American Express Marketing & Development Corp. v. amex india
Claim Number: FA1110001409943
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Michelle L. Calkins of Leydig, Voit & Mayer, Ltd., Illinois, USA. Respondent is amex india (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amexindiacard.com> and <amexindiacard.net>, registered with Network Solutions, LLC.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2011; the National Arbitration Forum received payment on October 3, 2011.
On October 3, 2011, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <amexindiacard.com> and <amexindiacard.net> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@amexindiacard.com and postmaster@amexindiacard.net. Also on October 3, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 1, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of 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 <amexindiacard.com> and <amexindiacard.net> domain names are confusingly similar to Complainant’s AMEX mark.
2. Respondent does not have any rights or legitimate interests in the <amexindiacard.com> and <amexindiacard.net> domain names.
3. Respondent registered and used the <amexindiacard.com> and <amexindiacard.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Express Marketing & Development Corp., has used its AMEX mark since 1969 in connection with a variety of travel related and financial services, including charge cards, credit cards, gift cards, smart cards, and stored value card services, travel services, and banking and insurance services. Complainant has registered its AMEX mark with numerous trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1161278 registered July 14, 1981) and the Brazilian National Institute of Industrial Property (“BNIIP”) (e.g., Reg. No. 007201290 registered Apr. 25, 1980).
Respondent, amex india, registered the <amexindiacard.net> and <amexindiacard.com> domain names on July 28, 2011. The disputed domain names resolve to Complainant’s own legitimate 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 has registered its AMEX mark with numerous trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1161278 registered July 14, 1981) and the Brazilian National Institute of Industrial Property (“BNIIP”) (e.g., Reg. No. 7,201,290 registered April 25, 1980). In Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006), the panel found that the complainant’s registration of the DISNEY trademark with the USPTO was sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i). A prior panel also found, in Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), that rights in a mark were proven through various trademark registrations around the world. According to this precedent, the Panel here concludes that Complainant has shown rights in the AMEX mark sufficient for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <amexindiacard.net> and <amexindiacard.com> domain names are confusingly similar to Complainant’s AMEX mark because the disputed domain names are created by adding the geographic term “india,” the descriptive term “card,” and the generic top-level domain (“gTLD”) “.com” or “.net” to Complainant’s AMEX mark. Panels in Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000), and Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006), held that adding descriptive terms like “fashion” or “cosmetics” or geographic terms like “india” to a mark did not distinguish the disputed domain names from the mark according to Policy ¶ 4(a)(i). Panels have also repeatedly decided that the presence of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See 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). The Panel thus agrees with Complainant’s arguments and holds that Respondent’s <amexindiacard.net> and <amexindiacard.com> domain names are confusingly similar to Complainant’s AMEX mark under Policy ¶ 4(a)(i).
The Panel determines Complainant has satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. Policy ¶ 4(a)(ii) requires only that Complainant make a prima facie case before the burden then shifts to Respondent to demonstrate rights and legitimate interests in the disputed domain names. The Panel finds that Complainant has presented a prima facie case in these proceedings. Due to Respondent’s failure to respond to Complainant’s allegations against it, the Panel may assume that the allegations are true and conclude that Respondent lacks rights and legitimate interests in the disputed domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel elects to consider, however, all of the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent is not authorized, licensed, or permitted by Complainant to use the AMEX mark. Although the WHOIS information for both disputed domain names identifies the registrant as “amex india,” which seems to suggests that Respondent is commonly known by the disputed domain name, this WHOIS listing is the only evidence in the record showing any kind of connection between Respondent and the disputed domain names. The Panel finds that, without other affirmative evidence showing that Respondent was commonly known by the disputed domain names before their registration or the initiation of this dispute, Respondent is neither commonly known by the <amexindiacard.net> and <amexindiacard.com> domain names nor has rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).
Complainant alleges that Respondent’s <amexindiacard.net> and <amexindiacard.com> domain names resolve to Complainant’s own authentic website, which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use on the part of Respondent. The Panel agrees, concluding that the redirection to Complainant’s own website, while seemingly harmless, is not under the control of Complainant and therefore demonstrates a use of Complainant’s mark that satisfies neither Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LCC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant asserts that Respondent’s disputed domain names appropriate Complainant’s AMEX mark and are likely to cause confusion for consumers seeking Complainant. Complainant argues that even though the disputed domain names currently resolve to Complainant’s own website, Complainant has no control over the nature and quality of Respondent’s website or services and cannot guarantee that Respondent will continue to use the disputed domain names to link to Complainant’s legitimate website. The Panel thus determines that Respondent’s actions in connection with the disputed domain names indicate bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum July 23, 2010) (finding that Respondent’s use of the disputed domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when “Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amexindiacard.com> and <amexindiacard.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 14, 2011
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