national arbitration forum

 

DECISION

 

American Express Marketing & Development Corp. v. alexanderwechsler

Claim Number: FA1107001399523

 

PARTIES

Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill of American Express Marketing & Development Corp., New York, USA.  Respondent is alexanderwechsler (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thecenturioncard.com>, registered with Tucows.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Anne M. Wallace, Q.C. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2011; the National Arbitration Forum received payment on July 20, 2011.

 

On July 20, 2011, Tucows confirmed by e-mail to the National Arbitration Forum that the <thecenturioncard.com> domain name is registered with Tucows and that Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 July 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@thecenturioncard.com.  Also on July 21, 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.

 

A timely Response was received and determined to be complete on August 8, 2011.

 

Complainant submitted a timely Additional Submission on August 11, 2011.

 

Respondent submitted a timely Additional Submission. However two of the attachments are in a format not consistent with those approved in Annex A to the National Arbitration Forum Supplemental Rules. The Forum does not consider this submission to be in compliance with Supplemental Rule #7.  In fairness to Respondent, the Panel will consider this Additional Submission.

 

On August 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant asserts:

 

• Complainant began using the CENTURION mark in 2001. It has 144 trademark registrations and applications for numerous CENTURION marks in 78 countries and jurisdictions around the world. As such, Complainant contends there is global goodwill associated with the CENTURION mark. The mark is used in connection with a wide variety of goods and services including charge cards, travel and travel-related services and banking services that are used world wide. Because of Complainant’s use of the CENTURION mark, it is now famous around the world.

 

• American Express has over 91 million cardholders worldwide with cardholders and consumers of its varied services spanning the globe. American Express extensively advertises its trademark and services through television, radio and print advertising, through statement inserts, through brochures available at merchant sites and on its websites including <centurion.com> and <americanexpress.com>. American Express’ use of its CENTURION trademark in connection with a web site at <centurion.com> allows consumers worldwide to contact American Express and conduct business with the company via its web site.

 

• The Disputed Domain Name is confusingly similar to the CENTURION mark because the Disputed Domain Name contains the mark in its entirety and adds the non-distinctive, descriptive, generic terms “the” and “card”. Adding the words “the” and “card” to <centurion.com> creates a false association and a tarnishment of the CENTURION mark. The Disputed Domain Name is likely to cause confusion among consumers given the obvious connection between the Disputed Domain Name, American Express and the CENTURION mark.

 

• The addition of the non-distinctive, descriptive and generic terms does not change the overall impression of a domain name. Respondent’s addition of non-distinctive, descriptive or generic terms to the CENTURION mark results in a domain name that is confusingly similar to Complainant’s CENTURION mark. The fact the word “card” is representative of American Express’ charge card services offered in connection with its CENTURION mark heightens the confusing similarity between the Disputed Domain Name and Complainant’s CENTURION marks and the <centurion.com> domain name.

 

• When consumers enter the <thecenturioncard.com> web site and are not connected to American Express’ <centurion.com> web site, they will be confused as to whether Respondent and/or its web site are in some way affiliated with American Express or its CENTURION goods and services and/or whether the Disputed Domain Name and/or web site is endorsed, authorized or sponsored by Complainant. Therefore, it appears that a motivation for registering the Disputed Domain Name was to capitalize on the goodwill and reputation of American Express and its CENTURION card in an attempt to attract users to Respondent’s web site.

 

• Respondent should be considered as having no legitimate rights in the Disputed Domain Name because there is no evidence the Disputed Domain Name is a trade name or company name of Respondent. There is no evidence Respondent is commonly known by the Disputed Domain Name. The web site content identifies the operator of the site as AJ and makes no claim to use of CENTURION as a company name.

 

• There is no evidence Respondent has an application or registration for CENTURION or THE CENTURION CARD. Complainant has not licensed Respondent to use any of its trademarks or to apply for or use any domain name incorporating Complainant’s marks.

 

• Respondent’s registration of the Disputed Domain Name with no legitimate rights in or in connection with the CENTURION mark demonstrates Respondent’s bad faith in attempting to capitalize on the goodwill Complainant has established in the CENTURION mark and in diverting consumers to Respondent’s web sites.

 

• Respondent had constructive notice of the CENTURION mark and selected a virtually identical domain name to capitalize on the services offered under the CENTURION mark by American Express and its <centurion.com> domain name and to divert consumers seeking Complainant’s web site to Respondent’s web sites. This is further evidenced by Respondent’s use of the CENTURION trademarks and copyrights associated with Complainant’s CENTURION services on the <thecenturioncard.com> web site.

 

• Due to the virtually identical nature of the Disputed Domain Name and Complainant’s CENTURION mark and <centurion.com> domain name, Respondent knew that registration and use of the Disputed Domain Name would capitalize on the good will associated with the CENTURION trademarks and the <centurion.com> domain name and would result in the likelihood of confusion for consumers and misrepresent an association with Complainant and its goodwill, resulting in passing off and trademark infringement. Thus, based on the foregoing, Respondent does not have a legitimate interest in registering or using the Disputed Domain Name.

 

• Respondent should be considered as registering and using the Disputed Domain Name in bad faith because:

 

• The value of the Disputed Domain Name rests in the appropriation and use of Complainant’s CENTURION mark. Respondent’s use of the Disputed Domain Name is likely to cause confusion for consumers searching the Internet and to damage the goodwill and integrity of American Express and its CENTURION trademarks and domain name. Respondent has registered a domain name containing Complainant’s mark without authorization from Complainant. Registration of the Disputed Domain Name without permission and for no permissible purpose, demonstrates Respondent’s bad faith.

 

• Respondent is attempting to obtain commercial gain by misdirecting Internet users to the web site at issue by creating a likelihood of confusion with American Express’ CENTURION mark and <centurion.com> domain name. It is reasonable to conclude there is a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s web site by American Express. In addition to filing this Complaint, Complainant filed an appropriate complaint with iPage for the Disputed Domain Name under the Digital Millennium Copyright Act based on the infringing content on the site. iPage instructed Respondent to remove the infringing content within a specific timeframe and reserved the right to take down the web site if Respondent did not comply with the requirement to remove the infringing content.

 

• It appears Respondent’s motivation for registering the Disputed Domain Name was to seek profit from the domain name and to capitalize on the goodwill associated with the CENTURION mark and services and the visitors who might mistakenly enter the Disputed Domain Name as a web address. It is likely consumers will assume the site is affiliated with American Express and its CENTURION products and services, thereby creating confusion for consumers, disrupting American Express’ business and damaging American Express’ reputation. Interfering with American Express’ ability to conduct business on the Internet further demonstrates bad faith.

 

• The valuable reputation of American Express and its CENTURION mark is likely to be diminished, diluted and tarnished by association with Respondent’s web site and its uncontrolled use.

 

• The facts show Respondent engaged in opportunistic bad faith through registration and use of the Disputed Domain Name and the other actions Complainant has outlined.

 

• Respondent’s only rationale for registering the Disputed Domain Name was primarily for the purpose of disrupting the business of American Express and to capitalize and trade on the goodwill of the CENTURION mark and domain name. The evidence shows a bad faith attempt to reap a windfall off the Complainant’s intellectual property.

 

• It is reasonable to assume consumers wishing information on Complainant’s CENTURION card would enter the words “the centurion card” in their web browser when looking for Complainant’s web site. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name incorporating Complainant’s exact mark together with generic words identifying Complainant’s services, evidences bad faith registration and use.

 

• Respondent’s use of the Disputed Domain Name will raise issues of passing off, consumer privacy and protection issues and infringement of Complainant’s rights under trademark law. Such interference with Complainant’s CENTURION marks constitutes bad faith use of the Disputed Domain Name.

 

• Complainant asks that the Disputed Domain Name be transferred to Complainant.

 

B. Respondent

 

Respondent submits:

 

• Respondent owns and operates two successful companies and two websites, which enable him to be a very good customer with American Express. He is a respectful and very good client to American Express and has spent over 100,000 USD on his American Express charge card this past 12 months. Respondent’s web site, <thecenturioncard.com> has not infringed on any trademarks nor does it resemble the secret and members only website made for American Express Centurion members. The accusations made by American Express in this arbitration are false and have already caused stress, service problems with Respondent’s registrar, and a loss of time from work dealing with these proceedings. This case is simply a formality of a large corporation, American Express, using their in house counsel to keep busy and try and disrupt Respondent’s livelihood and freedom of speech. Respondent is a young entrepreneur who has done nothing but bring more clients to American Express and to each client brought in, increase the amount of expenditure per year.

 

• The website, <thecenturioncard.com>, was started roughly 1.6 years ago with the intention of taking one 23 year old entrepreneur’s out of college experience in the real world and making them public to show the ups and downs of life and how hard work and perseverance pays off. Since then it has grown to over 10,000 Unique Visitors a month and over 20,000 visits each month from over 79 Countries. Throughout the life of the website, Respondent has spoken of many things, including life lessons, business advice, and giving brief detail of his business lessons, luxury credit cards, and advice from some of the most successful people in the world from millionaires to Olympic Medalists, without ever giving a clue to the name of Respondent or his businesses. The reason for this was because the website was made and remains to this day educational. Due to this filing American Express has now caused Respondent’s name to be in the public eye, putting Respondent’s family in jeopardy due to the amount of fans of the website.

 

• Complainant has repeatedly accused Respondent’s domain name as being confusing for their Centurion members. This accusation is completely false. The American Express company created a separate password only, so that only Centurion members can gain entry to the web site for their Centurion members at <centurion.com>. American Express knows that the only way for a Centurion member to log on to their website is by looking at the back of their Centurion charge card and reading CENTURION.COM and then proceeding with a username and password. American Express does not publicly display that information anywhere on their website or on any of their subsidiaries’ websites. The only way to know about the website for their Centurion members, is to be a Centurion member and to look at the back of your Centurion member card. The Centurion Membership is exclusive and by invitation only. The general public does not have access to this information. There can be no confusion whatsoever between <thecenturioncard.com> and <CENTURION.com> since there is no way for any Centurion member to by mistake type in two extra words. The only way for a Centurion member and only a Centurion member, since the website and information on the website is blocked from the public, to log into their website is by looking to the reverse of their card and typing in the website exactly how it appears on the back of the card: <CENTURION.com> and then typing in a user name and password. By no means does that look like or appear to look like Respondent’s website <thecenturioncard.com>. American Express has no information on their <AMERICANEXPRESS.com> website about its Centurion Membership, only stating it is a rare card and that it is by invitation only.

 

• Respondent’s identity to this day has never been posted on the website. Neither have any of Respondent’s companies. Respondent has gone by the alias AJ CENTURION. Since the website’s inception, the website’s title: MY RACE TO THE CENTURION C.A.R.D. has given readers a tale of the website in big bold letters but also displays a second meaning.  In the title, the words are seen as CENTURION C.A.R.D. – which was on the website since the first post 1.6 years ago. It stands for AJ CENTURION. And C.A.R.D. stands for Can AJ Really Do it. This meaning of Respondent’s alias’ last name and the initials C.A.R.D. have had this meaning since the inception of the site and in no way, shape or form target the American Express charge card, <CENTURION.com> or any of the 144 American Express Trademarks. American Express does not own the trademark CENTURION CARD. American Express only owns the trademark CENTURION. Respondent’s website, “TheCenturionCARD.COM” has no direct correlation with their member only website.

 

• Complainant has targeted Respondent’s website <thecenturioncard.com>, as having the trademark name CENTURION in the title. There are websites in existence such as: “GOTCENTURION.COM”, “BLACKCARDSOURCE.COM”, “RUCENTURION.COM”, “LUXURYCREDITCARDS.COM”, that either have the exact trademarked name Centurion in their title or have material on their website that has information regarding American Express Centurion.

