Claim No. FA103926
The Complainant is The American National Red Cross of 430 17th Street N.W., Washington D.C. 20006, USA. The Complainant is represented by James L. Bikoff, Silverberg, Goldman & Bikoff, LLP of 1101 30th Street N.W., Suite 120, Washington D.C. 20007, USA.
The Respondent is Leonard Habersham of P.O. Box 29587 of Baltimore, Maryland 21216.
The domain name at issue is <americanredcross.info>, registered with InnerWise, Inc. d/b/a ItsYourDomain.com of 1005 West Wise Road, Suite 200, Schaumberg, IL 60193, USA.
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 Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) on January 21, 2002. The domain name dispute is governed pursuant to the Uniform Domain Name Dispute Resolution Policy (“the Policy”), adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”).
The Complainant elected to have the dispute decided by a one member Administrative Panel.
In accordance with Rules, Paragraph 4(c), the formal date of commencement of this administrative proceeding is January 23, 2002. Supplemental materials submitted February 18, 2002, as reflected by some statements hereinafter, were received in evidence and considered.
The Complainant requests that the domain name <americanredcross.info> be transferred from the Respondent to the Complainant.
The Complainant is The American National Red Cross, which was originally founded by Clara Barton on May 21, 1881, as the American Association of the Red Cross. It was created to served the United States during times of peace and war by providing disaster relief, emergency aid, first aid training programs, and humanitarian assistance.
The Respondent, Mr. Leonard Habersham, filed a Response to the Complainant’s Complaint but failed to supply any information about itself in the Response.
The Complainant owns U.S. Trademark and Service Mark Registration for the AMERICAN RED CROSS mark. The United States Patent and Trademark Office (“USPTO”) has assigned the special designation number 89-000,081 in the USPTO database. A copy of the special designations was annexed to the Complaint.
Complainant contends that the American Red Cross has long used American Red Cross and the Red Cross (“the Red Cross” marks) as its service marks and trademarks in connection with humanitarian services, disaster relief, and educational programs.
Complainant contends that the disputed domain name is identical to its registered “AMERICAN RED CROSS” trademark and trade name, and incorporates the registered AMERICAN RED CROSS trademark in its entirety.
Complainant owns and maintains a number of web sites, including web sites containing the Red Cross marks, e.g., <Americanredcross.com>, <Americanredcross.net>, <Americanredcross.org> and <Redcross.org>.
The Complainant annexed to the Complaint two federal criminal statutes, enacted by Congress to protect the famous Red Cross marks and the Red Cross emblem. 18 U.S.C. § 706 and 18 U.S.C. § 917. The Anitcybersquatting Consumer Protection Act, 15 U.S.C. 1125(d)(1)(A)(I)(III), also specifically protects the Red Cross marks.
The American Red Cross marks and emblem has been assigned the special designation numbers 89-000,081 in the USPTO database pursuant to Article 6ter of the Paris Convention. The Complainant also owns U.S. Trademark and Service Mark Registration No. 1,697,594 which contains the words AMERICAN RED CROSS, the Red Cross emblem and a whale design.
Complainant contends that Respondent, Leonard Habersham, registered <americanredcross.info> on October 9, 2001. The Complainant contends they sent two cease and desist letters to the Respondent and received no response.
On October 15, 2001, the Respondent filed an intent-to-use (“ITU”) trademark application for <americanredcross.info> with the USPTO for “providing information about web hosting resources via a web page on a global computer network.”
Complainant contends that the Respondent has no legitimate interests in the contested domain name. The Complainant contents that the Respondent is not affiliated with The American Red Cross, is not a grandfathered user of the words “Red Cross,” and not authorized to register or use domain names or marks containing the Red Cross marks. The Complaint also contends that the Respondent is not commonly know as the “American Red Cross” and that the intent to use trademark application filed by the Respondent demonstrates his intended commercial use of the domain name for web hosting services.
The Complainant contends that the Respondent has registered the contested domain name in bad faith, by creating a likelihood of confusion with the Red Cross marks as to source, sponsorship, affiliation, or endorsement. The Complainant contends, Respondent is a Baltimore, Maryland resident and an American citizen, therefore, he must have been aware of the fame of the Red Cross marks. The Complainant also contends that the Respondent’s registration of the domain name trades upon the reputation and goodwill associated with the AMERICAN RED CROSS mark.
The Respondent has failed to develop a web site at <americanredcross.info>. The Complainant also contends that the Respondent refused to voluntarily transfer the Domain Name by failing to respond to two cease and desist letters.
