The American National Red Cross v. Beachfront Studio, Inc.
Claim Number: FA0205000114275
Complainant is The American National Red Cross, Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverberg, Goldman & Bikoff, LLP. Respondent is Beachfront Studio, Inc., Port Hueneme, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanredcrossmusic.com>, registered with Tucows, 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 (the “Forum”) electronically on May 15, 2002; the Forum received a hard copy of the Complaint on May 16, 2002 .
On May 16, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <americanredcrossmusic.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 May 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 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 firstname.lastname@example.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 Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2002, 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 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 <americanredcrossmusic.com> domain name is confusingly similar to Complainant’s AMERICAN RED CROSS mark.
Respondent has no rights or legitimate interests in the <americanredcrossmusic.com> domain name.
Respondent registered and used the <americanredcrossmusic.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant owns U.S. Trademark/Service Mark Registration No. 1,697,594 for AMERICAN RED CROSS, which is registered on the Principal Register. Complainant has long used the AMERICAN RED CROSS mark in connection with humanitarian services, disaster relief and educational programs. Complainant has used its mark extensively for over 120 years and consequently the mark has gained worldwide notoriety.
Respondent registered the <americanredcrossmusic.com> domain name on March 29, 2000. Complainant sent Respondent three cease and desist orders from November 2001 to April 2002 and never received a response. On April 24, 2002, Complainant sent a fourth cease and desist order to Respondent. The next day, Respondent’s agent replied notifying Complainant that the domain name had been “let go,” it had never been used and its intended use was for a business that never came to fruition. However, the <americanredcrossmusic.com> domain name does not expire until March 29, 2003. After unsuccessfully attempting to contact Respondent again, Complainant initiated this action.
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 to the AMERICAN RED CROSS mark through registration with the United States Patent and Trademark Office and longstanding continuous use.
Respondent’s <americanredcrossmusic.com> domain name contains Complainant’s AMERICAN RED CROSS mark in its entirety with the addition of the generic word “music.” The addition of the generic word “music” does not diminish the dominating presence in Respondent’s domain name, which is Complainant’s mark. Therefore, the <americanredcrossmusic.com> domain name is confusingly similar to Complainant’s AMERICAN RED CROSS mark. 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 the 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights to and interests in the AMERICAN RED CROSS mark and Respondent has not submitted a Response in this proceeding. Therefore, the Panel may presume Respondent has no such rights or 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 Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent claimed it intended to use the domain name for a business project but never actually used the domain name. Respondent’s passive holding of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it meet the “fair use” requirement of Policy ¶ 4(c)(iii). Therefore, Respondent has not demonstrated rights or legitimate interests in the <americanredcrossmusic.com> domain. See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent has not used the domain names in connection with any type of bona fide offering of goods and services); see also 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 Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
There is no evidence on the record indicating that Respondent is commonly known by AMERICANREDCROSSMUSIC or <americanredcrossmusic.com>. Respondent is only known to this Panel as Beachfront Studio, Inc. Furthermore, Respondent was not authorized or licensed by Complainant to use the AMERICAN RED CROSS mark. Therefore, Respondent has not satisfied the requirements of Policy ¶ 4(c)(ii). See 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); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent had constructive notice of Complainant’s rights in the AMERICAN RED CROSS mark prior to registering <americanredcrossmusic.com> due to notoriety of the mark and the mark’s status of registration on the Principal Register. Respondent’s registration, despite constructive notice of Complainant’s rights in the mark, constitutes bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); 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); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Respondent has engaged in a pattern of registering domain names of other well-known charities with the addition of the word “music” (e.g. <boysandgirlsclubmusic.com>, <doctorswithoutbordersmusic.com>, <boyscoutsofamericamusic.com>, and <americanlungassociationmusic.com>, among others). This behavior along with Respondent’s registration of <americanredcrossmusic.com> evidences an intent to prevent Complainant from registering its mark in a corresponding domain name, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Austl.), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent had engaged in a pattern of conduct of registering domain names to prevent the owners of the trademarks from reflecting their marks in corresponding domain names, which is evidence of registration and use in bad faith).
Furthermore, Respondent’s passive holding of the <americanredcrossmusic.com> domain name constitutes bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.
Accordingly, it is Ordered that the <americanredcrossmusic.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 27, 2002
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