 

• Complainant’s trademark of a Centurion soldier to demonstrate strength and trust, copies an ancient culture’s reputation for their own benefit. If anyone is in copyright infringement, it is American Express. They should be paying a royalty fee to the people of that region. To claim that Respondent is taking the CENTURION name is completely hypocritical and false at the same time.

 

• Viewers of Respondent’s website are looking for AJ CENTURION. They are not searching for the <CENTURION.COM> webpage, because they do not know it exists. The only people who know about the <CENTURION.COM> website are the American Express CENTURION members who have the website imprinted on the reverse side of their titanium made credit card, which makes it impossible to mistake going into Respondent’s web site.

 

• Complainant has stated that: “motivation for registering thecenturioncard.com was to capitalize on the goodwill and reputation of American Express and its CENTURION card in an attempt to attract users to Respondent’s website.” Respondent has never released his name nor business on the website and in doing so has forgone possible exposure for his companies and himself. Respondent wanted this to remain an educational website with news and tips for young and seasoned entrepreneurs to learn and grow from.

 

• In the by-laws of the National Court of Arbitration and of ICANN, it says that if the website is for an educational purpose, which Respondent’s website is, there can be no domain name dispute. Since Respondent is not profiting from this website and it simply is made up of posts containing information that is relevant to the everyday entrepreneur, this site is and will remain an educational website.

 

• Complainant also fails to realize that even if the website was similar to their website, which it is not, people all over the world make a general practice of purchasing websites that are in direct competition with certain companies, such as the case with the 2016 Olympic Games, to be hosted in Rio De Janeiro. One man has purchased Rio2016.com, RioGames2016.com, RioOlympics16.com and many more in the purpose of selling the website in the future to the IOC, International Olympic Committee. Though this is not the case for Respondent’s website, since Respondent never bought the website for this purpose, and only meant to blog on this website about his struggles and successes in life, and since American Express has decided to share their 8.6 billion USD budget on Marketing & Development, if American Express would like to buy <thecenturioncard.com>”, the price it is for sale for is $10,000,000.39 USD. If American Express chooses not to pay for the 10,000+ hours Respondent has put into the website, which generates over 20,000 visits a month from of the most successful non-American Express Centurion clients in the world and has more high end clientele than their <CENTURION.com> website, Respondent asks the panel to see this as reverse Registered Domain Name Hijacking. American Express understands that Respondent’s client base of readers, which most spend over 100,000 USD a month on their credit cards will be in their possession if they were to acquire the Disputed Domain Name.

 

• Due to the Complainant’s arbitration regarding this case, Respondent has been affected and so have his readers. Respondent’s domain server has taken down his private information, which he pays for, due to rules when a case is put in arbitration. Now, American Express has not only tried to commit Reverse Registered Domain Name Hijacking, but has also put Respondent’s family and personal information which was always kept private and out of the public eye, available for the general public.

 

• Respondent has always spoken highly of American Express and has never spoken badly of them. Respondent encourages more than 10,000 unique visitors a month to spend more on their American Express cards in order of one day receiving an invitation to the Centurion membership. In addition American Express Centurion has personally contacted Respondent for advice and counsel on their Centurion Members, because they see Respondent as an expert in the field of luxury credit cards and not a direct threat to their website. Respondent has provided an email from American Express’ Business Centurion Marketing Department, asking to set up a interview with Respondent to learn more about Centurion Members. This, in itself shows that American Express is trying to reverse hijack Respondent’s registered domain name because they know the clientele Respondent has is of very affluent people and would like to turn them into American Express customers.

 

• Respondent is known as the following: Alexander Wechsler, AJ Centurion, and info@thecenturioncard.com.

 

C. Additional Submissions

 

            Complainant submits:

 

• Complainant is not engaging in reverse domain name hijacking. Complainant is exercising its rights and obligations under the law to protect against infringement of its protected trademark.

