American Express Marketing & Development Corp. v. Joseph DeNunzio
Claim Number: FA0904001259348
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 <amexfs.com> and <amexfinancialservices.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 27, 2009.
On April 29, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <amexfs.com> and <amexfinancialservices.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 April 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2009 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 and email@example.com by e-mail.
A timely Response was received and determined to be complete on May 11, 2009.
An Additional Submission was received from Complainant on May 13, 2009 and determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Submission, dated May 14, 2009, was received from Respondent and determined to be timely pursuant to Supplemental Rule 7. Additional correspondence, in the form of an email dated May 21, 2009, was also submitted by Respondent.
On May 18, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant American Express Marketing & Development Corp. (American Express) is a multi-national company with offices worldwide. American Express offers a wide variety of financial services, including charge card, credit card, smart card, and stored value card services, banking and insurance services, as well as travel and travel-related services and rewards programs that are used by millions worldwide. Such services have been offered under the mark AMEX since 1969, which mark Complainant has registered in nearly 100 countries. See Complaint, Exhibit 1. American Express has over 92 million cardholders worldwide. In 2008, Complainant grossed over $28 billion and had over $5 billion in marketing, promotion, rewards, and Cardmember services expenditures worldwide. As such, Complainant submits that the AMEX mark is famous around the world.
Complainant indicates that the disputed domain names, amexfs.com and amexfinancialservices.com, connect to web pages advertising “Financing for Machinery, Equipment and Non-Conforming Real Estate” services. See Complaint, Exhibit 6.
Complainant contends that tacking on “fs” or “financial services” to Complainant’s AMEX mark does not change the fact that Complainant’s AMEX mark remains the prominent feature of the disputed domain names.
Complainant asserts that Respondent has no legitimate rights in the disputed domain names inasmuch as the domain names infringe Complainant’s AMEX mark. “After all,” Complainant asks, “how can there be legitimate use of a domain incorporating trademarks that someone else has already registered?”
Complainant further argues that Respondent is not commonly known by either of the domain names in dispute. Complainant notes that the WHOIS record identifies the Respondent as Joseph DeNunzio and that while Respondent incorporated in California in 2006 under the name “Amex Financial Services,” Complainant asserts that in order to fall within the “commonly known by” language of paragraph 4(c)(ii) of the Policy, a respondent must be commonly known by the domain name before the disputed domain name was registered. The disputed domain names apparently were registered in 2005.
Complainant also argues that Respondent is not providing a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain names. In this regard, Complainant contends that the evidence establishes “Respondent’s bad faith in attempting to capitalize on the goodwill Complainant has established in its marks and in diverting consumers to Respondent’s web site that offers competing services.”
Complainant further contends that Respondent acted in bad faith. It maintains that Respondent’s bad faith registration of the amexfs.com and amexfinancialservices.com domain names may be inferred from the fact that Respondent deliberately chose to register a domain name that entirely incorporated Complainant’s famous AMEX mark and merely add “fs” and “financial services.”
According to Complainant:
It appears that the motivation behind registering the amexfinancialservices.com or amexfs.com Domain Names was to capitalize on the goodwill of Complainant’s mark and on the millions of potential monthly visitors to the American Express web site who might mistakenly type in amexfs.com or amexfinancialservices.com when looking for the Complainant’s web site. There remains a likelihood of consumer confusion and tarnishment of Complainant’s AMEX mark, as Complain[ant] has no control over the domain names or the web sites. One could infer from this conduct that the amexfs.com and amexfinancialservices.com Domain Names are somehow associated with, or endorsed by American Express, which they are not.
With respect to the tarnishment argument, Complainant states that the registrant of the disputed domain names, a licensed broker, has been cited by the California Department of Real Estate and Ordered to Desist and Refrain from violation of Section 10085 of the Business and Professions Code and Section 2970 of Chapter 6, Title 10, California Code of Regulations. Complainant asserts that, while operating his business at the website found at the URLs at issue, Respondent violated the above-mentioned Code and Regulation by “claiming, demanding, charging, receiving, collecting or contracting for the collection of advanced fees.”
Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line locations, by creating a likelihood of confusion with the AMEX mark as to the source, sponsorship, affiliation, or endorsement of its web site or other on-line locations or of a product or service on its web site. According to Complainant, “[i]f consumers are seeking the American Express web site and mistakenly access the Respondent’s site, it is likely that many consumers will assume that the site is affiliated with American Express thereby creating confusion for consumers, disrupting American Express’ business and damaging American Express’ reputation. Respondent’s use of the amexfs.com or amexfinancialservices.com Domain Names will perpetuate consumer fraud. Such interference with the AMEX mark constitutes bad faith use of the Domain Names as defined by Paragraph 4(b) of the Domain Name Dispute Resolution Policy.”
In his Response, Respondent contends as follows:
1. His web site does not display, offer, accept, or advertise charge cards, credit cards, smart card and store value card services, banking and insurance services, travel and travel-related services or rewards programs.
2. He has no cardholders and annual sales of less than $100,000.
3. He does not sell to the public, advertise on TV, radio or in print advertising that is addressed to the public.
4. The word AMEX dates back to 1842 and was first used by the American Stock Exchange.
5. The “fs” was added to the domain name to separate the two names and to shorten the typing in the search engine. The “fs” has no association with American Express. Further, a user must type in amexfs.com and amexfinancialservices.com to access the web site. Without typing in the full web site name, the web site will not open.
6. Using the “Google” and “Yahoo” search engines, a consumer cannot find amexfs.com or amexfinancialservices.com by just typing the word “AMEX.” The consumer must type in the complete name to access the site. See Response, Exhibit A.
7. If a consumer finds one of the challenged sites, there is no “Log In” feature to access a credit card account. The site is designed for business use only.
8. With respect to the action of the California Department of Real Estate, such action was not directed at the web site or web site names or the content of such site. Respondent indicates that he is currently in good standing with the Department. See Response, Exhibit B.
9. The use of “fs” and of the complete name “amexfinancialservices.com” was to disassociate Respondent from American Express.
10. With respect to Complainant’s assertion that the disputed domain names were taken to capitalize and lure consumers away from Complainant’s site, Respondent indicates that information taken for MSN Search Engine “Live” reveals that no amexfs.com or amexfinancialservices.com re-directs are listed. See Response, Exhibit C.
11. Respondent notes that he started using AMEX in his trade name in 1984 and that there are over 265 companies listed in the “superpages.com” that use the name AMEX as part of their trade name listing. See Response, Exhibit D.
C. Additional Submissions
In its Additional Submission, Complainant contends that the disputed sites prominently use the AMEX mark in connection with financial services, services offered by American Express. Indeed, Complainant emphasizes, the homepage of the Respondent’s site has a prominent title reading “AMEX Financial Services.” According to Complainant, “[g]iven that there is an association for consumers with American Express, its AMEX mark and the offering of financial services, consumers will believe that the site is affiliated with or sponsored by American Express.
Complainant further asserts that the fact that Respondent does not have cardholders and has smaller annual sales is irrelevant in determining infringement and violation of the Policy. Moreover, Complainant adds, the instant dispute is not between American Express and the American Stock Exchange.
Complainant also indicates that the addition of generic terms, such as financial services, does not mitigate confusion. “In fact, using generic terms that reflect the services offered under the trademark owner’s mark … can increase the likelihood of confusion.”
Complainant also argues that the majority of internet users use natural searches and that the use of AMEX in a domain name will result in third parties seeking the American Express site being diverted to Respondent’s site. According to Complainant, if Internet searchers do not find the American Express site, they may not look further to find American Express, thus interfering with the ability of American Express to conduct its business on the internet.
Finally, Complainant reemphasizes the action taken by the California Department of Real Estate against Respondent in connection with the operation of his business at the website found at the domain names in issue. Noting that it has no control over the Respondent’s business, Complainant contends that “so long as Respondent owns and operates the websites at issue, there is continuing infringement and ongoing risk that the actions of the company could result in tarnishment to the AMEX brand.
Respondent, in his Additional Submission, contends as follows:
1. His web site offers financial services, such as commercial real estate loans, equipment loans and leases to businesses. He is not engaged in consumer lending and does not offer any goods or services competitive with those offered by Complainant.
2, Based on a search of a computer telephone directory, there are 13 companies offering financial services under the name “Amex Financial Services.” American Express was not one of the companies listed.
3, The disputed web site contains no information about American Express or of any products or services offered by American Express.
4. Respondent was acting in good faith when he purchased the domain names in issue. Respondent contends that he was acting on the advice of a third party in registering the domain names in issue. Due diligence was performed to insure that adding the “fs” to the domain name would further distance it from American Express.
