American Express Marketing & Development Corp. v. Robert Hakim / Premiere Travel
Claim Number: FA1010001352373
Complainant is American Express Marketing & Development Corp. ("Complainant"), represented by Dianne K. Cahill of American Express Marketing & Development Corp., New York, USA. Respondent is Robert Hakim / Premiere Travel ("Respondent"), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <americanexpressvacations.info> and <americanexpressvacations.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.
Robert T. Pfeuffer, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2010; the National Arbitration Forum received payment on October 15, 2010.
On October 15, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <americanexpressvacations.info> and <americanexpressvacations.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@americanexpressvacations.info and postmaster@americanexpressvacations.net. Also on October 18, 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.
A timely Response was received and determined to be complete on November 1, 2010.
On November 14,2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, American Express Marketing & Development Corp., states it provides a variety of financial services and travel related services. Complainant also states it owns and operates a website resolving from the <americanexpressvacations.com> domain name. Complainant claims rights in the AMERICAN EXPRESS mark through its numerous registrations of the mark with the United States Patent and Trademark Office (“USPTO”) and with trademark authorities around the world.
Complainant claims it has acquired common law rights to the AMERICAN EXPRESS mark through secondary meaning in the mark. Complainant alleges it began using the AMERICAN EXPRESS mark in 1850. Complainant further alleges that it operates one of the world’s largest travel agency networks with locations in over 140 countries. In addition, Complainant states it has over 88 million cardholders worldwide. Complainant asserts that it grossed $24.5 billion in revenue in 2009 and spent over $6 billion in marketing, promotion, rewards, and card member expenditures worldwide. Complainant also states it receives over 60 million visits per month to its <americanexpress.com> website. Finally, Complainant cites a prior UDRP decision in which the panel found Complainant has rights in the AMERICAN EXPRESS mark.
Complainant avers Respondent’s <americanexpressvacations.info> and <americanexpressvacations.net> domain names are confusingly similar to its AMERICAN EXPRESS mark. Complainant argues that Respondent fully incorporates its mark in the domain name and then merely omits the space between the words in the mark. Complainant also contends Respondent attaches the descriptive term “vacations,” which references Complainant’s travel services, to its mark in the domain names. Lastly, Complainant contends that adding the generic top-level domains (“gTLDs”) “.net” and “.info” to its mark does not negate a finding of confusingly similar.
Complainant asserts that Respondent is not its affiliate and that Complainant has not licensed or authorized Respondent to use its AMERICAN EXPRESS mark in a domain name. Furthermore, the WHOIS information lists “Robert Hakim / Premiere Travel” as the registrant of the disputed domain name, which the Panel may find is not similar to the <americanexpressvacations.info> and <americanexpressvacations.net> domain names.
Complainant claims that Respondent uses the domain names to resolve to websites that provide hyperlinks to third-party websites that offer travel services and credit card programs that compete with Complainant’s business. Complainant further claims that Respondent profits from its use of the disputed domain names through the receipt of click-through fees.
Complainant alleges that Respondent offered to sell the disputed domain names to Respondent after Complainant contacted Respondent about the disputed domain names
Complainant alleges that Respondent’s domain names redirect Internet users to websites that offers links to Complainant’s competitors. Complainant claims that Respondent admitted to Complainant’s outside counsel that it registered the domain names with the intention of redirecting Internet users to its website. Complainant argues that this behavior disrupts Complainant’s business.
Complainant argues that the <americanexpressvacations.info> and <americanexpressvacations.net> domain names are confusingly similar to its AMERICAN EXPRESS mark. Moreover, Complainant argues that Respondent profits from its use of the disputed domain names through the receipt of click-through fees.
Finally, Complainant argues that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the AMERICAN EXPRESS mark.
B. Respondent
Respondent claims that the websites resolving from the disputed domain names do not compete with Complainant’s business.
After Complainant’s counsel contacted Respondent, Respondent alleges that it offered to sell the disputed domain names to Complainant for its out-of-pocket costs.
Respondent asserts it does not use the disputed domain names in an attempt to “drive traffic” to its resolving websites.
Respondent claims that it registered the disputed domain names in an attempt to convey to Internet users that it sells Complainant’s products and services, just as many other websites claim that they service “all computer brands such as Apple, HP, Dell.” Respondent states that it has not collected nor does it intend to collect click-through fees.
The panel has determined from the evidence that:
(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;
(3) and the domain name has been registered and is being used in bad faith.
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."
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.
It is noted that Complainant fails to submit registration numbers or registrations dates. Despite Complainant’s failure to provide evidence of its trademark registrations, the Panel finds that a federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Prior panels have found that a governmental registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant cites a prior UDRP decision in which the panel found Complainant has rights in the AMERICAN EXPRESS mark. See Am. Express Co. v. Strategic Concepts, FA 96378 (Nat. Arb. Forum Feb. 15, 2001). The Panel finds that Complainant has provided sufficient evidence to establish secondary meaning in the AMERICAN EXPRESS mark. The Panel has determined that Complainant has established common law rights in the AMERICAN EXPRESS mark pursuant to Policy ¶ 4(a)(i) that date back to 1850. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The Panel finds Respondent’s additions to the domain names do not sufficiently distinguish the disputed domain names from Complainant’s mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also 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 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 the<americanexpressvacations.info> and <americanexpressvacations.net> domain names are confusingly similar to Complainant’s AMERICAN EXPRESS mark under Policy ¶ 4(a)(i).
The panel finds that Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Respondent is not Complainant’s affiliate and that Complainant has not licensed or authorized Respondent to use its AMERICAN EXPRESS mark in a domain name. Furthermore, the WHOIS information lists “Robert Hakim / Premiere Travel” as the registrant of the disputed domain name, which the Panel finds is not similar to the <americanexpressvacations.info> and <americanexpressvacations.net> domain names. The Panel finds that Complainant’s assertions combined with the WHOIS registrant information indicate that 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
It is found by the panel that Respondent uses the domain names to resolve to websites that provide hyperlinks to third-party websites that offer travel services and credit card programs that compete with Complainant’s business and that Respondent profits from its use of the disputed domain names through the receipt of click-through fees. Therefore, Panel finds 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Respondent offered to sell the disputed domain names to Respondent after Complainant contacted Respondent about the disputed domain names. The Panel finds Respondent’s offer to sell the disputed domain names is further evidence of Respondent’s lack of legitimate rights and interests in the disputed domain names under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Respondent offered to sell the disputed domain names to Complainant after its counsel contacted Respondent. The Panel finds that Respondent’s offer exceeded its out-of-pocket costs. Therefore, the Panel has determined that this offer amounts to registration and use in bad faith under 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).
It is the finding of the panel that Respondent’s domain names redirect Internet users to websites that offers links to Complainant’s competitors. Respondent admitted to Complainant’s outside counsel that it registered the domain names with the intention of redirecting Internet users to its website. The panel finds this behavior disrupts Complainant’s business and it finds that Respondent’s registration and use of the <americanexpressvacations.info> and <americanexpressvacations.net> domain names amounts to bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The panel has found that the <americanexpressvacations.info> and <americanexpressvacations.net> domain names are confusingly similar to its AMERICAN EXPRESS mark. Also, it finds that Respondent profits from its use of the disputed domain names through the receipt of click-through fees, therefore finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Therefore, the Panel finds that this behavior amounts to bad faith under Policy ¶ 4(b)(iv). See 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)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the AMERICAN EXPRESS mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanexpressvacations.info> and <americanexpressvacations.net> domain names be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER, Senior District Judge, Panelist
Dated: November 19, 2010
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