Three wins for the American Red Cross
The American National Red Cross ('Red Cross') recently received three favourable Uniform Domain Name Dispute Resolution Policy (UDRP) decisions from the National Arbitration Forum (NAF) against the registrants of domain names containing RED CROSS marks. In each case, the NAF panel granted transfer of the infringing domain name, referring to the unique statutory protection provided to the Red Cross.
Since 1905 the Red Cross name and emblem have been protected by statute, now codified as 18 USC Sections 706 and 917. In 1999 Congress demonstrated its intent to further protect the name and mark from bad faith registration and trafficking of related domain names by incorporating Section 706 into the Anti-cybersquatting Consumer Protection Act.
In the case of American National Red Cross v Leonard Habersham the Red Cross challenged Habersham under the UDRP after learning that he had registered 'americanredcross.info' and filed an 'Intent-to-Use' application with the US Patent and Trademark Office for the domain name as a trademark for web-hosting services. The Patent and Trademark Office refused the application based on the statutory protection granted to the Red Cross.
The NAF panel cited the Patent and Trademark Office's decision and recognized that the domain name was identical to the AMERICAN RED CROSS trademark. The panel also determined that "[t]here is no logical explanation for the choice of 'americanredcross.info' as a domain name, except to pretend a false association with the complainant.
In American National Red Cross v Michael Rogers the Red Cross challenged the registration of 'animalredcross.com' by Florida-based registrant Michael Rogers, who then solicited donations from major Red Cross donors, such as the Colgate-Palmolive Corporation. Rogers did not respond to the complaint.
The NAF panel issued a strongly worded decision in favour of the complainant, citing the statutes granting exclusive use of RED CROSS trademarks to the nonprofit organization. Rogers had also offered to sell the domain name and his company to the Red Cross for $10,000. Many UDRP panels have determined that a respondent's offer to sell an infringing domain name to a complainant is evidence of bad faith under the UDRP.
In American National Red Cross v WMS Enterprises Co aka Wilfred Sherman, the NAF panel determined that WMS Enterprises, the parent company of a Massachusetts-based travel website developer, had registered and used 'redcrosstravel.com' in bad faith when it offered to build the Red Cross a travel website at the domain name. The panel noted the Red Cross's statutory protection and determined that based on the fame of the mark and the respondent's communications with the complainant, it could be inferred that Sherman knew about the complainant's trademark rights when it registered the name.
These UDRP decisions provide the Red Cross with strong precedent against domain name registrants who attempt to misuse its marks and attempt to divert the public to confusingly similar websites. A press release from the US Department of Justice highlights the problems faced by the Red Cross in the days after September 11, including dealing with a large number of domain names and email campaigns directing donations to unauthorized websites.
These cases also serve as examples to owners of other well-known trademarks protected by registration or statute that the UDRP can be used to stop the infringing use of protected marks.
James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, LLP
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