American Express Company v. Bung Ran, Lee
Claim Number: FA0209000126638
PARTIES
Complainant
is American Express Company, New
York, NY, USA (“Complainant”) represented by Dianne K. Cahill, of American
Express Company. Respondent is Bung Ran, Lee, Inchon, SOUTH KOREA
(“Respondent”)
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <american-express.com>,
registered with NetPia.com.
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.
James
A. Crary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 27, 2002; the Forum received a hard copy of the
Complaint on September 25, 2002.
On
September 29, 2002, NetPia.com confirmed by e-mail to the Forum that the domain
name <american-express.com> is
registered with NetPia.com and that Respondent is the current registrant of the
name. NetPia.com has verified that
Respondent is bound by the NetPia.com 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 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 23,
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@american-express.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 15, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Crary as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Respondent’s
<american-express.com> domain
name is identical to Complainant’s registered AMERICAN
EXPRESS mark.
2.
Respondent
does not have rights to or legitimate interests in the <american-express.com> domain name.
3.
Respondent
registered and used the <american-express.com>
domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
FINDINGS
Complainant has provided travel and
financial services worldwide for over one and a half centuries. The AMERICAN
EXPRESS mark has been maintained and used continuously from that point forward.
Complainant has numerous marks registered with the United States Patent and
Trademark Office (“USPTO”). Among these, the AMERICAN EXPRESS mark is listed
with the USPTO on the Principle Register (e.g., Reg. No. 1,024,840). Moreover,
the AMERICAN EXPRESS and other such formative marks are registered in several
other countries, including South Korea, where the Respondent is listed as
residing.
In 2001, Complainant grossed over $22
billion in revenue and spent over $1.3 billion in marketing and promotion
worldwide. Complainant extensively advertises its marks and services through
all forms of the media. In the course of such an extensive marketing program,
the AMERICAN EXPRESS mark has become internationally famous, and commonly
associated with a worldwide travel and financial corporation.
Complainant also maintains the domain
name <americanexpress.com>. At the
<americanexpress.com> website, consumers can access and conduct
business with Complainant. Complainant receives over 70 million visits to its
website per year. The <americanexpress.com> website had been established
and in use prior to the registration of the disputed domain name, <american-express.com>.
Respondent registered the disputed domain
name on June 28, 2001. Respondent’s disputed domain name and corresponding
website is currently “under construction.” The website states “welcome to the
American-Express” and “American Express transportation service”. There is no indication of the services to be
provided by the website.
DISCUSSION
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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant
has established rights in the AMERICAN EXPRESS mark through registration with the
USTPO and subsequent continuous use of the mark.
Respondent’s <american-express.com>
domain
name is identical to Complainant’s AMERICAN EXPRESS mark. Respondent
incorporates Complainant’s entire mark in its domain name. Given the fame and
international recognition of Complainant’s mark, the mere addition of a hyphen
is not adequate to create a distinct and unique domain name that is not
confusingly similar. Chernow
Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); InfoSpace.com v. Tenenbaum
Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name
‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The
addition of a hyphen and .com are not distinguishing features”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has thus been satisfied.
Rights or Legitimate Interests
Respondent has not submitted a reply to
Complainant’s allegations, thereby permitting the Panel to conclude that all
reasonable inferences made by Complainant are true and accurate unless there is
evidence that is clearly contradictory.
Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true); Desotec N.V. v. Jacobi Carbons AB, D2000-1398
(WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that
Complainant’s allegations are true unless clearly contradicted by the
evidence). There is no evidence that
contradicts the allegations of Complainant.
Complainant has presented evidence that substantiates its claim that
Respondent has no legitimate rights or interests in the contested domain name.
Respondent deliberately registered the
disputed domain name to capitalize on Complainant’s commonly known mark. Moreover, Respondent used Complainant’s mark
to intentionally divert Internet consumers to its website. There are no rights
or legitimate interests when one tries to benefit from the unauthorized use of
another’s mark by diverting Internet traffic to its website. Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); Big
Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding
no legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks).
There has been no evidence submitted to
indicate that Respondent has a substantial affiliation with, or is known by the
<american-express.com> name. Complainant has established itself as
the sole possessor of all legitimate rights and interests in the name AMERICAN
EXPRESS. Since Respondent has not come forward with a viable alternative rationalization for its use of Complainant’s registered mark,
and uses an identical domain name to direct users to its website, it can be
deduced that Respondent has no rights to the domain name according to Policy ¶
4(c)(ii). 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); Nike, Inc. v.
B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or
legitimate interests where one “would be hard pressed to find a person who may
show a right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark).
Finally, the disputed domain name is
currently “under construction.” However, this assertion standing alone is not
sufficient to satisfy the burden of proof in showing rights and/or legitimate
interests in the contested domain name. See Hewlett-Packard
Co. v. Rayne, FA 101465 (Nat. Arb. Forum
Dec. 17, 2001) (finding that the “under construction” page, hosted at the
disputed domain name, did not support a claim of right or legitimate interest
under Policy ¶ 4(a)(ii))
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has thus been satisfied.
Registration and Use in Bad Faith
Respondent has
registered and is using the disputed domain name in bad faith. Complainant’s
registered mark AMERICAN EXPRESS is
registered with the relevant South Korean trademark authorities. Respondent was
placed on constructive notice by virtue of Complainant’s registration of the
marks in South Korea, Respondent’s purported place of domicile. Respondent’s
registration of the disputed domain name thereafter, containing the distinctive
service mark, is an indication of bad faith registration. Exxon
Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given the worldwide
prominence of the mark and thus Respondent registered the domain name in bad
faith); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002) (holding that “there is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks, actually
or constructively”).
As stated
previously, Complainant is a well-known international business enterprise and
its name and service marks are well renown through extensive marketing and
advertising. Respondent has capitalized on Complainant’s marks as well as
reputation by registering and using a domain name that is identical to the
registered marks. The facts of this case suggest that Respondent is engaged in
opportunistic bad faith. Respondent is using Complainant’s mark in its
entirety; the mark is very well known and has been in use for over 100 years;
and, Respondent has failed to allege any good faith basis for use of the
disputed domain name. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding bad faith when (1) the domain name contains Complainant’s mark in its
entirety, (2) the mark is a coined word, well-known and in use prior to
Respondent’s registration of the domain name, and (3) Respondent fails to
allege any good faith basis for use of the domain name); see also Chanel, Inc. AG v. Designer Exposure,
D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use
of the famous CHANEL mark suggests opportunistic bad faith).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has thus been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel hereby concludes that the requested
relief shall be GRANTED.
Accordingly, it is ordered that the
domain name <american-express.com> be TRANSFERRED from Respondent
to Complainant.
James A. Crary, Panelist
Dated: November 23, 2002
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page