American Express Marketing & Development Corp. v. pan zuo
Claim Number: FA1104001381668
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill of American Express Marketing & Development Corp., New York, USA. Respondent is pan zuo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <serveaccount.com> and <serveaccounts.com> 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2011; the National Arbitration Forum received payment on April 4, 2011.
On April 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <serveaccount.com> and <serveaccounts.com> 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 April 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2011 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@serveaccount.com and postmaster@serveaccounts.com. Also on April 5, 2011, 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 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Frankllin 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <serveaccount.com> and <serveaccounts.com> domain names are confusingly similar to Complainant’s SERVE mark.
2. Respondent does not have any rights or legitimate interests in the <serveaccount.com> and <serveaccounts.com> domain names.
3. Respondent registered and used the <serveaccount.com> and <serveaccounts.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Express Marketing & Development Corp., provides accessible online account and mobile phone banking services under the SERVE mark. Complainant registered the SERVE mark with the Office for the Harmonization of the Internal Market (“OHIM”) (e.g., 009130212 issued November 8, 2010).
Respondent registered the <serveaccount.com> and <serveaccounts.com> domain names on March 28, 2011. The disputed domain names both resolve to websites displaying Complainant’s logos and other copyrighted content from Complainant’s website.
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 the SERVE mark based on its registrations of the mark with the OHIM (e.g., 009130212 issued November 8, 2010). The Panel finds that registration of a mark with a trademark authority is sufficient for establishing rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <serveaccount.com> and <serveaccounts.com> domain names are confusingly similar to the SERVE mark. The disputed domain names both incorporate Complainant’s entire mark while respectively adding the descriptive terms “account” and “accounts” to Complainant’s mark. Additionally, Respondent incorporated the generic top-level domain (“gTLD”) “.com” to the end of each disputed domain name. The Panel finds that adding descriptive terms and gTLDs to a registered mark do not result in unique domain names under Policy ¶ 4(a)(i). 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds Policy ¶ 4(a)(i) has been established.
At the outset, Complainant must establish that Respondent lacks any rights or interests with respect to the disputed domain names. Once Complainant makes a prima facie showing in support of this allegation, the burden of proof shifts and Respondent must prove that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has met its burden and, because Respondent failed to respond to these proceedings, the Panel may assume Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel elects to examine the record pursuant to Policy ¶ 4(c) in order to determine whether Respondent has any rights or legitimate interests in the <serveaccount.com> and <serveaccounts.com> domain names.
Complainant alleges that Respondent is not commonly known by the <serveaccount.com> and <serveaccounts.com> domain names and that Respondent is not authorized to use the SERVE mark. The Panel examined the record and can find no evidence that Respondent is commonly known by the disputed domain name. The WHOIS information lists the registrant of the disputed domain names as “pan zuo,” which Complainant alleges is not similar to the disputed domain names. The Panel therefore finds 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 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).
Complainant alleges that Respondent uses the disputed domain names to resolve to websites which prominently display logos and other material from Complainant’s website. The Panel finds that Respondent has attempted to pass itself off as Complainant and that these actions do not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Complainant alleges that Respondent registered the disputed domain names with the intention of selling them to Complainant. Respondent registered the <serveaccount.com> and <serveaccounts.com> domain names on the same day that Complainant launched its products and services under the SERVE mark. Immediately thereafter, Respondent contacted Complainant and indicated the disputed domain names were for sale. The Panel finds that a general offer to sell the disputed domain names provides evidence that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant produced evidence that Respondent offered to sell the <serveaccount.com> and <serveaccounts.com> domain names to Complainant. The Panel concludes that Respondent’s general offer to sell the disputed domain names establishes the requisite bad faith registration and use element of Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); 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).”).
Respondent used the disputed domain names to resolve Internet users to websites where Respondent attempted to pass itself off as Complainant, using Complainant’s logo and other material to mislead Internet users into thinking it was associated with, or endorsed by, Complainant. The Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Lastly, Complainant alleges that Respondent has engaged in opportunistic bad faith registration of the disputed domain names. The <serveaccount.com> and <serveaccounts.com> domain names were registered immediately following Complainant’s commencement of business activities under the SERVE mark. The Panel finds this to be evidence that Respondent engaged in opportunistic registration which provides a foundation for a determination of bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <serveaccount.com> and <serveaccounts.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 9, 2011
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