American Express Company v. Mighty Net, Inc.
Claim Number: FA0208000123890
PARTIES
Complainant is
American Express Company, New York, NY (“Complainant”). Respondent is Mighty Net, Inc.,
Canoga Park, CA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at
issue are <ilostmyamericanexpress.com>,
<ilostmyamericanexpress.info>, <ilostmyamericanexpresscard.com>,
<ilostmyamericanexpresscard.info>, <lostamericanexpress.com>,
<lostamericanexpress.info>, <lostamericanexpresscard.com>, and <lostamericanexpresscard.info>,
registered with Network Solutions.
PANEL
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on August
27, 2002; the Forum received a hard copy of the Complaint on August 28, 2002.
On August 30, 2002, Network
Solutions confirmed by e-mail to the Forum that the domain names <ilostmyamericanexpress.com>,
<ilostmyamericanexpress.info>, <ilostmyamericanexpresscard.com>,
<ilostmyamericanexpresscard.info>, <lostamericanexpress.com>,
<lostamericanexpress.info>, <lostamericanexpresscard.com>, and <lostamericanexpresscard.info>
are registered with Network Solutions and that the Respondent is the current
registrant of the names. Network
Solutions has verified that Respondent is bound by the Network Solutions
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 August 30, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 19, 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@ilostmyamericanexpress.com, postmaster@ilostmyamericanexpress.info,
postmaster@ilostmyamericanexpresscard.com, postmaster@ilostmyamericanexpresscard.info,
postmaster@lostamericanexpress.com, postmaster@lostamericanexpress.info, postmaster@lostamericanexpresscard.com,
and postmaster@lostamericanexpresscard.info by e-mail.
A timely Response was
received and determined to be complete on September 17, 2002.
Complainant and
Respondent both filed Additional Submissions in a timely fashion on September
23 and 24, 2002, respectively.
On September 30, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as
Panelist.
RELIEF SOUGHT
Complainant requests
that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends
that the domain names at issue and Complainant’s trademark are identical; that
Respondent has no rights in the domain names at issue; and that the Respondent
acted in bad faith.
B. Respondent
Respondent contends that
the domain names at issue are not identical to a trademark or service mark in
which Complainant has rights; that the domain names at issue do not violate
Complainant’s trademark as they are an address that is generically descriptive
of actual services by Respondent; and that Respondent did not register the
domain names at issue in bad faith.
C. Additional
Submissions
Complainant’s additional
submission re-asserts its contention that Respondent acted in bad faith.
Respondent’s additional
submission re-asserts its contention that it did not act in bad faith.
FINDINGS
Complainant began using
its trademark and trade name in 1850, and has expanded its use to include its
charge card, credit card, smart card, stored value card services, financial
services and travel related services. Complainant
is known worldwide, and has expended billions of dollars in marketing and
promotion its famous mark. Complainant
currently operates a website at <americanexpress.com>.
Respondent operates an
online lost or stolen credit card reporting service at <cardpal.com>, which operates a pay
per occurrence or paid subscription lost or stolen card reporting service for
cards of all kinds.
DISCUSSION
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2) the 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 is the
registered owner of the famous AMERICAN EXPRESS trademark. The domain names at issue pair Complainant’s
marks with the addition of various generic descriptive terms, and the “.com”
and “.info” suffixes. In this case,
coupling the trademark with the various descriptive terms cause more confusion
as the descriptive terms also describe services offered by Complainant. See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Christie’s Inc. v. Tiffany’s Jewelry
Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain
name <christiesauction.com> is
confusingly similar to Complainant's mark since it merely adds the word auction
used in its generic sense); see also Parfums Christian Dior v. 1
Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain
names that added the descriptive words "fashion" or
"cosmetics" after the trademark were confusingly similar to the
trademark).
Rights or Legitimate
Interests
Respondent has not
provided any evidence that would demonstrate rights or legitimate interests in
the domain names at issue. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist).
Further, Complainant has
not licensed or otherwise authorized Respondent to use its famous mark. It appears from the evidence presented that
Respondent is commonly known by Mighty Net, Inc. or Cardpal.com, but is
definitely not commonly known by any of the domain names or any name
incorporating the famous AMERICAN EXPRESS mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
Registration and Use in
Bad Faith
Respondent registered
the domain name at issue 100+ years after Complainant had acquired its
fame. It would appear that Respondent
registered the domain name because of the fame and goodwill associated with
Complainant’s established mark.
Respondent appears to have intentionally attempted to attract, for
commercial gain, Internet users to its website, by creating a likelihood of
confusion as to the source, sponsorship, affiliation or endorsement of the
website. See State Farm Mut.
Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000)
(finding that Respondent registered the domain name <statefarmnews.com>
in bad faith because Respondent intends to use Complainant’s marks to attract
the public to the web site without permission from Complainant); see also
Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109
(eResolution June 12, 2000) (finding bad faith where Respondent used the domain
name <anneofgreengables.com> to link users to a website that contains
information about the Anne of Green Gables literary works, motion pictures and
the author, L. M. Montgomery, where a visitor to the website may believe that
the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored
or endorsed Respondent's web site).
DECISION
As all three elements
required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision
of the Panel that the requested relief be GRANTED.
Accordingly, for all of
the foregoing reasons, it is ordered that the domain names <ilostmyamericanexpress.com>,
<ilostmyamericanexpress.info>, <ilostmyamericanexpresscard.com>,
<ilostmyamericanexpresscard.info>, <lostamericanexpress.com>,
<lostamericanexpress.info>, <lostamericanexpresscard.com>, and <lostamericanexpresscard.info>
be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.), Panelist
Dated: October 14, 2002
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