American Express Marketing & Development Corp. v. Kashif Ismail
Claim Number: FA0910001288623
Complainant is American Express Marketing & Development Corp. (“Complainant”),
represented by Dianne K. Cahill, of American Express Marketing & Development Corp.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amexmerchants.com>, registered with Moniker.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2009.
On October 11, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <amexmerchants.com> domain name is registered with Moniker and that the Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 5, 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 by e-mail.
A timely deficient Response was received and determined to be complete on October 17, 2009.
On November 12, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant began using its AMEX trademark in 1969 for a wide variety of travel related services and financial service. Complainant a multi-national company with offices worldwide uses the AMEX mark in connection with 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. Complainant currently has over 92 million cardholders worldwide, with cardholders and consumers of its varied services spanning the globe. In 2008, Complainant grossed over $ 31 billion in revenue and had over $ 5 billion in expenditures worldwide in connection with marketing, promotion, rewards and Cardmember services. The American Express card is accepted at millions of merchants or service establishments around the world. American Express extensively advertises its trademarks and services through television, radio and print advertising, through statement inserts, through brochures available at merchant sites and on <americanexpress.com>. As such, the AMEX trademark and name is famous and in wide use worldwide.
In American Express Company v. MustNeed.com, the National Arbitration Forum found that “Respondent intentionally registered a domain name that contains in its entirety Complainant’s well-known mark…” That domain name was <amextravel.com>. (See American Express Company v. MustNedd.com, FA 257901 (NAF June7, 2004) attached hereto as Exhibit 2.). A similar situation exists with the domain name at issue herein.
The strength of complainant’s AMEX mark is further evidenced through its listing in both the 30th edition of Acronyms, Initialisms & Abbreviations Dictionary and the Internet search finder acronymfinder.com. This clearly demonstrates that AMEX is a commonly used acronym to refer to Complainant. Complainant also submits excerpts from news articles from a Nexis search for a recent 60 day period showing that AMEX is synonymous with American Express. Over 400 articles were found where American Express is referred to as “AMEX” around the world. Demonstrating that third parties commonly refer to the Complainant as AMEX. Accordingly, Complainant submits that Complainant is recognized as AMEX and famous around the world.
Tacking on “merchants,” a descriptive term, to Complainant’s AMEX marks does not change the fact that Complainant’s AMEX mark remains the prominent feature of the disputed domain name. Numerous ICANN decisions have held that the addition of a non-distinctive, descriptive or generic term does not change the overall impression of a domain name.
Given the AMEX association with American Express, when consumers enter <amexmerchants.com> and are not connected to an American Express web site, they will be confused as to (1) whether Respondent and/or its web site is approved of or affiliated on some way with American Express and/or (2) whether the <amexmerchants.com> Domain name and/or web sites are endorsed, authorized or sponsored by American Express Company. None of which is in fact true.
Currently <amexmerchants.com> connects to a pay-per-click web page advertising not only Complainant’s services, but that of Complaint’s competitors as well. Moreover, the Respondent combines “Amex” and “merchants” in its <amexmerchants.com> Domain Name, further acknowledging the association between the AMEX mark and the term “merchant”. It appears that the only motivation for registering the <amexmerchants.com> domain name was to capitalize on the millions of potential monthly visitors to the American Express web site who might mistakenly type in <amexmerchants.com> when looking for the Complainant’s financial services or merchant web sites. There remains a likelihood of consumer confusion and tarnishment of Complaint’s AMEX mark, as Complaint has no control over the <amexmerchants.com> domain name, the web site or the business activities associated with the website and linked to from the website. One could infer from this conduct that the <amexmerchants.com> domain name or the web site is somehow associated with or endorsed by American Express, which they are not.
Complainant works with third party merchants to provide its card services in connection with those merchants sale of products and services to American Express cardmembers. By combining Complainant’s AMEX mark and the word “merchants”, Respondent has merely described services offered by Complainant. The content of the website <amexmerchants.com> reinforces the descriptive nature of the term “merchants” and does not serve to differentiate the <amexmerchants.com> domain name from Complainant’s AMEX mark.
Given the foregoing, registration and use of <amexmerchants.com> by Respondent is likely to cause confusion given the obvious connection between the <amexmerchants.com> domain name and American Express. As a result, registration and use of <amexmerchants.com> by the Respondent will result in consumer confusion as to source and tarnishment of the Complainant’s marks and name.
