DECISION

 

American Express Company v. Corey Pierce d/b/a 4eStrategy LLC

Claim Number: FA0307000166008

 

PARTIES

Complainant is American Express Company, New York, NY (“Complainant”) represented by Dianne K. Cahill.  Respondent is Corey Pierce d/b/a 4eStrategy LLC, Mission Viejo, CA (“Respondent”) represented by Corey Pierce.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue, number eighteen in total and are <american-express-application.com>, <american-express-application.net>, <american-express-credit-card-applications.com>, <american-express-credit-card-applications.net>, <apply-for-american-express.com>, <apply-for-american-express.net>, <american-express-cards.net>, <american-express-credit-cards.net>, <american-express-corporate-card.com>, <american-express-corporate-card.net>, <american-express-blue-cards.com>, <american-express-blue-cards.net>, <american-express-gold-card.com>, <american-express-gold-card.net>, <american-express-platinum-card.com>, <american-express-platinum-card.net>, <american-express-credit-card-services.com>, and <american-express-credit-card-services.net>, (hereinafter the “domain names”) registered with Go Daddy Software, Inc..

 

PANEL

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.

 

Clive Elliott as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 1, 2003; the Forum received a hard copy of the Complaint on July 2, 2003.

 

On July 2, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names, namely <american-express-application.com>, <american-express-application.net>, <american-express-credit-card-applications.com>, <american-express-credit-card-applications.net>, <apply-for-american-express.com>, <apply-for-american-express.net>, <american-express-cards.net>, <american-express-credit-cards.net>, <american-express-corporate-card.com>, <american-express-corporate-card.net>, <american-express-blue-cards.com>, <american-express-blue-cards.net>, <american-express-gold-card.com>, <american-express-gold-card.net>, <american-express-platinum-card.com>, <american-express-platinum-card.net>, <american-express-credit-card-services.com>, and <american-express-credit-card-services.net> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the domain names.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 July 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 28, 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@american-express-application.com, postmaster@american-express-application.net, postmaster@american-express-credit-card-applications.com, postmaster@american-express-credit-card-applications.net, postmaster@apply-for-american-express.com, postmaster@apply-for-american-express.net, postmaster@american-express-cards.net, postmaster@american-express-credit-cards.net, postmaster@american-express-corporate-card.com, postmaster@american-express-corporate-card.net, postmaster@american-express-blue-cards.com, postmaster@american-express-blue-cards.net, postmaster@american-express-gold-car.com, postmaster@american-express-gold-card.net, postmaster@american-express-platinum-card.com, postmaster@american-express-platinum-card.net, postmaster@american-express-credit-card-services.com, and postmaster@american-express-credit-card-services.net by e-mail.

 

A timely Response was received and determined to be complete on July 25, 2003.

 

An Additional Submission was timely received from Complainant and was determined to be complete on July 30, 2003. The Additional Submission is referred to below and is taken into account in reaching a conclusion.

 

On August 5, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott as Panelist.

 

On August 14, 2003 a decision was forwarded to the Forum.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant

 

Complainant bases this complaint on its company name American Express Company, its trade name and its trademark registrations for numerous AMERICAN EXPRESS marks.

 

Complainant claims it has numerous granted and pending U.S. applications that contain AMERICAN EXPRESS. Additionally, Complainant claims it is the owner of over 400 other trademark registrations for its AMERICAN EXPRESS mark or marks that contain AMERICAN EXPRESS in over 100 other countries around the world. 

 

Complainant states that it uses its AMERICAN EXPRESS mark in connection with its web site at <americanexpress.com>.

 

Complainant contends that it has established rights in the AMERICAN EXPRESS mark through registration with the U.S. Patent and Trademark Office on October 2, 1962 (Reg. No. 738,813) and through use of the mark in commerce since 1850.  Respondent does not dispute this.

 

Complainant contends that the Respondent’s domain names are confusingly similar to Complainant’s AMERICAN EXPRESS mark because the domain names fully incorporate the AMERICAN EXPRESS mark.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity (sic) or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).

 

Complainant asserts that the American Express Company began using the AMERICAN EXPRESS trademark in 1850 and in that same year it began use of AMERICAN EXPRESS as a trade name.  It contends that since that time American Express has expanded its use of the AMERICAN EXPRESS mark and the American Express name to include a wide variety of financial services and travel related services.  American Express uses its mark and name in connection with a wide variety of goods and services including charge card, credit card, smart card and stored value card services, travel and travel-related services, banking, investment and insurance services that are used by millions worldwide. Again, Respondent does not dispute this.

 

When Complainant first became aware of Respondent’s registration of the domain names, American Express’ counsel sent correspondence to the Respondent, the registrant listed on the registration, requesting transfer of the domain names. 

 

Respondent replied to Complainant’s counsel stating that the Respondent had registered the domain names as a result of a Request for Proposal (RFP) for obtaining small business owner applications for the re-branded American Express small business services division. Respondent went on to say that “The simple solution to this is that American Express pay for our domain registration expenses, the domain name transfer costs, for our time, and compensate us fairly . . . .” 

 

Complainant asserts that the RFP did not contain any instructions, express or implied, to Respondent or any other party who submitted RFP responses, to register the domain names.   It is asserted that the domain names were registered by the Respondent, not at the request of American Express nor any other entity associated with American Express, but as a way to try and get American Express business.

 

Complainant’s counsel sent further correspondence to Respondent restating the Complainant’s position and policy not to pay for the transfer of a domain name incorporating its AMERICAN EXPRESS trademark and asking that the domain names be transferred to American Express.  Respondent subsequently replied that “This is now a point of honor. . . . No we will not transfer these domains without fair and reasonable compensation.” 

 

Complainant asserts that the Respondent’s addition of non-distinctive, descriptive, generic words and/or another trademark to the mark AMERICAN EXPRESS results in domain names that are confusingly similar to the Complainant’s AMERICAN EXPRESS mark and its domain name <americanexpress.com>.  It thus contends that  when consumers enter any of the domain names and are not connected to the American Express Company web site, they will be confused as to (1) whether Respondent and/or its web site is affiliated in some way with American Express and/or (2) whether the domain names and/or web sites are endorsed, authorized or sponsored by American Express Company.

 

Complainant notes that while the domain names have been registered since December 2001 (and renewed in December 2002 for an additional two-year term), they do not connect to active web sites. It also notes that the domain names have not been used despite having been registered for over a year.  It is contended that the absence of use of the domain names raises an inference that there has been use (or more accurately, non-use) of the domain names in bad faith.  See Morinaga & Co., Ltd. v. Jin Tong, D2001-0622 (WIPO, June 28, 2001).

 

Complainant asserts it appears that the only motivation for registering the domain names was to capitalize on the potential of 7.5 million average monthly visitors to the American Express web site who might mistakenly enter any one of the domain names as a web address. 

 

B. Respondent

 

Respondent is a web site operator or is otherwise associated with such activity.

 

Respondent asserts that he was given permission by Complainant to register the domain names.  However, Respondent states that he does not claim any rights or interests in the domain names beyond what was permitted by Complainant.  Therefore, Respondent states he is willing to transfer the domain names on the condition that Respondent pays for the transfer costs.

 

Respondent says the domain names were registered in good faith and in direct response to a Request for Proposal from a partner of and marketing agent for the Complainant (Mr. Kyle Sherwin of Digitas) by an e-mail dated November 20, 2001.  Therefore, Respondent asserts that the domain names were not registered or used in bad faith because the Respondent was given permission by the Complainant to register them. Complainant disputes this.

 

Respondent asserts that the domain names were registered for the sole purpose of promoting the Complainant and has been used for no other purpose.  He notes that such can be seen by the fact that search engines have indexed none of the domain names and there is no record of any web site having existed at any of the domain names.

 

Respondent claims to have agreed to waive claims against the Complainant for breach of the NDA and for Complainant inducing Respondent to disclose the nature of Respondent’s alleged proprietary marketing techniques by Complainant verbally acknowledging a $250,000 award to the Respondent. Again, Complainant disputes this.

 

C. Additional Submissions

 

Complainant requests that the answer filed by the Respondent on July 18, 2003 be denied acceptance.   This request is made to protect proprietary information of the American Express Company. 

 

Respondent's answer refers to a Request for Proposal (RFP) from Complainant.  Complainant in turn asserts a Non-Disclosure Agreement (NDA), precludes public disclosure of the contents of the RFP, given that before receiving the RFP from Complainant, Respondent was required to sign a NDA.  Complainant's records confirm that Respondent executed the required NDA before receiving the RFP from Complainant. 

 

Accordingly, Complainant asserts that by attaching the RFP to its answer, Respondent is in violation of the NDA.  To protect its proprietary information, Complainant requested that Respondent's answer, including all exhibits attached thereto, be destroyed upon receipt of the same by the NAF, and that Respondent is required to resubmit its answer without inclusion of Complainant's proprietary information. There is no need to formally rule on this point. The Panelist has not seen the RFP and does not regard it as necessary to do so in order to rule on this matter.

 

What is more relevant is that Complainant contends in its Additional Submissions that if “The domain names were registered for the sole purpose of promoting Complainant and have been used for no other purpose. . . ., Respondent would have transferred the domain names without condition when requested to do so by Complainant’s counsel." There is merit in this point.

 

Complainant also notes that even if Respondent had been selected as the vendor for the RFP, which he was not, Complainant would not permit registration of domain names by a third party that contain the Complainant’s trademark, trade name and company name.  It points out, that for entities that are part of Complainant’s Affiliate Program, entities that have a business relationship with Complainant, are not permitted to use Complainant’s trademarks, trade name or company name in the affiliate’s domain names.  Section 7.3 of the Affiliate Agreement reads in part:

 

“7.3     As a condition to your acceptance and participation in the Program, you shall not undertake or engage in the following practices, and any violation of this Section shall be deemed a material breach of this Agreement: . . . (d) Use "American Express" or "Amex" as domain name, or portion thereof, . . . or (f) During the term of or after the expiration or termination of this Agreement, use any mark, name or domain name of any type which is confusingly similar to "American Express" or "Amex" or other American Express trademarks.”

