American Express Marketing & Development Corp. v. Andreas Emmanuel
Claim Number: FA0810001228531
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne
K Cahill, of American Express Marketing &
Development Corp.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <americanexpresscasinos.net>, <americanexpresscasino.net>, <americanexpresscasinos.org>, <americanexpresscasino.org>, <americanexpresspoker.net>, <americanexpresspoker.org>, <americanexpresspoker.com>, <amexcasinos.com>, <amexcasinos.net>, <amexcasinos.org>, and <amexcasino.org>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 10, 2008.
On October 9, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <americanexpresscasinos.net>, <americanexpresscasino.net>, <americanexpresscasinos.org>, <americanexpresscasino.org>, <americanexpresspoker.net>, <americanexpresspoker.org>, <americanexpresspoker.com>, <amexcasinos.com>, <amexcasinos.net>, <amexcasinos.org>, and <amexcasino.org> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 2008 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@americanexpresscasinos.net, postmaster@americanexpresscasino.net, postmaster@americanexpresscasinos.org, postmaster@americanexpresscasino.org, postmaster@americanexpresspoker.net, postmaster@americanexpresspoker.org, postmaster@americanexpresspoker.com, postmaster@amexcasinos.com, postmaster@amexcasinos.net, postmaster@amexcasinos.org, and postmaster@amexcasino.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americanexpresscasinos.net>, <americanexpresscasino.net>, <americanexpresscasinos.org>, <americanexpresscasino.org>, <americanexpresspoker.net>, <americanexpresspoker.org>, <americanexpresspoker.com>, <amexcasinos.com>, <amexcasinos.net>, <amexcasinos.org>, and <amexcasino.org> domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks.
2. Respondent does not have any rights or legitimate interests in the <americanexpresscasinos.net>, <americanexpresscasino.net>, <americanexpresscasinos.org>, <americanexpresscasino.org>, <americanexpresspoker.net>, <americanexpresspoker.org>, <americanexpresspoker.com>, <amexcasinos.com>, <amexcasinos.net>, <amexcasinos.org>, and <amexcasino.org> domain names.
3. Respondent registered and used the <americanexpresscasinos.net>, <americanexpresscasino.net>, <americanexpresscasinos.org>, <americanexpresscasino.org>, <americanexpresspoker.net>, <americanexpresspoker.org>, <americanexpresspoker.com>, <amexcasinos.com>, <amexcasinos.net>, <amexcasinos.org>, and <amexcasino.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Express
Marketing & Development Corp., has used the AMERICAN EXPRESS mark
continuously since 1850 and the AMEX mark since 1969. Complainant holds over twelve hundred
AMERICAN EXPRESS (i.e., Reg. No. 1,024,840) and over three hundred AMEX (i.e.,
Reg. No. 1,161,278) trademark registrations around the world, including with
the United States Patent and Trademark Office (“USPTO”).
Respondent registered the disputed domain names on August 10, 2008. Respondent is using the domain names to display links to third-party websites offering credit cards, some in competition with Complainant, and on-line gambling.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
The Panel finds that Complainant’s registrations of its AMERICAN EXPRESS and AMEX marks with the USPTO are sufficient to establish Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s use of the generic top-level domains (“gTLD”) “.net,” “.org,” and “.com” is irrelevant for the purpose of determining whether the disputed domain names are identical or confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The <americanexpresscasinos.net>, <americanexpresscasino.net>,
<americanexpresscasinos.org>, <americanexpresscasino.org>,
<americanexpresspoker.net>, <americanexpresspoker.org>,
and <americanexpresspoker.com> domain names include the AMERICAN
EXPRESS mark in its entirety and adds one of the generic terms “casino,”
“casinos,” or “poker.” The <amexcasinos.com>,
<amexcasinos.net>, <amexcasinos.org>, and <amexcasino.org>
domain names include
the AMEX mark in its entirety and adds either “casino” or “casinos.” The addition of generic terms does not negate
confusing similarity between the disputed domain names and Complainant’s mark
under Policy ¶ 4(a)(i). Therefore, the
Panel finds that the disputed domain names are confusingly similar to
Complainant’s AMERICAN EXPRESS and AMEX marks pursuant to Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by any of the disputed domain names. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the AMERICAN EXPRESS or AMEX marks, and the WHOIS information identifies Respondent as “Andreas Emmanuel.” Thus, Respondent has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
According to Complainant, the disputed domain names resolve to a website that offers links to third-party websites, some of which are Complainant’s competitors. Respondent’s use of domain names that are confusingly similar to Complainant’s AMERICAN EXPRESS or AMEX marks to redirect Internet users interested in Complainant’s services to third-party websites that are both unrelated and in competition with Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the disputed domain names, which are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks, to redirect Internet users to Respondent’s website that features links to third-party sites, some of which compete with Complainant’s business. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel infers that Respondent receives click-through fees for diverting Internet users to third-party websites. Because Respondent’s domain name is confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks, Internet users accessing Respondent’s disputed domain names may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanexpresscasinos.net>, <americanexpresscasino.net>, <americanexpresscasinos.org>, <americanexpresscasino.org>, <americanexpresspoker.net>, <americanexpresspoker.org>, <americanexpresspoker.com>, <amexcasinos.com>, <amexcasinos.net>, <amexcasinos.org>, and <amexcasino.org> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 4, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum