The American National Red Cross v. Inter-Net Research, Inc. a/k/a Martin Palmer

Claim Number: FA0205000114438



Complainant is The American National Red Cross, Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverber, Goldman & Bikoff LLP.  Respondent is Inter-Net Research, Inc. a/k/a Martin Palmer, Edmonds, WA (“Respondent”).



The domain names at issue are <>, <>, <>, <>, <>, <>, <>, <>, and <>, registered with Intercosmos Media Group.



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. Crary as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 30, 2002; the Forum received a hard copy of the Complaint on May 31, 2002.


On May 30, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain names <>, <>, <>, <>, <>, <>, <>, <>, and <> are registered with Intercosmos Media Group and that Respondent is the current registrant of the names.  Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 June 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 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,,,,,,,, and> 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 July 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. 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 names be transferred from Respondent to Complainant.



A. Complainant

The disputed domain names are confusingly similar to Complainant’s AMERICAN RED CROSS mark. 


Respondent has no rights or legitimate interests in the disputed domain names.


Respondent registered and used the disputed domain names in bad faith.


B. Respondent

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 of the U.S. Patent and Trademark Office (“USPTO”).  Complainant has long used the AMERICAN RED CROSS mark in connection with humanitarian services, disaster relief and educational programs.  Since 1881, Complainant has used the words “Red Cross” as part of its name.  Complainant has extensively used “Red Cross” for over 120 years. Consequently, “Red Cross” and Complainant’s AMERICAN RED CROSS mark have gained worldwide notoriety.


As a fundraising tool, Complainant has a specialty license plate program.  Groups or organizations can purchase, pending application approval, specialty license plates and the proceeds help provide additional funding for Complainant’s charitable chapters. 


Respondent registered the disputed domain names on July 23, 2001.  Respondent was once affiliated with one of Complainant’s Oregon Chapters.  However, Complainant never granted Respondent permission, express or implied, to use its AMERICAN RED CROSS mark.


In a response to a letter from Complainant, Respondent noted that he had a detailed plan to create vanity license plates as a fundraising project for his Oregon Chapter.  Respondent also stated that he suggested the domain names to Complainant’s local “staff people” and that he will “sit” on the disputed domain names until he receives a “public apology” or “a payment of $10,000 per domain name.” 


In subsequent correspondence with Complainant, Respondent apparently denies and recants the $10,000 per domain name demand, but claims to have rights in the license plate program and demands that Complainant give him “a public and private apology and pay $15 for each ARC-related domain.” 



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 established its rights in the AMERICAN RED CROSS mark through registration with the United States Patent and Trademark Office and longstanding continuous use of the mark. 


Respondent’s <>, <>, <>, <>, <> and <> domain names are confusingly similar to Complainant’s famous AMERICAN RED CROSS mark for three reasons:  (1) the omission of “American” in the domain names is not sufficient to detract from the dominant presence of Complainant’s mark; (2) the addition of the generic word “plates” or phrase “licenseplates” to a significant portion of Complainant’s mark does not create a distinct mark, especially since Complainant operates a fundraising license plate program; and (3) the addition of the top-level domains (“gTLDs”) “.com,” “.net” and “.org” are inconsequential when conducting a “confusingly similar” analysis.


First, Respondent only uses the “Red Cross” portion of Complainant’s AMERICAN RED CROSS mark.  However, Complainant has been using “Red Cross” as a part of its name for over 120 years.  Also, deleting words from a mark does not create a distinct domain name, especially when the dominating part of the mark is kept in the domain name.  See WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Wellness Int’l Network, LTD v., FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <> is confusingly similar to Complainant’s “Wellness International Network”).


Second, the addition of generic words or phrases, such as “plates” or “licenseplates,” fails to create a distinct domain name that is wholly different than Complainant’s famous mark.  In addition, Complainant has a license plate program that helps its fundraising efforts.  Hence, Respondent’s use of “plates” and “licenseplates” in conjunction with Complainant’s famous mark only amplifies the likelihood of confusion.  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 Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).


