The American National Red Cross v. WMS Enterprises Co. aka Wilfred Sherman
Claim Number: FA0203000105935
Complainant is The American National Red Cross, Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverberg Goldman & Bikoff, LLP. Respondent is WMS Enterprises Co., Chelsea, MA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redcrosstravel.com>, registered with Register.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.
James Alan Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 19, 2002; the Forum received a hard copy of the Complaint on March 20, 2002.
On March 19, 2002, Register.com confirmed by e-mail to the Forum that the domain name <redcrosstravel.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 March 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 10, 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 April 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Alan Crary 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.
The <redcrosstravel.com> domain name is identical to Complainant's RED CROSS mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
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>.
Respondent registered the disputed domain name on February 6, 2001. Respondent told Complainant that it intended to use the domain for a travel website tailored to Complainant’s needs. Respondent said that it would not begin to operate the website without Complainant’s express approval. Complainant asserted that it would not consider any offers from Respondent until the domain name was transferred. Since that time, Complainant has not heard anything from Respondent. Communications with the Respondent indicate that Respondent had notice of Complainant’s rights when it registered <redcrosstravel.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 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 that it has rights in the RED CROSS mark due to continuous use and the marks special protected status under the laws of the United States.
Respondent’s <redcrosstravel.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entirety of Complainant’s mark and merely adds the generic term “travel” to the end. The addition of a generic term to another’s well-known mark is not enough to create a mark capable of overcoming a claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed 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).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
It can be inferred that Respondent registered a confusingly similar domain name in order to cause Internet user confusion and attract people interested in Complainant to Respondent’s website. This type of use is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also 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).
Respondent, known to this Panel as WMS Enterprises Co., has not come forward to offer any evidence that it is commonly known by <redcrosstravel.com> pursuant to Policy ¶ 4(c)(ii) and therefore has no rights or legitimate interests in the disputed domain name. 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 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).
Furthermore, any use of the disputed domain name would create a likelihood of confusion as to the source, sponsorship and affiliation of <redcrosstravel.com> and therefore is not a legitimate, noncommercial or fair use pursuant to 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 Complainant's mark CATERPILLAR).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on the fame of Complainant’s mark and Respondent’s communications with Complainant, it can be inferred that Respondent was on notice as to Complainant’s rights in the RED CROSS mark when it registered the disputed domain name. Therefore, Respondent’s registration of <redcrosstravel.com>, despite this notice, is evidence of bad faith. 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 Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).
The <redcrosstravel.com> domain name is confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the confusingly similar <redcrosstravel.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
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 shall be hereby granted.
Accordingly, it is Ordered that the domain name <redcrosstravel.com> be transferred from Respondent to Complainant.
James Alan Crary, Panelist
Dated: May 6, 2002
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