The American National Red Cross v. Rite
Host c/o ali fark
Claim
Number: FA0507000520571
Complainant is The American National Red Cross (“Complainant”),
represented by James L. Bikoff, of Silverberg Goldman & Bikoff, LLP, 1101 30th St., N.W., Suite 120, Washington, DC 20007. Respondent is Rite Host c/o ali fark (“Respondent”), 40 Chestnut
St., Quincy, MA 02169.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <redcrosspharmacy.com>, registered with Enom,
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 21, 2005.
On
July 21, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <redcrosspharmacy.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, 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
July 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 11, 2005 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 postmaster@redcrosspharmacy.com by e-mail.
Having received no Response from Respondent, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
August 17, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (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 (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 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 <redcrosspharmacy.com>
domain name is confusingly similar to Complainant’s RED CROSS mark.
2. Respondent does not have any rights or
legitimate interests in the <redcrosspharmacy.com> domain name.
3. Respondent registered and used the <redcrosspharmacy.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, American National Red Cross, has used the RED
CROSS mark in the United States since 1881.
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 goodwill 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 located at the <americanredcross.com>,
<americanredcross.net>, <americanredcross.org>,
<redcross.info>, and <redcross.org> domain names.
Complainant
holds several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the RED CROSS mark (E.g., Reg. No. 2,740,132
issued September 11, 2002).
Respondent
registered the <redcrosspharmacy.com> domain name on October 28,
2003. Respondent’s domain name resolves
to a website that features links to third-party commercial websites.
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 has
established through extrinsic proof in this proceeding that it has rights in
the RED CROSS mark through registration of the mark with the USPTO and
continuous longstanding use of the mark.
See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
Additionally, Respondent’s <redcrosspharmacy.com> domain
name is confusingly similar to Complainant’s mark, as the domain name fully
incorporates Complainant’s RED CROSS mark in its entirety and merely adds the
descriptive word “pharmacy.” Such an
addition is not enough to overcome a finding of confusing similarity pursuant
to Policy 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15,
2003) (finding that the addition of the term “assurance,” to the complainant’s
AIG mark failed to sufficiently differentiate the name from the mark under
Policy ¶ 4(a)(i) because the appended term related directly to the
complainant’s business); see also Am. Online, Inc. v. Anytime Online Traffic
Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the
respondent’s domain names, which incorporated
the complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity).
Furthermore, the
addition of the top-level domain “.com” is irrelevant in determining whether
the <redcrosspharmacy.com> domain
name is confusingly similar to Complainant’s mark. See Blue Sky Software Corp.
v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to the complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <redcrosspharmacy.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have rights to or legitimate interests in the domain
name. Thus, due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name, it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names).
Respondent has
offered no evidence, and there is no proof in the record indicating that
Respondent is commonly known by the <redcrosspharmacy.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com,
Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent
has no rights or legitimate interests in domain names because it is not
commonly known by the complainant’s marks and the respondent has not used the
domain names in connection with a bona fide offering of goods and services or
for a legitimate noncommercial or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent does not have rights in a
domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because the
respondent was not commonly known by the disputed domain name nor was the
respondent using the domain name in connection with a legitimate or fair use).
Additionally,
the confusingly similar <redcrosspharmacy.com> domain name is used
to redirect Internet users to a website advertising links for a wide variety of
third-party services and products. The
Panel finds that Respondent’s diversionary use of the domain name to divert
Internet users to Respondent’s website for which Respondent presumably receives
click-through fees is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb.
Forum March 17, 2003) (finding that the respondent’s diversionary use of the
complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
disputed domain names); see also Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the
respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that incorporates Complainant’s mark for
Respondent’s commercial gain.
Respondent registered and used the <redcrosspharmacy.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
intentionally attempted to attract potential Internet users searching for
Complainant to Respondent’s website by taking advantage of Internet users
searching under Complainant’s RED CROSS mark and diverting them to Respondent’s
commercial website. 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 intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with the complainant’s mark and offering the same services as the
complainant via his website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where the respondent attracted users to a website
sponsored by the respondent and created confusion with the complainant’s mark
as to the source, sponsorship, or affiliation of that website).
Moreover,
Respondent registered the <redcrosspharmacy.com> domain name with
actual or constructive knowledge of Complainant’s rights in the RED CROSS and
AMERICAN RED CROSS marks due to Complainant’s registration of the marks with
the USPTO. Registration of a domain
name that is confusingly similar to a mark, despite actual or constructive
knowledge of another’s rights in the mark, is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). 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 Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
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 relief shall be GRANTED.
Accordingly, it
is Ordered that the <redcrosspharmacy.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
August 26, 2005
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