5. Complainant has not presented any evidence to substantiate its contention regarding the fame of the AMEX mark.
6. Noting that American Express, in its Additional Submission, referred to a number of UDRP decisions that resulted in domain names containing “AMEX” being transferred to Complainant, Respondent asserts that the instant proceeding should be immediately suspended until Complainant produces specific allegations pertinent to this case and “how the outcome of each case was a similar factor in this case dispute.”
7. Respondent refers to its Exhibit D and contends that such exhibit establishes that 265 companies use a combination of the words “Amex,” “Financial,” or “Services” in their trade names.
8. In response to Complainant’s assertion that a majority of internet users use natural searches and that the use of “amex” in a domain name will result in third parties seeking Complainant’s site being diverted to Respondent’s site, Respondent indicates that he tested this claim and found no redirects from his web site.
9. With respect to the action of the California Department of Real Estate, Respondent declares that the issue before the Department has no relevance with respect to this domain name dispute.
10. Respondent points out that he purchased the domain names in issue in good faith from an authorized third party and that such third party “made no claims or flagged comments to a possible conflict with American Express.”
The Panel finds that: (1) the disputed domain names are confusingly similar to the mark AMEX; (2) Complainant has rights in the AMEX mark; (3) Respondent has no rights or legitimate interests in the disputed domain names; and (4) the domain names were registered and are in being used in bad faith.
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.
The Panel finds that the disputed domain
names, amexfinancialservices.com and amexfs.com, are confusingly similar to the
AMEX mark. The disputed domain names
contain the AMEX mark in its entirety, merely adding a descriptive term, i.e.,
“financial services,” or an admittedly shortened version of such term, i.e.,
“fs.” See, e.g., Kohler Co. v. Curley,
FA 890812 (Nat. Arb. Forum March 5, 2007) (finding confusing similarity where
kohlerbaths.com contained complainant’s mark in its entirety adding the
descriptive term “baths”). Nor does the
addition of a generic top-level domain, such as “.com,” serve to adequately
distinguish the domain names from Complainant’s mark. See,
e.g., Jerry Damson, Inc. v.
The Panel further concludes that the evidence establishes that Complainant has rights in the AMEX mark. The evidence supports a determination that Complainant owns nearly 300 trademark registrations for the AMEX mark around the world and that such mark has been in use since 1969, and is heavily advertised and promoted.
While Respondent has submitted evidence from superpages.com showing that over 265 companies use the term “AMEX” as part of their trade name, such evidence does not defeat Complainant’s rights in the AMEX mark. The consensus view among ICANN panelists is that if a complainant owns a registered trademark, it satisfies the threshold requirement of having trademark rights. See Uniroyal Engineered Products, Inc. v. Nauga Network Services D2000-0503 (WIPO July 18, 2000).
The Panel concludes that Complainant has met its burden of establishing that Respondent does not have rights or legitimate interests in the disputed domain names. There is no evidence that Respondent, Joseph DeNunzio, is commonly known by either of the disputed domain names or that he is making a legitimate noncommercial or fair use of the domain name. Moreover, in view of the Panel’s determination that the disputed domain names are confusingly similar to Complainant’s AMEX mark, it cannot be held that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services.
The Panel finds that Respondent, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line locations, by creating a likelihood of confusion with the AMEX mark as to the source, sponsorship, affiliation, or endorsement of its web site or other on-line locations or of a product or service on its web site, within the meaning of paragraph 4(b)(iv) of the Policy. As determined above, the disputed domain names incorporate in full Complainant’s AMEX mark. As such, and given that Complainant uses the AMEX mark in connection with financial services and that the term “financial services” or its shortened version, “fs,” is used as part of the disputed domain names, Internet users are likely to believe that Respondent’s site is sponsored or affiliated with Complainant. Respondent’s contention that Internet users will not access Respondent’s site simply by typing the word “Amex” does not change the fact that consumers, upon encountering the domain names in dispute, are likely to access Respondent’s site under the mistaken impression that such site is sponsored or affiliated with Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amexfs.com> and <amexfinancialservices.com> domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: June 3, 2009
 This submission appears untimely under Supplemental Rule 7 and in violation of the rule limiting a party to only one additional submission. As such, it has not been considered by the Panel in reaching its decision.
 The Panel declines Respondent’s invitation to suspend the instant proceedings. The Panel recognizes that each proceeding brought under the UDRP must be decided based upon its own particular facts and emphasizes that this proceeding was so decided.
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