The <amexmerchants.com> Domain Name involves an infringing use of a domain name that incorporates a registered mark that Complainant has been using, prior to the Respondent’s use. As for legitimate interests, therefore, Respondent does not have any legitimate interest in <amexmerchants.com> because any use of “AMEX” infringes American Express prior use of and registrations for “AMEX” and other AMEX marks. After all, how can there be legitimate use of a domain name incorporating trademarks that someone else has already registered?
Both the fame of Complainant’s AMEX mark and the WHOIS contact information – provided by the Registrar – for the <amexmerchants.com> domain name compels the inference that Respondent is not “commonly known by” the name AMEX, or of the Domain Name. Respondent is not commonly known by <amexmerchants.com>, the disputed domain name, pursuant to Policy 4(c)(ii), as WHOIS record, provided by Registrar, reflect that Respondent clearly identifies itself as Kashif Ismail.
In August 2009, Complainant’s attorney started communicating with Kashif Ismail regarding Complainant’s objection to the Respondent’s use and registration of <amexmerchants.com>. Mr. Ismail responded that: 1) he had acquired the domain name at auction; 2) he paid $ 670 for the domain name; and 3) the asking price for the Complainant for purchase the domain name was $ 1500.
Registration of <amexmerchants.com> with no legitimate rights in or connection to the “AMEX” name demonstrates 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. Thus, Respondent is not providing a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of Policy 4(c)(i) & (iii).
Based on the famous nature of Complainant’s AMEX mark, the Respondent had notice of Complainant’s mark and selected the <amexmerchants.com> domain name to intentionally capitalize on the goodwill Complainant has established in its AMEX trademark to divert consumers seeking American Express to Respondent’s web site. Due to the virtually identical nature of the <amexmerchants.com> domain name to Complainant’s world famous AMEX mark, Respondent knew that registration and use of <amexmerchants.com> would result in a likelihood of confusion with American Express and would result in diversion of consumers to Respondent’s web site. It appears that the only interest Respondent has in the <amexmerchants.com> domain name is to divert online traffic, trade on the goodwill and reputation earned by American Express and extort money from Complainant.
Respondent does not have a legitimate interest in using the domain name incorporating the “AMEX” name and mark, as it was not commonly known by the disputed domain name and Complainant has longstanding priority of rights to use “AMEX” and Complainant certainly has not given Respondent permission to use its marks. Based on the foregoing, Respondent does not have a legitimate interest in using the disputed domains.
The value of the <amexmerchants.com> domain name rests in the appropriation of the AMEX mark. As indicated above, complainant is the owner of over 300 AMEX trademark registrations around the world. Complainant has used its AMEX mark continuously since 1969, making the AMEX mark famous around the world. Accordingly, under the law, Complainant may protect against infringement and tarnishment of its trademarks.
Moreover, evidence that Respondent registered the <amexmerchants.com> domain name in bad faith can be inferred from the fact that Respondent deliberately chose to register a domain name that entirely incorporated Complainants famous AMEX mark and merely added “merchants,” which refers to the millions of merchants or service establishments that accept the American Express card. Registration with actual or constructive knowledge of a trademark holder’s rights in a mark is evidence of bad faith registration.
Furthermore, Respondent tried to extort $ 1500 from the Complainant for transfer the infringing domain name to Complainant.
Further, there is no affiliation between Respondent and Complainant. The Complainant has no control over the nature and quality of the Respondent’s web site or services or where the domain name resolves. Therefore, the valuable reputation of American Express and its AMEX mark are likely to be diminished, diluted and tarnished by association with Respondent and his uncontrolled use of the mark and web site.
It appears that the motivation behind registering the <amexmerchants.com> domain name 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 <amexmerchants.com> when looking for the Complainant’s web site and/or for a merchant that accepts the American express Card. Moreover, the Respondent though he could make a profit of the purchase of the name by trying to extort monies from the Complainant. There remains a likelihood of consumer confusion and tarnishment of Complainant’s AMEX mark, as Complaint has no control over the domain name or the web site. One could infer from this conduct that the <amexmerchants.com> domain name is somehow associated with, or endorsed by American Express, which it is not.
As indicated above, Respondent’s use of virtually identical domain name
to Complainant’s trademark is likely to cause confusion for consumers searching
the Internet and to tarnish the goodwill and integrity the Complainant has
developed in its AMEX trademark since it first began use of its AMEX mark in
1969. As you can see from the forgoing, Complainant has significant,
widespread, longstanding, and continuous use of “AMEX” in numerous countries
throughout the world, including
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. If 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 and merchants, disrupting Complainant’s business and damaging Complainant’s reputation. Respondent’s use of the <amexmerchants.com> domain name will perpetuate consumer fraud. Such interference with the AMEX mark constitutes bad faith use of the Domain Name as defined by Paragraph 4(b) of the Domain Name Dispute Resolution Policy.
