The American National Red Cross v. Michael Rogers
Claim Number: FA0202000104581
Complainant is The American National Red Cross, Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverberg, Goldman & Bikoff, LLP. Respondent is Michael Rogers, Boynton Beach, FL (“Respondent”).
The domain name at issue is <animalredcross.com>, registered with Network Solutions, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 8, 2002; the Forum received a hard copy of the Complaint on February 11, 2002.
On February 13, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <animalredcross.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 February 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 6, 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 email@example.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 March 14, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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.
1. The <animalredcross.com> domain name is confusingly similar to Complainant’s distinctive RED CROSS trademark. The disputed domain name incorporates Complainant’s famous mark in its entirety and is therefore confusingly similar to RED CROSS.
2. Respondent has used the disputed domain name to solicit funds. By using a domain name that incorporates Complainant’s mark in its entirety, a mark that is synonymous for soliciting funds for donation, Respondent is not making a bona fide offering of goods or services nor is making a legitimate noncommercial or fair use of <animalredcross.com>. Further, due to federal statutory protections and the fame attained by RED CROSS, Respondent cannot possibly claim that he is commonly known as <animalredcross.com>.
3. Because of the fame attained by Complainant’s mark, Respondent knew or should have known about the mark prior to registering <animalredcross.com>, therefore, mere registration of the disputed domain name is evidence that Respondent has acted in opportunistic bad faith. The disputed domain name also creates a likelihood of confusion with the RED CROSS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s offer to sell the disputed domain name for $10,000 is evidence that Respondent registered <animalredcross.com> in bad faith. Therefore, Respondent has registered and used the disputed domain name in bad faith.
No Response was received.
Complainant’s RED CROSS mark is one of the most famous marks in the United States. Since 1881, Complainant has used the mark in connection with providing those in need with emergency aid, first aid training and humanitarian assistance. In 1948, Congress enacted a federal criminal statute, 18 U.S.C. §706 and §917, to protect the famous RED CROSS marks and the RED CROSS words and emblem. Section 706 grants Complainant exclusive use of the distinctive RED CROSS words and symbols, except for users of a RED CROSS logo or the words RED CROSS before 1905. Complainant’s RED CROSS mark is also used in connection with assisting pet owners, information on performing first aid on pets are offered at Complainant’s <redcross.org> website. Complainant owns numerous RED CROSS marks filed with the United States Patent and Trademark office.
Respondent registered <animalredcross.com> on June 5, 2001. On July 17, 2001, Respondent sent a letter to the Colgate-Palmolive Corporation, in which he asked for “a check for as much as you can make payable to the Animal Red Cross,” on “Animal Red Cross, A Not For Profit Agency” letterhead, which also included a cross similar to Complainant’s cross. Colgate-Palmolive has been a major contributor to Complainant in the past and contributed $1 million to Complainant in 2001.
Complainant had sent three cease and desist requests to Respondent. The last request, sent via fax, was the only request in which Respondent answered. In a telephone conversation, Respondent disputed that he registered <animalredcross.com> in bad faith. However, two weeks later, January 18, 2002, Respondent offered to transfer the disputed domain name to Complainant for $10,000.
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 the 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 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; and
(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 established its rights in RED CROSS. Complainant has: federal statutory protection for its mark, registered its mark with the USPTO, and used the famous RED CROSS mark for over 120 years.
The disputed domain name <animalredcross.com> incorporates Complainant’s famous RED CROSS mark in its entirety and adds the generic term “animal.” Because RED CROSS is the dominant feature of the disputed domain name, there is a confusing similarity between <animalredcross.com> and RED CROSS. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy 4(a)(i) is satisfied); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to file a Response in this matter. Therefore, the Panel may presume that Respondent has no rights or legitimate interests in <animalredcross.com>. 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).
Respondent cannot prove that he is commonly known as <animalredcross.com> since the dominant portion of the disputed domain name is RED CROSS and because of 18 U.S.C. §706 and §917 provide that the only entity who can use that mark is Complainant. Therefore, Respondent cannot possibly satisfy Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
There is evidence presented that Respondent has attempted to make the public believe that there is a relationship between him and Complainant. The letterhead Respondent sent to Colgate-Palmolive contained “Animal Red Cross, A Not For Profit Agency” and a cross similar to Complainant’s cross. Although there is an appearance that this is a noncommercial use, there is no evidence presented that the solicitation was actually intended for a noncommercial use. The only conclusion the Panel can arrive at is that Respondent intended to infer that there is a relationship between the disputed domain name <animalredcross.com> and Complainant. Therefore, Respondent fails to satisfy Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with the Complainant's mark CATERPILLAR)
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered a domain name that incorporates Complainant’s famous RED CROSS mark and then Respondent used the disputed domain name and attempting to solicit funds from one of Complainant’s major contributors. This action by Respondent is evidence that he used <animalredcross.com> in bad faith as outlined by Policy ¶ 4(b)(iv). See Nat’l Rifle Ass'n. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names <friendsofnra.com>, <friendsofnra.net>, and <friendsofnra.org> with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks).
Furthermore, pursuant to 18 U.S.C. §706 and §917 no one in the United States has a right to use RED CROSS other than Complainant. Registration and subsequent use by Respondent to solicit funds to an apparent fund-raising organization is evidence of oportunistic bad faith. See Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous Chanel mark suggests opportunistic bad faith); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).
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 the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <animalredcross.com> be transferred from Respondent to Complainant.
Judge Harold Kalina (Ret.)
Dated: March 20, 2002
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