American National Red Cross v. Maho Jakotyc
Claim Number: FA1006001327658
Complainant is American
National Red Cross (“Complainant”), represented by Scott R. Kaspar, of Foley & Lardner LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <redcrossracing.org>, registered with Above.com Pty Ltd (R1386-LROR).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 electronically on June 1, 2010.
On June 2, 2010, Above.com Pty Ltd (R1386-LROR) confirmed by e-mail to the National Arbitration Forum that the <redcrossracing.org> domain name is registered with Above.com Pty Ltd (R1386-LROR) and that Respondent is the current registrant of the name. Above.com Pty Ltd (R1386-LROR) has verified that Respondent is bound by the Above.com Pty Ltd (R1386-LROR) 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 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@redcrossracing.org by e-mail. Also on June 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <redcrossracing.org> domain name is confusingly similar to Complainant’s RED CROSS mark.
2. Respondent does not have any rights or legitimate interests in the <redcrossracing.org> domain name.
3. Respondent registered and used the <redcrossracing.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American National Red Cross, provides disaster relief, emergency aid, first aid training programs, and humanitarian assistance. Complainant operates in over 186 countries under its RED CROSS mark. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its RED CROSS mark (e.g., Reg. No. 2,752,477 issued August 19, 2003). Complainant’s RED CROSS mark is also protected by international treaty codified in 15 U.S.C. § 1126.
Respondent, Maho Jakotye, registered the <redcrossracing.org> domain name on February 1, 2010. The disputed domain name resolves to a website containing a commercial search engine and listing third-party hyperlinks, some of which resolve to services that compete with Complainant’s services, such as “plasma collection.”
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Previous panels have held that a complainant may establish
rights in a mark by registering the mark with a federal trademark
authority.
Complainant claims that Respondent’s <redcrossracing.org> domain name is confusingly similar to Complainant’s RED CROSS mark. The disputed domain name removes the space separating the terms of Complainant’s mark. Respondent also adds the generic term “racing” and the generic top-level domain (“gTLD”) “.org.” The Panel determines that the removal of a space and the additions of a generic term and gTLD fail to adequately distinguish the disputed domain name from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel concludes that Respondent’s <redcrossracing.org> domain name is confusingly similar to Complainant’s RED CROSS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent lacks rights and legitimate interests in the <redcrossracing.org> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <redcrossracing.org> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent has failed to present any evidence, and the Panel fails to find any evidence in the record, that would indicate that Respondent is commonly known by the <redcrossracing.org> domain name. On the contrary, the WHOIS information identifies the domain name registrant as “Maho Jakotye,” which the Panel finds is not similar to the disputed domain name. Moreover, Complainant asserts that Respondent has not received permission from Complainant to utilize Complainant’s RED CROSS mark in a domain name. Due to the evidence in the record and presented by Complainant, the Panel holds that Respondent is not commonly known by the <redcrossracing.org> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent’s <redcrossracing.org> domain name resolves to a website that features a commercial search engine and a list of third-party hyperlinks. Many of the hyperlinks resolve to Complainant’s competitors offering competing services, such as plasma collection. Complainant alleges that Respondent has used the confusingly similar domain name to increase Internet traffic to the third-party websites resolving from the hyperlinks. The Panel determines that this use of the confusingly similar <redcrossracing.org> domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <redcrossracing.org> domain name disrupts Complainant’s business. Internet users interested in Complainant’s services, such as plasma donation, may instead discover one of Complainant’s competitors and use a competing plasma collection service instead of Complainant’s. Respondent’s use of the confusingly similar disputed domain name is the cause of that disruption to Complainant’s business. The Panel concludes that Respondent’s use of the <redcrossracing.org> domain name does disrupt Complainant’s business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel infers that Respondent commercially benefits from
its use of the <redcrossracing.org> domain name. The Panel presumes that Respondent receives
click-through fees from the aforementioned search engine and hyperlinks. Complainant alleges that Internet users may
become confused as to Complainant’s sponsorship of the disputed domain name and
resolving website because of Respondent’s use of the confusingly similar
disputed domain name. The Panel holds
that Respondent’s attempt to profits from Internet users’ confusion constitutes
bad faith registration and use under Policy ¶ 4(b)(iv). See
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <redcrossracing.org> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 15, 2010
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