START-UP TRADEMARK OPPOSITION POLICY
American Express Company v. Swarthmore Associates, LLC
Claim Number: FA0204000110759
Complainant is American Express Company, New York, NY (“Complainant”) represented by Claudia M. Werner, of Leydig, Voit & Mayer, Ltd. Respondent is Swarthmore Associates, LLC, Pacific Palisades, CA (“Respondent”) represented by Sherry A. Lear, of Law Offices of Sherry Anne Lear.
The domain name at issue is <amex.biz>, registered with PSI-Japan 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.
R. Glen Ayers served as Panelist
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 19, 2002; the Forum received a hard copy of the Complaint on April 22, 2002.
On April 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 20, 2002.
Complainant’s Additional Submission was timely received and determined to be complete on May 29, 2002. Complainant filed another “additional submission” on May 28, 2002, also considered timely.
On June 26, 2002, pursuant to STOP Rule 6(b), the Forum appointed R. Glen Ayers the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant, American Express Company, alleges that it holds a trademark in the word “AMEX” and has used that trademark in commerce since 1969. The domain name <amex.biz> is obviously identical. Complainant supplied evidence of its multiple registrations of the mark.
Complainant also alleges, under the STOP procedures, that Respondent certainly received notice of American Express’s rights from the registry operator. Complainant asserts that it had filed an IP Claim with NeuLevel on August 6, 2001. Complainant asserts that the Respondent has no rights in the name and that the name has been registered to prevent Complainant from reflecting its mark in a “.biz” domain name.
Complainant asserts that Respondent acted in bad faith and that it must have selected <amex.biz> with “full knowledge that the intended use of this domain name was in conflict with a registered trademark....”
The American Express Company asserts that the use of the domain name is likely to cause confusion and that registration of the name will interfere with Complainant’s business.
Respondent acknowledges that the domain name and the trademark are identical. However, Respondent alleges that it acquired the <amex.biz> name “for use in conjunction with an American exporting business by Pacific China Industries, Ltd. (PCI)...” It alleges that “AMEX” in this context is an acronym or abbreviation for “American Export.”
Respondent also points out that a number of entities have the right to use the acronym “AMEX.” The trademark rights of American Express do not confer exclusive use.
Further, Respondent asserts that there is no likelihood of confusion, because the services it intends to offer at the <amex.biz> domain name relate to import/export services and have nothing to do with the sorts of financial services and travel services offered by the American Express Company. Respondent asserts that it has rights in the name.
Finally, Respondent says that it did not register the domain name in bad faith or for purposes of selling the domain name. Respondent generally denies each of the standards used to determine “bad faith.” Respondent does not deny the allegations that it received notice of the IP Claim given by NeuLevel.
C. Additional Submissions
The American Express Company first filed an additional submission challenging Respondent’s statements that it intended to use the term “AMEX” in a generic sense, referring to an export business. The American Express Company also asserts that there is bad faith, given the famous nature of its mark and the scope of American Express’ business activities. Certainly, there would be some business conflicts or interference.
Then, Complainant filed an additional timely “additional submission” stating that it had learned that the person or entity behind the registration of the name is an attorney named John C. Kirkland, a partner or a shareholder at a law firm known as Greenberg Taurig. Kirkland is the administrative and business contact for the entity, Swarthmore Associates, which registered the domain name.
The American Express Company cites an article by Ben Edelman, Disputed Registration in “.BIZ”; A Case Study of domain names by Swarthmore Associates and John Kirkland. The article determined that Mr. Kirkland and Swarthmore Associates appear to be in the business of registering domain names in order to resell them. Mr. Kirkland and Swarthmore Associates apparently registered such “.biz” names as <ANAL.BIZ>, <HOOKER.BIZ> and <STRIPPER.BIZ>. Further, in a reported decision, MDU Resources Group, Inc. v. Swarthmore Assocs., LLC, FA 102957 (Nat. Arb. Forum Feb. 26, 2002), Mr. Kirkland and Swarthmore Associates were divested of registration of the domain name on other grounds.
The parties have stipulated identity of name and mark. Respondent has not rebutted the Complainant’s allegations that it has no right in the name. It has offered no evidence it has rights to the name. It had offered no credible evidence of preparation for use of the name.
Respondent’s action in registering “.biz” names on a wholesale basis demonstrates bad faith where the name and mark are identical, and the mark is a famous, well-known mark. Further, Respondent did not deny Complainant’s assertion that it had received notice from NeuLevel of the IP rights of American Express.
Paragraph 15(a) of the STOP 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.”
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Certainly, Complainant has rights in the mark. Complainant has submitted evidence of its interest in the mark. Respondent has stipulated that the mark and domain name are identical.
Other than registration of the domain name, Respondent has shown no other rights in the mark. Respondent has asserted that it intends to use the name in a generic sense relating to “American exports.” Certainly, other entities have the right to use forms of “amex” - - - Complainant admits as much. But, Respondent has not shown that it has rights other than the domain registration. Such does not create rights in the name where the Respondent only makes allegations about future possible business uses in the export trade. See Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum - Feb. 27, 2002) (finding registration of “foxstudios.biz” in order to establish a website for a planned dance studio was insufficient to establish rights with respect to the name).
“Bad faith” issues are more difficult. The Complainant and Respondent do not appear to be direct competitors. See Gene Logic, Inc. v. Bock, FA 10342 (Nat. Arb. Forum Mar. 4, 2002). There has been no offer to sell the mark See Prudential Ins. Co. of Am. v. TPB Fin a/k/a B. Evans, FA 108218 (Nat. Arb. Forum Apr. 18, 2001).
But, the Respondent certainly registered the domain name with knowledge of Complainant’s rights. See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002). STOP Policy §4(b)(ii).
And, there is possibility, even probability, of confusion. STOP Policy §4(b)(iv).
See Twentieth Century Fox Film Corp. v. Berstein, FA 102962 (Nat. Arb. Forum - Feb. 27, 2002).
Finally, registering names in gross, a practice engaged in by Respondent, certainly allows the inference of improper intent - or, bad faith. See, e.g., Armstrong Holdings, Inc. v. JAZ Assoc., FA95234 (Nat. Arb. Forum Aug. 17, 2000).
The domain name will be transferred to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
R. GLEN AYERS
Dated: July 10, 2002
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