American Express Company v. Americaexpress.com
Claim Number: FA0210000128700
Complainant is American Express Company, New York, NY, USA (“Complainant”) represented by Dianne K. Cahill, of American Express Company. Respondent is Americaexpress.com, Gdynsk, POLAND (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaexpress.com>, registered with Tucows.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 24, 2002; the Forum received a hard copy of the Complaint on October 25, 2002.
On October 25, 2002, Tucows confirmed by e-mail to the Forum that the domain name <americaexpress.com> is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 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 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 December 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <americaexpress.com> domain name is confusingly similar to Complainant’s registered AMERICAN EXPRESS mark.
2. Respondent does not have rights to or legitimate interests in the <americaexpress.com> domain name.
3. Respondent registered and used the <americaexpress.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant has used the AMERICAN EXPRESS mark since 1850. Complainant has numerous marks registered with the United States Patent and Trademark Office (“USPTO”). Complainant holds numerous registrations for the mark on the Principal Register (e.g., Reg. Nos. 1,024,840; 1,032,516). Complainant has also registered its AMERICAN EXPRESS mark in several other countries, including Poland, where the Respondent is listed as residing (e.g., Polish Registration No. 75,520). Complainant has provided services in Poland for at least 75 years, and has maintained offices there for over 10 years.
In 2001, Complainant grossed over $22 billion in revenue, and spent over $1.3 billion marketing and promoting the AMERICAN EXPRESS mark worldwide. Complainant extensively advertises its mark 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 registered, and in use, prior to the registration of the disputed domain name, <americaexpress.com>.
Respondent registered the disputed domain name on May 17, 1998. Respondent’s disputed domain name redirects Internet traffic to <megago.com>. This website includes links to, inter alia, financial services, credit card services, travel and travel related services, gifts and business services, all of which Complainant provides. Respondent does not have a license or permission to use the AMERICAN EXPRESS mark.
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. Complainant has also established rights in the AMERICAN EXPRESS mark through registration with the relevant Polish trademark registration authorities and subsequent continuous use of the mark in Poland.
Respondent’s <americaexpress.com> domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark. The only difference between Complainant’s well-known AMERICAN EXPRESS mark and the disputed domain name is the deletion of the “n” in “American.” Given the fame and international recognition of Complainant’s mark, the mere deletion of a letter is not adequate to create a distinct and unique domain name capable of overcoming a claim of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has thus been satisfied.
Rights or Legitimate Interests
Respondent has failed to Respond, therefore, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent registered the disputed domain name to capitalize on Complainant’s commonly known mark. Moreover, Respondent used Complainant’s AMERICAN EXPRESS mark to divert Internet users to the website, <megago.com>. This type of use is not considered to give rise to rights and legitimate interests pursuant to Policy ¶ 4(c)(i), nor is it considered to be a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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); see also 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 is no evidence on record that Respondent is commonly known by AMERICA EXPRESS, or <americaexpress.com>. Because Respondent has failed to present any evidence that it is known by the disputed domain name to the Panel, the Panel may infer that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered the disputed domain name in bad faith. Complainant’s AMERICAN EXPRESS mark is registered with the relevant Polish trademark authorities. Therefore, Respondent was placed on constructive notice by virtue of Complainant’s registration of the marks in Poland, Respondent’s place of domicile. Respondent’s registration of the disputed domain name despite knowledge of Complainant’s mark is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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”).
Complainant is a well-known travel and financial services provider and its name is recognized throughout the world. Respondent has capitalized on Complainant’s AMERICAN EXPRESS mark by registering and using a domain name that is confusingly similar to attract Internet traffic to <megago.com>. It can be inferred that Respondent makes a profit from the Internet traffic that it directs to this website. Therefore, Respondent is using the disputed domain name in order to create Internet user confusion for Respondent’s commercial gain. This type of behavior is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <americaexpress.com> be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin
Justice, Supreme Court, NY (Ret.)