American National Red Cross v. Valued Customer
Claim Number: FA1006001327689
Complainant is American
National Red Cross (“Complainant”), represented by Heidi L. Belongia, of Foley & Lardner LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <redcrossconstruction.net>, 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 electronically on June 1, 2010.
On June 2, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <redcrossconstruction.net> domain name 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 June 8, 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@redcrossconstruction.net by e-mail. Also on June 8, 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 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <redcrossconstruction.net> domain name is confusingly similar to Complainant’s RED CROSS mark.
2. Respondent does not have any rights or legitimate interests in the <redcrossconstruction.net> domain name.
3. Respondent registered and used the <redcrossconstruction.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American National Red Cross, was founded in 1881 and provides humanitarian assistance throughout the world under its RED CROSS mark. Complainant holds 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 further protected by international treaty codified in 15 U.S.C. § 1126.
Respondent, Valued Customer, registered the <redcrossconstruction.net> domain name on February 1, 2010. The disputed domain name resolves to a website that features Complainant’s logo, RED CROSS mark, and information about storm damage recovery and restoration services that compete with Complainant’s similar services.
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.
Complainant argues that it has established rights in its RED
CROSS mark. Complainant holds multiple
trademark registrations with the USPTO for its RED CROSS mark (e.g., Reg. No. 2,752,477 issued August
19, 2003). Furthermore, Complainant’s
RED CROSS mark is protected by international treaty under 15 U.S.C. §
1126. The Panel determines that
Complainant has established rights in its RED CROSS mark pursuant to Policy ¶
4(a)(i). See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v.
Complainant alleges that Respondent’s <redcrossconstruction.net>
domain name is confusingly similar to Complainant’s RED CROSS mark. The disputed domain name includes
Complainant’s entire mark after removing the space separating the terms of the
mark. Respondent adds the generic term
“construction” and the generic top-level domain (“gTLD”) “.net” to
Complainant’s mark as well. Previous
panels have concluded that the removal of a space, the addition of a generic
term, and the addition of a gTLD do not change the confusing similarity of a
disputed domain name. See Bond & Co. Jewelers, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <redcrossconstruction.net> 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 <redcrossconstruction.net> 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.”).
Complainant claims that Respondent is not commonly known by the <redcrossconstruction.net> domain name. Complainant argues that Respondent is not associated with Complainant and that Respondent is not licensed to use Complainant’s RED CROSS mark. The WHOIS information identifies the domain name registrant as “Valued Customer,” which the Panel determines is not similar to the <redcrossconstruction.net> domain name. Respondent has failed to present any evidence that would contradict the WHOIS information and the evidence presented by Complainant. After examining the record, the Panel finds that Respondent is not commonly known by the <redcrossconstruction.net> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent uses the <redcrossconstruction.net> domain name to resolve to a website featuring information about storm damage recovery and restoration services that are similar to the humanitarian relief services Complainant provides. The website resolving from the disputed domain name also contains Complainant’s logo and RED CROSS mark. The Panel finds Respondent’s use of the disputed domain name to offer competing services and to attempt to pass itself off as Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s use of the <redcrossconstruction.net> domain name disrupts it humanitarian relief services. Complainant alleges that Internet users interested in Complainant’s services may enter the resolving website due to the confusingly similar disputed domain name and utilize the services of Respondent instead of Complainant. The Panel concludes that Respondent’s use of the <redcrossconstruction.net> domain name does disrupt Complainant’s business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that Internet users may become easily confused as to Complainant’s affiliation with the disputed domain name and resolving website due to the domain name’s confusing similarity and Respondent’s use of Complainant’s logo and RED CROSS mark. The Panel presumes that Respondent some how profits from its use of the disputed domain name and therefore is attempting to profit from Internet users’ confusion. The Panel holds that Respondent’s use of the <redcrossconstruction.net> domain name to offer competing services and to attempt to pass itself off as Complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
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 <redcrossconstruction.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 9, 2009
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