American Express Company v. (This Domain
is For Sale) Joshuathan Investments, Inc.
Claim
Number: FA0304000154647
Complainant is
American Express Company, New York, NY (“Complainant”) represented
by Dianne K. Cahill of American Express Company. Respondent is
(This Domain is For Sale) Joshuathan Investments, Inc., Belize City, BZ
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <amexmal.com> and <amexmai.com>,
registered with Bulkregister.Com, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
electronically submitted a Complaint to the National Arbitration Forum (the
"Forum") April 17, 2003; the Forum received a hard copy of the
Complaint April 18, 2003.
On
April 17, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that
the domain names <amexmal.com> and <amexmai.com> are
registered with Bulkregister.Com, Inc. and that Respondent is the current
registrant of the name. Bulkregister.Com, Inc. verified that Respondent is
bound by the Bulkregister.Com, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
April 21, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 12, 2003, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@amexmal.com and postmaster@amexmai.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 20, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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. The domain names registered by
Respondent, <amexmal.com> and <amexmai.com>, are
confusingly similar to Complainant’s AMEX mark.
2. Respondent has no rights or legitimate
interests in the <amexmal.com> and <amexmai.com>
domain names.
3. Respondent registered and used the <amexmal.com>
and <amexmai.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American Express Company, holds some 160 trademark registrations for the AMEX
mark in 83 countries around the world (e.g., U.S. Reg. No.
1,161,278, registered on July 14, 1981, first used in commerce in 1969).
Complainant uses this mark, an abbreviation of its business name, in connection
with a wide variety of banking, travel, and travel-related services, as well as
with its rewards programs and charge, credit, smart and stored value card
services. Complainant has some 57 million cardholders worldwide, and in 2002
grossed more than $23 billion in revenue, spending some $1.45 billion in advertising
the AMEX mark worldwide. Complainant also operates a website at
<americanexpress.com>.
Along with its
registrations for the AMEX mark, the strength of Complainant’s mark is
evidenced through its listing in both the 30th edition of Acronyms,
Initialisms & Abbreviations Dictionary and the Internet search finder
<acronymfinder.com>. A search for news articles on the legal research
website <westlaw.com>, restricted to a sixty-day period, revealed 86
articles referring to Complainant as AMEX.
Respondent,
(This Domain is For Sale) Joshuathan Investments, Inc., registered the <amexmal.com>
and <amexmai.com> domain names March 4, 2001, but Respondent is
not licensed or authorized to use Complainant’s AMEX mark for any purpose.
Respondent uses the disputed domain names to redirect Internet users to the
<top10sites.com> domain name. Upon arriving at the disputed domain name,
a pop-up window appears, stating that: “The domain name you typed is for Sale.
Feel free to Contact our Representative listed Below. (sic)
joshuathainvest@aol.com.” A directory of commercial websites is also listed, as
is a link to an adult-oriented website that professes to be the “Napster of
Pornography” and links to online gambling casinos. When Internet users
accessing the site attempt to close their web browser, an additional series of
pop-up advertisements appear.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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
established in this proceeding that it has rights in the AMEX mark through
registration of the mark with the appropriate governmental agencies worldwide,
as well as by widespread use of the mark in commerce.
The domain names
registered by Respondent, <amexmal.com> and <amexmai.com>,
are both confusingly similar to Complainant’s AMEX mark. Each domain name
entirely incorporates Complainant’s famous AMEX mark, with the addition of a
three-letter suffix. Tacking on a series of letters to Complainant’s mark does
not change the fact that Complainant’s mark remains the prominent feature of
the disputed domain names. See Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding
the suffixes "502" and "520" to the ICQ trademark does
little to reduce the potential for confusion); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, Respondent does not create a distinct mark but renders the
domain name confusingly similar to Complainant’s marks).
Accordingly, the
Panel finds that the <amexmal.com> and <amexmai.com>
domain names are confusingly similar to
Complainant’s AMEX mark under Policy ¶ 4(a)(i).
Complainant can
make a prima facie case against Respondent having rights or legitimate
interests in the domain names with a showing that the “safe harbor” provisions
of Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent. With such a showing, the
burden of demonstrating rights or legitimate interests in the domain names
shifts to Respondent, who has not filed a response to the Complaint in this
proceeding. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no
rights or legitimate interests with respect to the domain name it is incumbent
on Respondent to come forward with concrete evidence rebutting the allegations
because this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests with respect to the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name).
Respondent’s use of the disputed domain names to redirect Internet
users to commercial and pornographic websites that bear no relation to the AMEX
mark is not a “bona fide” offering of goods or services under Policy ¶ 4(c)(i),
and it is not an example of a legitimate noncommercial or fair use of domain
names pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v.
R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000)
(finding no rights in a domain name where Respondent offered the infringing
domain name for sale and the evidence suggests that anyone approaching this
domain name through the worldwide web would be "misleadingly"
diverted to other sites); see also Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001)
(finding that infringing on another's well-known mark to provide a link to a
pornographic site is not a legitimate or fair use).
Both the fame of Complainant’s AMEX mark and the WHOIS contact
information for the disputed domain names compel the inference that Respondent
is not “commonly known by” the name AMEXMAL, AMEXMAI, <amexmal.com> or <amexmai.com>. The Panel
concludes that Complainant satisfied the requirements of Policy ¶ 4(c)(ii) and
that its does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding
sufficient proof that Respondent was not commonly known by a domain name
confusingly similar to Complainant’s VICTORIA’S SECRET mark because of
Complainant’s well-established use of the mark).
Accordingly, the
Panel finds that Respondent has no rights or legitimate interests in the <amexmal.com>
and <amexmai.com> domain names under Policy ¶ 4(a)(ii).
Complainant
urges that Respondent registered and used the domain names in bad faith.
Evidence that Respondent registered the <amexmal.com> and <amexmai.com>
domain names in bad faith can be inferred from the fact that Respondent
deliberately chose to register two domain names that entirely incorporated
Complainant’s famous AMEX mark. Registration with actual or constructive
knowledge of a trademark holder’s rights in a mark is evidence of bad faith
registration. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse").
Nothing about the websites associated with the disputed domain names
reference the phrases “amexmal” or “amexmai.” The value of these domain names
rests in their appropriation of the AMEX mark. In using the infringing domain
names to redirect Internet users to commercial websites that prominently
display links to adult-oriented websites, Respondent’s activities tarnish
Complainant’s mark and support findings of bad faith use of the disputed domain
names. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding bad faith where Respondent linked the domain name in question to
websites displaying banner advertisements and pornographic material); see
also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's
well-known mark to provide a link to a pornographic site is evidence of bad
faith registration and use).
Using
Complainant’s AMEX mark in both disputed domain names creates a likelihood of
confusion as to the source or sponsorship of the websites linked to the <amexmal.com>
and <amexmai.com> domain names. As Respondent presumably redirects
Internet users for commercial gain via referral fees, its activities evidence
bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Kmart v.
Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain).
The Panel thus
finds that Respondent registered and used the <amexmal.com> and <amexmai.com>
domain names in bad faith and that
Complainant satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <amexmal.com> and <amexmai.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 3, 2003.
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