American Express Marketing & Development Corp. v. American Express
Claim Number: FA1106001394105
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill of American Express Marketing & Development Corp., New York, USA. Respondent is American Express (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <americanexpresszync.com>, <americanexpreszync.com>, <zyncamericanexpress.com>, and <amexzynccard.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2011; the National Arbitration Forum received payment on June 17, 2011.
On June 23, 2011, Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <americanexpresszync.com>, <americanexpreszync.com>, <zyncamericanexpress.com>, and <amexzynccard.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com 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 June 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@americanexpresszync.com, postmaster@americanexpreszync.com, postmaster@zyncamericanexpress.com, and postmaster@amexzynccard.com. Also on June 30, 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 July 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 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 <americanexpresszync.com>, <americanexpreszync.com>, and <zyncamericanexpress.com>domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and ZYNC marks.
Respondent’s <amexzynccard.com> domain name is confusingly similar to Complainant’s AMEX and ZYNC marks.
2. Respondent does not have any rights or legitimate interests in the <americanexpresszync.com>, <americanexpreszync.com>, <zyncamericanexpress.com>, and <amexzynccard.com> domain names.
3. Respondent registered and used the <americanexpresszync.com>, <americanexpreszync.com>, <zyncamericanexpress.com>, and <amexzynccard.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Express Marketing & Development Corp., owns registrations for the AMERICAN EXPRESS mark (e.g., Reg. No. 1,024,840 registered May 15, 1974), the AMEX mark (e.g., Reg. No. 1,161,278 registered July 14, 1981) and the ZYNC mark (Reg. No. 3,848,857 filed October 9, 2009; registered September 14, 2010) with the United States Patent and Trademark Office (“USPTO”). Complainant uses its marks in connection with the provision of credit card services.
Respondent, American Express, registered the disputed domain names on August 22, 2010. The disputed domain names resolve to a parked website featuring links to credit card programs that are direct competitors of Complainant.
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 that it has rights in the AMERICAN EXPRESS (e.g., Reg. No. 1,024,840 registered May 15, 1974), AMEX (e.g., Reg. No. 1,161,278 registered July 14, 1981) and ZYNC marks (Reg. No. 3,848,857 filed October 9, 2009; registered September 14, 2010) by virtue of its registration of the marks with the USPTO. The Panel finds that Complainant’s registration of the marks is sufficient evidence of Complainant’s rights in the marks under Policy ¶ 4(a)(i) and that Complainant’s rights date back to the date the trademark application was filed with the USPTO. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant argues that Respondent’s <americanexpresszync.com>, <americanexpreszync.com>, and <zyncamericanexpress.com> domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and ZYNC marks. Respondent’s <americanexpresszync.com> and <zyncamericanexpress.com> domain names merely combine the two marks, absent the space between the terms of Complainant’s AMERICAN EXPRESS mark, and add the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations do not sufficiently differentiate the disputed domain names from Complainant’s marks. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Respondent’s <americanexpreszync.com> domain name contains a misspelled version of Complainant’s AMERICAN EXPRESS mark, along with the ZYNC mark and the gTLD. The Panel finds that these changes do not render the disputed domain name unique. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Nintendo of Am. Inc., supra.; see also Bond & Co. Jewelers, Inc., supra. Accordingly, the Panel finds that Respondent’s <americanexpresszync.com>, <americanexpreszync.com>, and <zyncamericanexpress.com> domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and ZYNC marks pursuant to Policy ¶ 4(a)(i).
Respondent’s <amexzynccard.com> domain name is confusingly similar to Complainant’s AMEX and ZYNC marks. The disputed domain name combines the two marks, adds the descriptive term “card,” and the gTLD “.com.” The Panel finds these additions are insufficient to properly distinguish the disputed domain name from Complainant’s mark. See Nintendo of Am. Inc., supra.; see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel finds that Respondent’s <amexzynccard.com> domain name is confusingly similar to Complainant’s AMEX and ZYNC marks under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires that Complainant make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain names before the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain names. 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.”). The Panel finds that Complainant has made a prima facie case. Respondent, by defaulting, has failed to come forward with any evidence that it has any rights or legitimate interests in the disputed domain names. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The Panel elects to examine the record in its entirety before making a determination on Respondent’s rights or legitimate interests in the disputed domain names, if any.
Complainant indicates that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). The WHOIS information lists the registrant of the disputed domain names as “American Express.” Complainant asserts that the registrant of the disputed domain names originally used a privacy shield to hide its identity, but after the initiation of this dispute the registrar indicated that the domain names were “donated” to Complainant and that they were unlocked and available for transfer. In fact, the disputed domain names remain locked and Respondent’s mere change of registrant information to reflect Complainant’s own name and address fails to indicate that Respondent is commonly known by the disputed domain names. The Panel therefore concludes that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Hewlett-Packard Co. v. HP Supplies, FA 282387 (Nat. Arb. Forum July 22, 2004) (“The Panel finds, because of the prominence of the HP mark, that Respondent’s registration under the ‘HP Supplies’ name does not establish that Respondent is commonly known by the <hpsupplies.com> domain name.”); see also MB Fin. Bank, N.A. v. mbfinancialmortgage.com, FA 405073 (Nat. Arb. Forum Mar. 11, 2005) (“[D]espite being listed in the WHOIS information as ‘mbfinancialmortgage.com,’ Respondent is not commonly known by this domain name nor is [it] authorized to register domain names featuring Complainant’s MB FINANCIAL mark.”).
Complainant alleges that Respondent is using the disputed domain name to resolve to a parked website featuring links to credit card programs that are direct competitors of Complainant. Respondent likely collects click-through fees from visitors to the site. The Panel finds that Respondent’s use of the disputed domain name, for nothing more than a pay-per-click links site, is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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’s registration and use of the disputed domain names to display links to third-parties offering credit card services in competition with those offered by Complainant disrupts Complainant’s business. Internet users may arrive at the parked site offering links and click-through to one of the third parties. Once there, the diverted Internet user may purchase services or goods from one of Complainant’s competitors rather than Complainant. Therefore, the Panel concludes that Respondent has demonstrated bad faith pursuant to 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent’s registration and use of the disputed domain names has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its websites or other online locations. The Panel agrees and finds that Respondent has displayed evidence of bad faith pursuant to Policy ¶ 4(b)(iv) through its registration and use of the disputed domain names. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanexpresszync.com>, <americanexpreszync.com>, <zyncamericanexpress.com>, and <amexzynccard.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 9, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page