American Express Marketing & Development Corp. v. BCR / John Hayes
Claim Number: FA1206001449262
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Anne E. Naffziger of Leydig, Voit & Mayer, Ltd., Illinois, USA. Respondent is BCR / John Hayes (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackamexreplicas.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2012; the National Arbitration Forum received payment on June 18, 2012.
On June 19, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <blackamexreplicas.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.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 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2012 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@blackamexreplicas.com. Also on June 19, 2012, 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 July 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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. The Panel has issued 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in the term AMEX and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark AMEX in connection with its with credit cards, gift cards, smart cards, stored value card services, and travel, banking and insurance services.
2. Complainant has used the trademark AMEX continuously since 1969.
3. Complainant offers a so-called Centurion or “Black” card to certain customers of those services.
4. The disputed domain name was registered on September 20, 2011.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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
(1) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations. Panel is permitted to draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules and is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory (see, for example,Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000); Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000).
That said, Complainant retains the onus to prove on the balance of probability the matters set out in paragraph 4(a) of the Policy and in that respect Panel makes the preliminary observation that the Complaint is lacking in extrinsic evidence of essential issues.
In particular, the Complaint includes a long list of the redacted details of Complainant’s various worldwide trademark registrations for AMEX and AMEX formative marks but does not include a register extract of one single registration.
In addition, the allegations of Respondent’s bad faith rest on bald statements that the disputed domain name is being used to sell counterfeit versions of Complainant’s cards but there is nothing whatsoever in the way of material evidence to support that claim.
Panel is compelled to remark that many UDRP panelists may have summarily dismissed this Complaint.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006; see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003)).
Complainant provides a schedule of several hundred trademark registrations it holds worldwide. That schedule is not proof of trademark rights. At the very least, the Complainant should have annexed a copy of the registration certificate of at least one registration for the word mark AMEX, together with any relevant renewal information.
Nevertheless, given the notoriety of Complainant’s business, Panel would have found it proper to itself have visited the USPTO website to authenticate those rights (and determine their proprietorship given the fact that Complainant in this case is named as American Express Marketing & Development Corp.) but for the fact that Panel research of that kind is rendered superfluous in light of the very clear evidence from the Complaint that Complainant has unregistered, common law trademark rights in the term AMEX acquired through use and reputation.
Having thereby established trademark rights, the question is whether or not the disputed domain name is confusingly similar to Complainant’s trademark. The non-distinctive gTLD, “.com” can be ignored for the purpose of this comparison (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The comparison then resolves to the trademark AMEX, on the one hand and the term BLACKAMEXREPLICAS, on the other.
This Panel finds, firstly, that the term BLACKAMEXREPLICAS would be understood by the majority of internet users as a combination of the words, “black” and “replicas”, flanking the trademark AMEX. The Panel then determines that the words “black” and “replicas” are to be largely discounted because they are non-distinctive when set alongside the trademark which is a memorable invented word and the distinctive part of the composite term. In particular, the word “black” is not, on its own, inherently apt to distinguish and the word “replicas” is referable to the word AMEX when the combined expression BLACKAMEXREPLICAS is grammatically perceived.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark (in so doing, the Panel appreciates that the word “replicas” is by reason of its ordinary meaning likely to diffuse confusion but nonetheless endorses the consensus viewpoint of UDRP panelists who had found that, for the purposes of the comparison to be made under paragraph 4(a)(i) of the Policy, the proper question is whether the compared terms show confusing similarity, not whether they are likely to cause confusion).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS information identifies Respondent as “BCR / John Hayes” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
Complainant baldly asserts that the domain name resolves to a website that offers copies of Complainant’s “black” Centurion credit card. Those cards are said to be counterfeit. As already observed, screenshots of that website are not in evidence. Nevertheless, as also noted above, Panel may accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is contradictory. Since it is said that a complainant’s burden to show a prima facie case under this aspect of the Policy is light (see Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, op.cit.), Panel finds that there is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Complainant’s assertions of bad faith are without context since it has not provided any extrinsic evidence concerning the use of the disputed domain name. It is however established by formative decisions under this Policy that a panel is entitled to make limit factual research of its own. Panel has visited the website www.blackamexreplicas.com as it now displays itself. The homepage is headed “Black Card Replicas”. That page makes the claim that: “We make the highest quality working and non-working replica of the black American Express Centurion card in existence.”
Complainant alleges that the disputed domain name is disruptive to Complainant’s business conducted under the AMEX trademark because the disputed domain name resolves to a website selling counterfeit versions of Complainant’s Centurion cards. Complainant argues that this detracts from the number of Internet users who would otherwise buy the genuine card from Complainant and therefore is bad faith use and registration under paragraph 4(b)(iii) set out above.
Panel is unmoved by those submissions. Unlike paragraph 4(b)(i) of the Policy, the word “replicas” can be here given its full import. Panel surmises that Internet user confusion is likely to be minimal. It is questionable to what degree those persons who might avail themselves of a replica black card would be potential customers of Complainant’s Centurion card. In any event, there is no evidence that Respondent is, for the purposes of paragraph 4(b)(iii) of the Policy, a competitor of Complainant in any meaningful sense.
Panel turns to Complainant’s paragraph 4(b)(iv) submission that bad faith is evidenced by the attempt to create confusion as to the source of the disputed domain name in order to take commercial advantage of Internet users’ mistakes.
For reasons just given, Panel is dismissive of the claim that Internet users would be confused into thinking that there was a common trade source. In terms of paragraph 4(b)(iv) of the Policy, Panel finds it unlikely that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location by creating a likelihood of confusion with the Complainant’s trademark.
However, it is quite plain to this Panel that the evidence supports independent findings that the disputed domain name was registered in bad faith and then used in bad faith.
The reputation in the word AMEX as it existed before the registration date of the domain name was immense. Moreover, Complainant is well known for its “black” cards and indeed BLACKCARD is one of Complainant’s registered trademarks as shown by the evidence. The “sense” of the term “blackamexreplicas” explicitly demonstrates that respondent targeted Complainant’s trademark at the point of registration and Panel has no hesitation in finding bad faith registration.
Finally, a conclusion of bad faith use of the domain name is consistent with countless earlier decisions under this aspect of the Policy which have held that use of a complainant’s trademark to attract custom in fake or counterfeit goods emulating those from the complainant is bad faith use. This Panel follows that line of decisions and finds bad faith use in this case against Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackamexreplicas.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 21, 2012
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