven years prior to Complainant’s application for registration of the AMERICAN GREEN CROSS mark.  Further, Respondent has used or permitted the domain name at issue to be used in connection with the activities of the Universal Ethician Church.  Finally, Respondent points out that Complainant has and uses the domain name <> and is not deprived of the right to operate a site associated with its claimed trademark.


Nowhere in the materials presented to the Panel is there any evidence that the Complainant used the AMERICAN GREEN CROSS mark prior to Respondent’s registration of the domain name at issue.



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.”


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


Complainant has merely submitted evidence of a pending trademark application with the USPTO and has failed to show evidence of secondary meaning through the submission of advertising costs, sales figures or consumer recognition and has thus failed to establish common law rights in the AMERICAN GREEN CROSS mark under Policy ¶ 4(a)(i).  See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003)   (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).


Respondent’s <> domain name was registered on December 15, 1998.  Complainant claims rights in the AMERICAN GREEN CROSS mark (apparently) beginning in November 2005.  As a result of Respondent’s rights predating   Complainant’s asserted use, Complainant has not established rights in AMERICAN GREEN CROSS mark under Policy ¶ 4(a)(i).  See Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied); see also Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant's domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.”).


Since Complainant has failed to satisfy the first element of the Policy, it is not necessary to consider the remaining two elements.



Having failed to satisfy all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.




James A. Carmody, Esq., Panelist
Dated: September 4, 2007







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