Vietnamredcross.com + 7 more domains

The timeline behind vietnamredcross.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION The American National Red Cross v. BV a/k/a Brian Vo Claim Number: FA0208000122225 PARTIES Complainant is The American National Red Cross, Washington, DC (“Complainant”) represented by James L. Bikoff, of Silverberg, Goldman & Bikoff, LLP. Respondent is BV a/k/a Brian Vo, Tracy, CA (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <vietnamredcross.com>, <vietnamredcross.net>, <vietnamredcross.org>, <vietnamredcross.info>, <tphcmredcross.com>, <tphcmredcross.net>, <tphcmredcross.org> and <tphcmredcross.info>, registered with Go Daddy Software and Dotster. PANEL On October 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 23, 2002; the Forum received a hard copy of the Complaint on August 21, 2002. On August 28, 2002 and August 29, 2002, Go Daddy Software and Dotster confirmed by e-mail to the Forum that the domain names <vietnamredcross.com>, <vietnamredcross.net>, <vietnamredcross.org>, <vietnamredcross.info>, <tphcmredcross.com>, <tphcmredcross.net>, <tphcmredcross.org> and <tphcmredcross.info> are registered with Go Daddy Software and Dotster and that Respondent is the current registrant of the names. Go Daddy Software and Dotster have verified that Respondent is bound by the Go Daddy Software and Dotster registration agreements 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 September 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 25, 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 postmaster@vietnamredcross.com, postmaster@vietnamredcross.net, postmaster@vietnamredcross.org, postmaster@vietnamredcross.info, postmaster@tphcmredcross.com, postmaster@tphcmredcross.net, postmaster@tphcmredcross.org and postmaster@tphcmredcross.info 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. 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. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant The <vietnamredcross.com>, <vietnamredcross.net>, <vietnamredcross.org>, <vietnamredcross.info>, <tphcmredcross.com>, <tphcmredcross.net>, <tphcmredcross.org> and <tphcmredcross.info> 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. FINDINGS Complainant owns Reg. No. 1,697,594 with the United States Patent and Trademark Office for its AMERICAN RED CROSS mark. Complainant’s mark is also protected under U.S. statute 18 U.S.C. §§ 706 and 917. Complainant’s organization began in 1881 under the name American Association of the Red Cross, modeled on the International Red Cross and the Red Crescent Movement. The organization was created to serve the United States during times of peace and war by providing disaster relief, emergency aid, first aid training programs and humanitarian assistance. 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 responds on average to more than 67,000 disasters annually, and some 83,000 trained Red Cross volunteers help survivors, providing food, shelter, financial assistance, mental health counseling and more. Complainant is also the steward of almost half of United States’ blood supply. Complainant provides humanitarian relief to other nations around the world, including Vietnam. In 1997, 1999, and 2000 Complainant committed more than $4.4 million in cash and assistance for thousands of Vietnamese in response to flooding and typhoons. In 2001, for example, Complainant provided over 3,500 families with new, flood-resistant homes. Complainant has also provided assistance to Vietnam War veterans, land mine victims, and persons affected by Agent Orange. Respondent registered the <vietnamredcross.org> domain name on April 7, 2002. On April 9, 2002 Respondent registered <tphcmredcross.org>, and between August 8-10, 2002 Respondent registered <vietnamredcross.net>, <vietnamredcross.com>, <vietnameredcross.info>, <tphcmredcross.net>, <tphcmredcross.com> and <tphcmredcross.info>. Respondent changed its WHOIS information after receiving three cease and desist letters from Complainant in regards to <vietnamredcross.org> and <tphcmredcross.org>. Respondent also proceeded to register the six other disputed domain names <vietnamredcross.net>, <vietnamredcross.com>, <vietnameredcross.info>, <tphcmredcross.net>, <tphcmredcross.com> and <tphcmredcross.info> after receiving notice from Complainant of Complainant’s rights in the AMERICAN RED CROSS mark via three cease and desist letters. Respondent has not received permission or a license from Complainant to use the AMERICAN RED CROSS mark, or any derivative of the mark. Respondent is domiciled within the United States. DISCUSSION 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 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. Identical and/or Confusingly Similar Complainant has established that it has rights in the AMERICAN RED CROSS mark via continuous use and registration with the United States Patent and Trademark Office. Complainant also holds federally protected rights in the mark codified as 18 U.S.C. §§ 706 and 917. Respondent’s <vietnamredcross.com>, <vietnamredcross.org>, <vietnamredcross.net> and <vietnamredcross.info> domain names are confusingly similar to Complainant’s AMERICAN RED CROSS mark because they merely replace the word “American” with “Vietnam.” Because Complainant’s organization is actively working and contributing humanitarian aid to Vietnam the use of “Vietnam” before “red cross” in the disputed domain names merely describes Complainant’s activities and therefore does not create a distinct mark capable of overcoming a claim of confusing similarity. See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to Complainant’s registered SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark); see also Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"). Furthermore, Respondent’s <tphcmredcross.org>, <tphcmredcross.com>, <tphcmredcross.net>, and <tphcmredcross.info> domain names are confusingly similar to Complainant’s AMERICAN RED CROSS mark because Respondent has merely replaced the word “American” with the letter string “tphcm.” “TPHCM” is the Vietnamese acronym for Ho Chi Minh City, the capital of Vietnam, therefore this string of letters is also descriptive of Complainant’s efforts in Vietnam and does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis. See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent has failed to respond to Complainant’s Compliant, therefore it is assumed that Respondent lacks rights or legitimate interests in the disputed domain names. When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint). Respondent has parked <tphcmredcross.com>, <tphcmredcross.net>, <tphcmredcross.info>, <vietnamredcross.net>, <vietnamredcross.info>, and <vietnamredcross.com> at <godaddy.com> and has not developed a website for any of them. The <godaddy.com> website features advertisements and links to other websites. Respondent’s parking of these domain names is not considered to be in connection with 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), and therefore does not establish rights or legitimate interests in the disputed domain names. See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website). Respondent has failed to establish a website, or make any use out of <tphcmredcross.org> or <vietnamredcross.org> since their registration in April 2002. The passive holding of domain names is not considered to be in connection with 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 Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”). Furthermore, Respondent has not submitted a Response in this proceeding and therefore has submitted no evidence to establish that it is commonly known as VIETNAM RED CROSS, TPHM RED CROSS, or any of the disputed domain names. As a result, it can be inferred, based on the status of Complainant’s AMERICAN RED CROSS mark, that Respondent is not commonly known by any of the disputed domain names and therefore has no rights or legitimate interests in them pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Based on the fame of Complainant’s mark it can be inferred that Respondent was on notice of Complainant’s rights when it registered the infringing domain names. Registration of domain names that incorporate Complainant’s famous mark, despite knowledge of Complainant’s rights, is considered to be evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); 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). Respondent has registered more than one domain name that incorporates Complainant’s mark in a very a short amount of time. Respondent first registered <vietnamredcross.org> and <tphcmredcross.org> in April of 2002, and proceeded to register the remaining disputed domain names in August of 2002. This type of pattern of registering domain names that are confusingly similar to Complainant’s mark is evidence of bad faith registration and use pursuant to 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 Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED. Accordingly, it is Ordered that the domain names <vietnamredcross.com>, <vietnamredcross.net>, <vietnamredcross.org>, <vietnamredcross.info>, <tphcmredcross.com>, <tphcmredcross.net>, <tphcmredcross.org> and <tphcmredcross.info>, be TRANSFERRED from Respondent to Complainant. James P. Buchele, Panelist Dated: October 21, 2002 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.