American Express Marketing & Development Corp. v. Rampe Purda
Claim Number: FA1003001316160
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 <personalsavingsamericanexpress.com>,
registered with
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on March 29, 2010. The Complaint was
submitted in both Finnish and English.
On April
13, 2010, Hebei Guoji Maoyi (
On April 19, 2010, the Forum served the Finish language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@personalsavingsamericanexpress.com. Also on April 19, 2010 the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <personalsavingsamericanexpress.com> domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <personalsavingsamericanexpress.com> domain name.
3. Respondent registered and used the <personalsavingsamericanexpress.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Express
Marketing & Development Corp., holds multiple trademark registrations for
its AMERICAN EXPRESS mark with the United States Patent and Trademark Office
(“USPTO”) (e.g., Reg. No. 1,024,840 issued
November 11, 1975) in connection with a wide variety of goods and services
including gift card, charge card, credit card, smart card and stored value card
services, travel and travel related services, and banking and insurance
services that are used by millions worldwide.
Respondent, Rampe Purda, registered the disputed domain name on September 23, 2009. The disputed domain name resolves to a parked website featuring links to credit card programs that are direct competitors of Complainant. Respondent likely collects click-through fees from these links.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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.
Complainant asserts rights in its AMERICAN EXPRESS mark
through its holding of multiple trademark registrations for the AMERICAN
EXPRESS mark with the USPTO (e.g., Reg.
No. 1,024,840 issued November 11, 1975).
The Panel finds that Complainant has established rights in its AMERICAN
EXPRESS mark pursuant to Policy ¶ 4(a)(i) through its tradmark regsitrations
with the USPTO.
Complainant argues that
Respondent’s <personalsavingsamericanexpress.com> domain name is confusingly similar to
Complainant’s AMERICAN EXPRESS mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is confusingly
similar to Complainant’s mark as Respondent’s disputed domain name incorporates
the entirety of Complainant’s mark and adds the descriptive terms “personal
savings” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the
descriptive terms “personal savings” creates a confusing similarity between the
disputed domain name and Complainant’s mark.
See Allianz of Am. Corp. v. Bond, FA 680624
(Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term
“finance,” which described the complainant’s financial services business, as
well as a gTLD, did not sufficiently distinguish the respondent’s disputed
domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14,
2004) (“In the view of the Panel, the disputed domain names are confusingly
similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN
EXPRESS or AMEX marks in its entirety and merely adds nondistinctive,
descriptive and generic terms, some of which describe Complainant’s business.”). The Panel also finds that the addition of a
gTLD is irrelevant for purposes of Policy ¶ 4(a)(i)
analysis. 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 Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its
allegations, then the burden shifts to Respondent to prove it has rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel
finds that based on the arguments in the Complaint, Complainant has established
a prima facie case in support of its
contentions and Respondent has failed to submit a Response to these
proceedings. See Towmaster,
Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant
must first make a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and
then the burden shifts to Respondent to show it does have rights or legitimate
interests.”); see also F. Hoffmann-La
Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb.
1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that
the burden of proof shifts from the Complainant to the Respondent once the
Complainant has made out a prima facie case that the Respondent has no rights
or interests in the domain names.”).
The WHOIS information for the disputed domain name lists the registrant as “Rampe Purda.” Complainant asserts that Respondent is not a licensee of, affiliated with, or authorized by Complainant to use its mark in a domain name or in any other way. Respondent’s failure to provide any evidence to the contrary results in the Panel finding that Respondent is not commonly known by the disputed domain name pursuant to 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <personalsavingsamericanexpress.com>
domain name
was registered on September 23, 2009.
The disputed domain name resolves to a parked website featuring links to
Complainant’s competitors in the credit card and financial services
industry. The Panel presumes that
Respondent receives click-through fees from these linked websites. The Panel finds that Respondent’s use of the
disputed 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 Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat.
Arb. Forum Feb.
13, 2007) (finding that the respondent was not using the
<tesco-finance.com> domain name in connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use by maintaining a
web page with misleading links to the complainant’s competitors in the
financial services industry); see also Metro. Life
Ins. Co. v. Bonds,
FA 873143 (Nat. Arb.
Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name
to divert Internet users to competing websites does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to redirect
Internet users who are seeking information on Complainant’s products and
services to a website with links to Complainant’s competitors in the credit
card and financial services industry which interferes with Complainant’s
business. The Panel finds that
Respondent’s use of the disputed domain name constitutes a disruption of
Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See
The Panel finds that Respondent’s use of the disputed domain name to collect click-through fees from the linked websites that resolve from the disputed domain name by intentionally attracting Internet users who seek Complainant’s products and services is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <personalsavingsamericanexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 20, 2010
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