 

• Respondent’s focus on Centurion card members when considering confusion is an incorrect analysis. The question is not whether there is a likelihood of confusion amongst Centurion cardholders. Consumers seeking information about the CENTURION card that use a natural language search are likely to enter “the centurion card” as that is how the Centurion card is commonly referred to by the public. Complainant notes that Wikipedia says: “The Centurion Card, known informally as the black card, is a charge card issued by American Express.” Given that consumers identify The Centurion Card as a product of American Express, there is no question there will be confusion in the marketplace resulting from third party use of the identical domain name.

 

• Respondent’s claim that his use of CARD in the domain name stands for Can AJ Really Do it, is irrelevant. What consumers will see, and consequently type into a web browser to find Complainant is “thecenturioncard”.

 

• Respondent has failed to demonstrate a legitimate purpose for registration and use of the Disputed Domain Name. Respondent’s name is Alexander Wechsler. The fact Respondent refers to himself as AJ Centurion does not establish any rights in the CENTURION mark to claim a legitimate purpose for registration of the domain name. Respondent has not shown that he is commonly known as the Disputed Domain Name.

 

• Respondent cannot claim a legitimate fair use in connection with the web site. Respondent’s site includes paid advertising, offering links to third party web sites. As such Respondent is profiting from use of the web site.

 

• Respondent’s claim that his use of the Disputed Domain Name is covered by free speech is erroneous. While Respondent may have the right to provide opinion on American Express and its CENTURION card, he is not permitted to use a domain name incorporating Complainant’s mark and a word describing Complainant’s services in order to direct consumers to the site.

 

• American Express vigorously polices against infringement of its intellectual property, including third party infringing domain names. It is impossible for American Express to locate, object to and secure every infringing domain name, but that fact does not preclude American Express from objecting to infringement of its brand in this case.

 

• Respondent states that if American Express would like to buy the Disputed Domain Name, the price is $10,000,000.39. Offering to sell a domain name incorporating a protected trademark for a profit constitutes bad faith pursuant to Policy 4(b)(i).

 

Respondent submits:

 

• Respondent’s demand for money for the web site was not to demand money was more hyperbole.

 

• Respondent has always seen American Express in a good light and even on the web site only praises American Express for its conduct with their customers.

 

• Respondent describes features of his web site that indicted or which Respondent argues should indicate the Respondent is not associated American Express.

 

• Respondent’s name is Alexander Jay Wechsler. He had been called AJ for over 15 years. The nickname was furthered when Respondent began acquiring public information about the Centurion card in 2001. Respondent says that since the inception of the web site, thousands of readers have seen the name AJ Centurion. Respondent argues he is clearly known as AJ Centurion and TheCenturionCard.com because he has been using these names in thousands of communications since the inception of his web site.

 

• The web site does contain Google Adwords which were installed to pay for site upgrades. Respondent says the web site has only made $149 and the cost of the new website was over $1,000. Respondent has used the profit from the advertising to put it back into the web site.

 

FINDINGS

 

The Panel finds:

 

1.    Complainant has rights in the CENTUIRION MARK.

 

2.    The Disputed Domain Name is confusingly similar to Complainant’s mark.

 

3.    Respondent has no rights or legitimate interests in the Disputed Domain Name.

 

4.    Respondent registered and is using the Disputed Domain Name in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has established its rights in the CENTURION mark by registering that mark with multiple governmental trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,488,068 registered September 11, 2001), and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA239795 registered February 8, 1980).  Complainant has submitted what appears to be a self generated list of marks it has registered to verify these registrations.  The Panel finds that Complainant has established its rights in the CENTURION mark under Policy ¶ 4(a)(i) by registering it with several governmental trademark authorities.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Complainant also asserts that Respondent’s Disputed Domain Name is confusingly similar to its CENTURION mark. The Disputed Domain Name includes the entire mark while adding the generic top-level domain (“gTLD”) “.com,” the article “the,” and a term descriptive of Complainant’s business, “card.” The Panel finds that these changes are insufficient to mitigate a finding of confusing similarity under Policy ¶ 4(a)(i).  See 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.”); see also Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the domain names fails to make them separate and distinct, as distinguishable from Complainant’s marks.”); see also 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)).

