American Express Company v. Stealth
Commerce
Claim Number: FA0203000106119
PARTIES
Complainant
is American Express Company, New
York, NY (“Complainant”) represented by Dianne
K. Cahill. Respondent is Stealth Commerce, Tortola, BRITISH
VIRGIN ISLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <americanexpressbank.com>,
registered with Intercosmos Media Group,
Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 27, 2002; the Forum received a hard copy of the
Complaint on March 28, 2002.
On
March 27, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum
that the domain name <americanexpressbank.com>
is registered with Intercosmos Media Group, Inc. and that Respondent is the
current registrant of the name. Intercosmos
Media Group, Inc. has verified that Respondent is bound by the Intercosmos
Media Group, 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
March 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 17,
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@americanexpressbank.com 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.
On
April 24, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
Respondent’s
<americanexpressbank.com> domain
name is confusingly similar to Complainant’s AMERICAN EXPRESS trademark. Respondent lacks rights to and legitimate
interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
B.
Respondent did not file a Response in this proceeding.
FINDINGS
Complainant has used the trade name
American Express Bank since 1919 and its AMERICAN EXPRESS mark since 1850,
making the mark famous throughout the world.
Complainant is the owner of more than 400
international registrations for its AMERICAN EXPRESS mark or marks that contain
AMERICAN EXPRESS. Complainant also uses
its AMERICAN EXPRESS mark in connection with its website at
<americanexpress.com>. In
addition, Complainant has trademark registrations for AMERICAN EXPRESS in over
100 countries around the world, including the British Virgin Islands, where it
owns Registration No. 1525 covering financial services.
Respondent registered the disputed domain
name January 15, 2002, and is using the domain name in connection with an adult
content website offering erotic photographs and “secretarial” or escort-type
services.
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 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.
For
the reasons set forth above, Complainant owns valid and enforceable rights in
the mark AMERICAN EXPRESS that Complainant acquired well prior to the date on
which Respondent registered and began using the domain name. The striking similarity between <americanexpressbank.com> and the
AMERICAN EXPRESS mark is immediately apparent.
The
domain name registered by Respondent, <americanexpressbank.com>, consists of the AMERICAN EXPRESS
trademark with the term “bank” appended at the end. “Bank” is a generic term.
As such, it does not serve to distinguish the domain name from the
AMERICAN EXPRESS mark. To the contrary,
it only serves to heighten the potentiality for confusion because Complainant
has operated as American Express Bank since 1919. See Marriott Int’l
v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that
the Respondent’s domain name <marriott-hotel.com> is confusingly similar
to Complainant’s MARRIOTT mark); see also Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has not submitted a Response in this proceeding. It is well established that when a Respondent fails to submit a
Response, a Panel may take Complainant’s allegations to be true. See
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”); 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).
Furthermore,
there is a presumption that a Respondent has no rights or legitimate interests
in a disputed domain name when it fails to submit a Response. See
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).
Respondent’s
use of the <americanexpressbank.com>
domain name to redirect Internet users to websites offering pornographic
material permits a finding that Respondent has no rights or legitimate
interests in respect to the disputed domain name. Further, the use of pornography in connection with a famous mark
is not a bona fide use under Policy ¶ 4(c)(i), or a noncommercial or fair use under
Policy ¶ 4(c)(iii). See Nat’l
Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118
(WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate
interests in the domain names <chargergirls.com> and
<chargergirls.net> where Respondent linked these domain names to its
pornographic website).
Complainant has established the
fame of its AMERICAN EXPRESS mark, and without contrary evidence, it would be
impossible for Respondent to be commonly known by a domain name confusingly
similar to Complainant’s famous mark under Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21,
2000) (finding that no person besides Complainant could claim a right or a
legitimate interest with respect to the domain name <nike-shoes.com>).
The
Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has intentionally attempted to attract, for commercial gain, Internet users to
its website, by creating a likelihood of confusion with Complainant’s mark as
to the source, sponsorship, affiliation or endorsement of its website. This
constitutes bad faith under Policy ¶ 4(b)(iv).
The posted pornographic material is evidence of bad faith when the
domain name being used is confusingly similar to a famous mark. See Land O' Lakes Inc. v. Offbeat Media
Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under
Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar
to Complainant’s mark and used a pornographic depiction confusingly similar to
Complainant’s registered trademark on its website that would cause confusion as
to the source or affiliation of the site); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where
Respondent linked the domain name in question to websites displaying banner
advertisements and pornographic material).
Respondent’s
registration and use of a domain name incorporating Complainant’s AMERICAN
EXPRESS mark was in bad faith because Complainant’s mark is famous and it may
be presumed that Respondent knew of it.
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 Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding
that Respondent had actual and constructive knowledge of Complainant’s EXXON
mark given the world-wide prominence of the mark and thus Respondent registered
the domain name in bad faith).
Therefore,
the Panel concludes that Complainant has met the burden set forth under Policy
¶ 4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief should be hereby granted.
Accordingly,
it is Ordered that the <americanexpressbank.com>
domain name be transferred from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: May 8, 2002.
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