Finally, gTLDs, such as “.com,” “.net” and “.org,” are negligible when conducting a confusingly similar analysis.  The addition of gTLDs are required when creating a domain name and are therefore of no significance.  Thus, Respondent’s <>, <>, <>, <>, <> and <> domain names are confusingly similar to Complainant’s famous mark.


Respondent’s <>, <> and <> domain names are confusingly similar to Complainant’s AMERICAN RED CROSS mark.  As previously stated, the omission of “American” in Respondent’s domain name and the addition of a gTLD does not have an impact on a “confusingly similar” analysis.  Furthermore, the addition of a hyphenated suffix of letters to Complainant’s famous mark fails to detract from the overall presence of the domain name, which is Complainant’s famous mark.  See v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and “.com” are not distinguishing features”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).


Accordingly, the Panel finds that all disputed domain names are confusingly similar to Complainant’s famous AMERICAN RED CROSS mark, thus, Policy ¶ 4(a)(i) has been satisfied.


Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain names and Respondent’s failure to respond, the Panel may presume that Respondent has no such rights or legitimate interests in the disputed domain names.  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 respond, all inferences may be drawn in favor of the 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”). 


Respondent demanded on two separate occasions that Complainant apologize to him and buy the disputed domain names from him.  Respondent has not made an active use of the disputed domain names in connection with a website and has only used them as bait to lure Complainant into settling the dispute.  Respondent’s demands and inactive use of the disputed domain names do not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor do they constitute a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).


Complainant’s AMERICAN RED CROSS mark is so famous that it is hard to conceive of anyone else holding rights in a mark similar to it or that anyone is commonly known by a name similar to the mark.  In fact, Respondent is not known by REDCROSSPLATES, REDCROSSLICENSEPLATES, or REDCROSS-SCC.  Rather, Respondent was affiliated with one of Complainant’s Oregon chapters but was never authorized to use Complainant’s famous mark for any objective.  Therefore, Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).


Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; thus, Policy ¶ 4(a)(ii) has been satisfied.


Registration and Use in Bad Faith

Respondent made two separate demands for payment per domain name in response to requests to transfer the domain names to Complainant.  Respondent first demanded $10,000 per domain name and later denied that demand and amended it to $15 per domain name.  Holding infringing domain names and demanding payment in excess of Complainant’s out-of-pocket costs evidences bad faith use.  That Respondent adjusted its asking price is inconsequential, as Respondent’s primary purpose in registering the domai names appears to have been for profit.  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).


Complainant is one of the most well-known charitable organizations in the world.  Consequently, its AMERICAN RED CROSS mark is world-renowned.  Given the fame of Complainant’s mark, Respondent’s association with one of Complainant’s Oregon Chapters and the mark’s registration status on the Principal Register of the USPTO, it can reasonably be inferred that Respondent had knowledge of Complainant’s rights in the AMERICAN RED CROSS mark.  Hence, Respondent’s registration of the infringing domain names with knowledge of Complainant’s rights constitutes bad faith registration. 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 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 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).


Furthermore, Respondent initially informed Complainant that he was going to “sit” on the disputed domain names.  Respondent has done exactly that by not actively using the disputed domain names.  Hence, Respondent appears to have registered the disputed domain names in order to prevent Complainant from reflecting its mark in corresponding domain names.  Moreover, Respondent’s knowledge of Complainant’s rights in the AMERICAN RED CROSS mark and subsequent registration of nine infringing domain names constitutes bad faith registration under Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where the Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith). 


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 should be hereby GRANTED.


Accordingly, it is Ordered that the <>, <>, <>, <>, <>, <>, <>, <>, and <> domain names be TRANSFERRED from Respondent to Complainant.





James A. Crary, Panelist

Dated: July 15, 2002






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