American Express Company v. Mighty Net, Inc.
Claim Number: FA0208000123890
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.
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.
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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com 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.
Complainant requests that the domain names be transferred from Respondent to 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.
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.
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.
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).
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
Dated: October 14, 2002
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