Complainant made several good faith attempts to resolve this matter with the Respondent short of filing this Complaint. Despite these attempts, Respondent has continued to willfully infringe Complainant’s rights in the famous AMEX mark. Complainant files this complaint to protect the goodwill it has established in its AMEX trademark and to protect merchants and consumers from confusion. For these reasons, the Panelist should find that Respondent registered and used the <amexmerchants.com> Domain name that incorporates Complainant’s mark in bad faith. In light of Respondent’s foregoing bad faith use of the <amexmerchants.com> Domain Name, this complaint is now filed requesting transfer of the Domain Name to the complainant, American Express.
In his Response Respondent stated the following:
“Thank you so much for contacting us.
We have also received the copies through DHL.
Well, I want to solve this matter as soon as possible. I have bought this domain from a domain auction at the price of 600 US $ and registered it until 2018.
Totally we have invested 700 $ in it.
When I was buying this domain there were no bad intentions in my mind. If so I might have many Amex domains. As their are 10,000+ registered domains having "Amex" word in it. I have already sent them a list of few domains. They looks interested only in this domain.
The domain AmexMerchants.com is clearly though its name, To develop a website where we provide a list of those merchants who process Amex or American Express credit cards. As you know not all merchants support American express credit card. So what is the band faith in it ?
Second as they said that I have placed misleading links on the index page of AmexMerchants.com.
The domain is parked with Sedo.com I have no control over the ads appear on it. There are 12 million domains parked at Sedo.com showing random ads on index pages.
Above are only few arguments defending my position. All I wanna say is that I want to resolve the issue but I also don't want to loose money. So please be practical and find a middle way to sort it out. If you have any further questions/Queries please let me know.
The Panel finds that:
1. the Domain Name <amexmerchants.com> is confusingly similar to Complainant’s marks,
2. the Respondent has not established any right or legitimate interest in the Domain Name <amexmerchants.com> and
3. the Respondent has registered and is using the Domain Name <amexmerchants.com> 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.”
Although Respondent has
provided a Response that was deficient because a hard copy of the Response was
not received before the Response deadline, the Panel decides to consider
Respondent’s submission. See Strum v.
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 Complainant
has established rights in the AMEX mark pursuant to Policy ¶ 4(a)(i) through Complainant’s registration of the mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,161,278 issued
July 14, 1981). See Miller Brewing
Complainant argues that Respondent’s <amexmerchants.com> domain name is confusingly similar to Complainant’s AMEX mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Respondent’s disputed domain name contains Complainant’s mark in its entirety, adds the generic term “merchants,” and adds the generic top-level domain (“gTLD”) “.com.” As a result the Panel finds that the addition of a generic or descriptive term such as “merchants” to a registered mark in a disputed domain name creates a confusing similarity between the disputed domain name and the registered mark. 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 the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Additionally, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel rules that Respondent’s <amexmerchants.com> domain name is confusingly similar to Complainant’s AMEX mark pursuant to Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is not commonly known by the <amexmerchants.com> domain name pursuant to Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the registrant of the disputed domain name as “Kashif Ismail” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondents disputed domain name resolves to a website offering third-party links to Complainant’s competitors in the credit card industry. The Panel finds that this type of use of an allegedly confusingly similar domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Additionally, Complainant presents evidence that Respondent offered to sell the disputed domain name for an amount in excess of the out-of-pocket costs needed in order to register the disputed domain name. The Panel finds that Respondent’s offer to sell the disputed domain name for a price in excess of Respondent’s out-of-pocket costs is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Respondent’s apparent offers to sell the disputed domain name to Complainant for an amount in excess of Respondent’s out-of-pocket expenses is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
The Panel further finds that Respondent’s registration and use of the <amexmerchants.com> domain name to display links to Complainant’s competitors in the credit card industry on the resolving website constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The Panel finds Respondent’s use of the <amexmerchants.com> domain name in order to intentionally attract Internet users to its website by creating a strong possibility of confusion with Complainant’s AMEX mark and offering links to competing websites is further evidence of bad faith. In addition, the Panel is of the view that Respondent receives click-through fees for diverting Internet users to such websites and thus profits from this use. Consequently, pursuant to Policy ¶ 4(b)(iv), the Panel rules such use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, pursuant to Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amexmerchants.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: November 25, 2009
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