 

The Disputed Domain Name is confusingly similar to Complainant’s CENTURION mark.

 

Rights or Legitimate Interests

 

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 he 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.”).

 

Complainant contends that Respondent is not commonly known by the Disputed Domain Name. Complainant bases this contention on the WHOIS information which identifies the registrant of the Disputed Domain Name as “alexanderwechsler.” There is no evidence in this proceeding that Alexander Wechsler has any trademark or other right in the CENTURION mark. The evidence is sufficient for Complainant to establish a prima facie case that Respondent does not have rights or legitimate interests in the Disputed Domain Name. The burden shifts to Respondent.

 

Respondent argues that he is commonly known as “AJ Centurion” and as “TheCenturionCArd.com”.  However, Respondent has provided no evidence to show that he was commonly known by either of these names before he registered and started using the Disputed Domain Name. If Respondent is now commonly known by the Disputed Domain Name, it is because he has been using Complainant’s mark to make that happen. The Panel finds that Respondent is not commonly known by the Disputed Domain Name under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the Disputed Domain Name); 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 also contends that Respondent is not engaging in a bona fide offering of goods or services. According to Complainant, the Disputed Domain Name resolves to a website that offers information about Complainant’s products. A review of the site proves this to be the case. The evidence submitted by both sides indicates the web site is a fan site, prominently including Complainant’s CENTURION name and logo throughout the site. The web site creates a false association with American Express and its Centurion Card. The Panel finds that the operation of a fan site like this one is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.  See Smith v. Network Operations Ctr., FA 371622 (Nat. Arb. Forum Jan. 13, 2005) (finding that the respondent’s use of the <ambersmith.com> domain name “that contain[ed] material directly related to Complainant, including her name and photograph prominently displayed at the top of the page” did not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii) because it presented a false association with the complainant); see also Van Halen v. Morgan, D2000-1313 (WIPO Dec. 20, 2000) (finding that the respondent’s “expectation of developing a legitimate interest in the domain name,” which was used in connection with a fan-based website, was insufficient to establish rights or legitimate interests in the domain name).

 

Respondent has not established rights or legitimate interests in the Disputed Domain Name.

 

Registration and Use in Bad Faith

 

Complainant states that Respondent registered and is using the Disputed Domain Name in bad faith because it gains commercially from it.  Respondent has admitted that there has been some commercial gain from the site. Taking Respondent’s admission along with the Panel’s review of the web site, the Panel is satisfied on balance that Respondent gains commercially from click through revenues. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website.  Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

Complainant argues that Respondent had actual knowledge of its rights in the CENTURION mark based upon the nature of the website to which the Disputed Domain Name resolves. The Disputed Domain Name resolves to a site that includes information about Complainant indicating that Respondent was aware of Complainant and its CENTURION mark. Therefore, the Panel finds that Respondent had actual notice of Complainant’s rights in the mark. This is affirmative evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

 

Upon Respondent’s own admission, the Disputed Domain Name resolves to its fan site where Respondent offers information regarding Complainant. The site is misleading because it leaves the impression the site is affiliated with American Express and its Centurion products and services. Based upon this use, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith under Policy ¶ 4(a)(iii). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith registration and use where the <anneofgreengables.com> domain name resolved to an informational website that misled Internet users to believe that the website was affiliated with the ANNE OF GREEN GABLES mark); see also Apple Corps Ltd. v. LOVEARTH.net, FA 98812 (Nat. Arb. Forum Sept. 25, 2001) (finding bad faith registration and use of domain names because the respondent registered the names “to attract Beatles fans to his website and has intentionally led them to think they are actually visiting a site of the Beatles, and does this so that he can expose them to his environmental views”).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <thecenturioncard.com> domain name be transferred from Respondent to Complainant.

 

 

Anne M. Wallace, Q.C., Panelist

Dated:  August 23, 2011