Respondent claims that although The American Red Cross has owned <Americanredcross.com>, <.net>, and <.org> since 2000, it has not developed an active web site for <Americanredcross.com>, <.net>, or <.org>.
Respondent contends he has a “trademark live and ready for use of hosting the web site of others on a computer server for global computer networks.” Respondent plans to do business under the name <americanredcross.info> for web hosting purposes.
Respondent contends the Complainant has yet to develop an active web site for <Redcross.info>.
Respondent contends that he has not acted out of bad faith, not used any types of Red Cross emblems, nor posed to be a member or agent of The American National Red Cross.
Respondent contends that The American National Red Cross acquired the domain name <Redcross.info> on August 28, 2001. Therefore, the American National Red Cross was aware of the .info domain name.
Respondent contends the Complainant is using the Uniform Domain Name Resolution Policy (“UDRP”) for the purpose of reverse domain name hijacking the domain name <americanredcross.info>.
Respondent contends he is not acting in bad faith by passive holding <americanredcross.info> and just because he has not developed an active web site does not demonstrate that he does not intend to use <americanredcross.info> in a timely manner.
Respondent did not register the domain name until October 9, 2001, nine days after the .info top level domain was made available for real time registration on October 1, 2001.
The American National Red Cross submitted a reply in accordance with the Forum Supplemental Rule 7 on February 15, 2002.
Complainant contends the American Red Cross has no obligation to send communications to the Respondent concerning his improper registration of a domain name containing a famous mark.
Complainant contends the American Red Cross has acted in good faith throughout this domain name dispute and used every available means to contact the Respondent, including email, postal address and Respondent’s post office box.
Complainant contends the American Red Cross is authorized under 18 U.S.C. § 706 to protect the Red Cross marks from infringement and misuse. The American Red Cross exclusive rights are protected under the Anticybersquatting Consumer Protection Act.
Respondent’s domain name contains the protected AMERICAN RED CROSS trademark in its entirety. The American Red Cross has long standing common law and statutory rights in the American Red Cross name, emblem, and the mark since at least approximately 1881 and congressional protection since 1905.
ii) Absence of Rights or Legitimate Interests of the Respondent in the Domain Name
The Respondent has not shown any use of, or demonstrable preparations to use the domain name in connection with the bona fide offering of goods and services. Nor has the Respondent shown that it has been commonly known by the domain name. In addition, the Respondent has not shown that it is making a legitimate non-commercial use or fair use of the domain name without intent for commercial gain.
The Respondent has failed to show any evidence of harassment by the Complainant or rights or legitimate interests in the disputed domain name to warrant a finding of reverse domain name hijacking. To establish reverse domain name hijacking “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in face of such knowledge.” See Sydney Opera House Trust v. Trilynx Pty Limited, WIPO Case D2000-1224 (October 31, 2000). Respondent has not shown that a legal right has matured in him nor that Complainant recognized or was aware of any right of Respondent in either of the “Red Cross” marks.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name and that the conditions for the second element have been satisfied.
iii) Registration and Use of the Domain Name in Bad Faith
The Panel finds there is no logical explanation for the choice of <americanredcross.info> as a domain name, except to pretend a false association with Complainant, of some activity or persons NOT affiliated with Complainant, using the domain name as its tool to deceive members of the public with the registered service mark AMERICAN RED CROSS of the Complainant.
While the Respondent has not activated the disputed domain name, the very existence of the web site under the domain name constitutes a passive use of the domain name. Numerous decisions have held that passive holding of a domain name constitutes bad faith.
The evidence offered by the Complainant from the WhoIs database listing for <DomainMerchants.com>, a domain name reseller, states the domain name is owned by the “Professional Association of Computer Experts,” with an administrative billing contact as email@example.com. The Respondent’s email address used for the registration of <americanredcross.info> is also firstname.lastname@example.org. Therefore, the list of domain names under the control of email@example.com and information available on <Domainmerchants.com> demonstrates Respondent is a sophisticated Internet user who is a domain name reseller who acted in bad faith.
The Panel concludes that the domain name in dispute has been registered and is being used in bad faith.
The conditions for the third element are therefore satisfied.
In the result, the Panel has found that the domain name registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith. The Complainant’s cause is just and proper; the Respondent has not meaningfully rebutted it.
Accordingly, the Panel directs the registration of the domain name <americanredcross.info> to be transferred by Respondent to the Complainant.
Dated: March 6, 2002
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