American Express Marketing & Development Corp. v. Peter Bradbury
Claim Number: FA1008001343911
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill, of American Express Marketing & Development Corp., New York, USA. Respondent is Peter Bradbury (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2010.
On August 30, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 August 31, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@amexzync.biz, postmaster@amexzync.org, postmaster@amexzync.mobi, and postmaster@amexzync.net by e-mail. Also on August 31, 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 October 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 (the "Rules") "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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names are confusingly similar to Complainant’s AMEX mark.
2. Respondent does not have any rights or legitimate interests in the <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names.
3. Respondent registered and used the <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Express Marketing & Development Corp., holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMEX mark (e.g., Reg. No. 1,161,278 registered July 14, 1981). Complainant also holds trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for the AMEX mark (e.g., Reg. No. 329413 registered June 26, 1987). Complainant uses its AMEX mark in connection with a variety of financial services and travel-related services. In addition, Complainant has filed a trademark application with the USPTO for the ZYNC mark (e.g., U.S. Serial Number 77845063), which it uses in connection with its charge card and credit card services. Complainant currently owns the <amexzync.com> domain name.
Respondent, Peter Bradbury, registered the <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names on December 10, 2009. The disputed domain names resolve to a website that displays the message “under construction.”
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 claims rights in the AMEX mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,161,278 registered July 14, 1981) as well as its registrations with the CIPO (e.g., Reg. No. 329413 registered June 26, 1987). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the AMEX mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues that Respondent’s <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names are confusingly similar to its AMEX mark. Respondent fully incorporates Complainant’s mark in the disputed domain names and then merely attaches the descriptive term “zync,” the name of one of Complainant’s products, to the AMEX mark. Respondent also affixes the generic top-level domains (“gTLDs”) “.biz,” “.org,” “.mobi,” and “.net” to Complainant’s mark. The Panel finds the addition of a descriptive term and gTLD to a mark do not sufficiently distinguish a domain name from that mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also 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). Therefore, the Panel finds Respondent’s <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names are confusingly similar to Complainant’s AMEX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first establish Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). After Complainant establishes this prima facie showing, the burden shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain names. The Panel may infer that Respondent lacks rights and legitimate interests based on Respondent’s failure to submit a Response. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, despite Respondent’s failure to respond, the Panel will examine the record to determine whether Respondent possesses rights or legitimate interests in the <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names under Policy ¶ 4(c).
The WHOIS information lists “Peter Bradbury” as the registrant of the disputed domain names, which the Panel finds is not similar to the <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts Respondent’s disputed domain names resolve to a website at the <tellyouramexperiencestory.blogspot.com> domain name. Complainant claims this resolving website displays the message “under construction.” Based on the evidence in the record, the Panel finds Respondent has failed to make active use of the <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names since its registration of the domain names ten months prior to this action. Therefore, the Panel concludes Respondent does not use the disputed domain names for 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). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Prior panels have found failure to make active use of a domain name can qualify as bad faith use when the domain name registration occurred after the complainant acquired rights in a mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO). In this case, Respondent registered the disputed domain names almost three decades after Complainant acquired rights in the AMEX mark through its registration of the mark with the USPTO. Therefore, based on precedent, the Panel finds Respondent’s failure to make active use of the <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names amounts to bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amexzync.biz>, <amexzync.org>, <amexzync.mobi>, and <amexzync.net> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: October 14, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum