American Express Marketing & Development Corp. v. Fitting Solutions, Inc.
Claim Number: FA1302001485817
Complainant is American Express Marketing & Development Corp. (“Complain-ant”), represented by Dianne K. Cahill of American Express Marketing & Development Corp., New York, USA. Respondent is Fitting Solutions, Inc. (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanexpressinvestmentmanager.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 19, 2013; the National Arbitration Forum received payment on February 19, 2013.
On February 20, 2013, GODADDY.COM, LLC confirmed by e-mail to the Nation-al Arbitration Forum that the <americanexpressinvestmentmanager.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the cur-rent registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 February 20, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of March 12, 2013 by which Respondent could file a Response to the Complaint, via e-mail addres-sed to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, as well as to the attention of postmaster-@americanexpressinvestmentmanager.com. Also on February 20, 2013, 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 March 28, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed
Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses its AMERICAN EXPRESS mark in connection with the mark-eting of a wide variety of goods and services, including gift card, charge card, credit card, smart card and stored value card services, travel and travel-related services, and banking and insurance services.
Complainant holds registrations for the AMERICAN EXPRESS trademark, on file with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,024,840, registered November 11, 1975.
Respondent created the <americanexpressinvestmentmanager.com> domain name on July 23, 2008.
Respondent’s domain name is confusingly similar to Complainant’s AMERICAN EXPRESS trademark.
Respondent has not been commonly known by the disputed domain name.
There is no affiliation between Respondent and Complainant, and Respondent registered the contested domain name without authorization from Complainant.
The disputed domain name resolves to a website at which Respondent, for com-mercial gain, attempts to capitalize on the goodwill associated with Complain-ant’s mark by creating confusion among consumers as to the possibility that web-site is affiliated with Complainant.
There is reason to believe that the domain name is being used in connection with a scheme to defraud elderly consumers.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the AMERICAN EXPRESS mark when it registered the domain name.
The disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal 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 reason-able 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.”
Complainant has rights in the AMERICAN EXPRESS trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark author-ity, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
Turning then to the core question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that the <americanexpressinvestmentmanager.com> do-main name is confusingly similar to Complainant’s AMERICAN EXPRESS trade-mark. The domain name contains Complainant’s entire mark, with the elimina-tion of the space between the terms of the mark, but the addition of the generic terms “investment” and “manager,” which relate to aspects of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the do-main name from the realm of confusing similarity under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (find-ing a respondent’s <amextravel.com> domain name confusingly similar to a com-plainant’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)).
Likewise, the addition of the generic top-level domain “.com,” and the elimination of a space between the terms of a complainant’s mark are irrelevant to a con-fusing similarity analysis. See 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 the terms of the mark of another and the addition of a gTLD to create a domain name do not establish distinctiveness from the mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that there is no affiliation between Respondent and Complainant, and that Respondent has not been authorized by Complainant to use the AMERICAN EXPRESS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Fitting Solutions, Inc.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii).
See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name as described in Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a UDRP complainant asserted that it had not authorized that respondent’s use of its mark in a domain name).
Se next observe that Complainant asserts, without objection from Respondent, that Respondent employs the contested domain name, for commercial gain, to divert Internet users seeking Complainant’s website, and that there is reason to believe that the resolving website is used in connection with a scheme to defraud elderly consumers. This is neither a bona fide offering of goods or services by means of nor a legitimate noncommercial or fair use of the domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Re-spondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s employment of the con-tested domain name attracts Internet users to its website, for its commercial gain, by creating confusion with Complainant’s mark. This represents bad faith regis-tration and use of the domain name under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where a domain name was obviously derived from a UDRP complainant’s marks, thus creating a likelihood of confusion among Internet users for a respondent’s com-mercial gain).
We are also convinced that Respondent is using the disputed domain name to defraud consumers by means of a “phishing” scheme by which it obtains per-sonal information from Internet users. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use of a domain name where a respondent used the domain name <wellsbankupdate.com> fraudulently to acquire the personal and financial information of a UDRP complainant’s customers).
Finally, it is evident from the record that Respondent knew of complainant and its rights in the AMERICAN EXPRESS mark when Respondent registered the dis-puted domain name. This stands as evidence that Respondent registered the domain name in bad faith. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).")."
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <americanexpressinvestmentmanager.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 5, 2013
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