 

FINDINGS

Pursuant to paragraph 4(a) of the Policy it is found that:

 

(1) The domain names, namely <american-express-application.com>, <american-express-application.net>, <american-express-credit-card-applications.com>, <american-express-credit-card-applications.net>, <apply-for-american-express.com>, <apply-for-american-express.net>, <american-express-cards.net>, <american-express-credit-cards.net>, <american-express-corporate-card.com>, <american-express-corporate-card.net>, <american-express-blue-cards.com>, <american-express-blue-cards.net>, <american-express-gold-card.com>, <american-express-gold-card.net>, <american-express-platinum-card.com>, <american-express-platinum-card.net>, <american-express-credit-card-services.com>, and <american-express-credit-card-services.net> are confusingly similar to the AMERICAN EXPRESS trademark and name.

 

(2)    That the Respondent has no rights or legitimate interests in respect of the domain names; and

(3) The domain names were registered and are being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

Procedural Issues

 

Before turning to the specific grounds, a matter of procedure needs to be dealt with.

 

It is clear that there is a dispute between the parties as to whether Respondent was given permission by Complainant to register the domain names.  Also, it appears that both parties have made allegations of breach of contract.  Further, the record contains several e-mails between the two parties and the Forum.  Complainant has asserted that Respondent has breached Complainant’s non-disclosure agreement because Respondent’s response included Complainant’s request for proposal (“RFP”).  However, neither the non-disclosure agreement nor the RFP form part of the formal record.

 

Based on these allegations, the Panel may find that this dispute is outside the scope of the UDRP.  See Discover New England v. Avanti Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the UDRP because the dispute centered on the interpretation of contractual language and whether or not a breach occurred).

 

However, in the present case Respondent has stated that he is willing to transfer the domain names as long as he is not required to pay for the transfer fees.  A Panel may find that Respondent lacks rights or legitimate interests in a disputed domain name because Respondent is willing to transfer them to Complainant.  See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name). 

 

In addition, a Panel may find that bad faith under Policy 4(a)(iii) has been satisfied because Respondent is willing to transfer the disputed domain name.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding Respondent’s willingness to transfer and its failure to develop the site are evidence of its bad faith registration and use).

 

These cases seem apposite in the present case and suggest that this is a proper case for resolution through the mechanism of the UDRP. Further, Complainant has provided supporting information and contended that even if Respondent had been selected as the vendor for the RFP, Complainant would not have permitted registration of domain names by a third party that contain the Complainant’s trademark, trade name and company name. Again, this militates against Respondent’s argument. The Panel thus turns to the grounds.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has established rights in the AMERICAN EXPRESS mark through various registrations and through use of the mark in commerce since 1850. 

 

As Complainant notes in its submission the AMERICAN EXPRESS mark has been adjudicated a famous mark in court decisions, including, American Express Company v. Lyons, d/b/a American Express et. al., 193 USPQ 96 (E.D. CA 1976) and American Express Co. v. South American Express Inc., 207 USPQ 893 (C.D. CA 1980).  Moreover, the National Arbitration Forum held in American Express Company v. Strategic Concepts that “Complainant’s trademark is well known in the U.S. and around the world.”  See American Express Company v. Strategic Concepts, NAF 96378, February 15, 2001.

 

It further notes that several ICANN decisions have held that the addition of a non-distinctive, descriptive or generic term does not change the overall impression of a mark.  In fact, in American Express Company v. Stealth Commerce a NAF Panel held that “the domain name . . . consists of the AMERICAN EXPRESS trademark with the term “bank” appended at the end.  “Bank” is a generic term.  As such, it does not serve to distinguish the domain name from the AMERICAN EXPRESS mark.  To the contrary, it only serves to heighten the potentiality for confusion . . . .”  See American Express Company v. Stealth Commerce, NAF No. 106119, May 8, 2002.

 

Complainant contends that the domain names are confusingly similar to Complainant’s AMERICAN EXPRESS mark because the domain names fully incorporate the AMERICAN EXPRESS mark.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity (sic) or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).

 

American Express uses its mark and name in connection with a wide variety of goods and services including charge card, credit card, smart card and stored value card services, travel and travel-related services, banking, investment and insurance services. The Respondent has simply appended to the AMERICAN EXPRESS mark words/terms describing these activities. This does nothing to distinguish.  The domain names can only be seen as confusingly similar.

 

The ground is made out.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights or legitimate interests in the domain names because Respondent was not authorized to use Complainant’s mark.  See K&N Eng’g, Inc. v. Weinberger, FA 114414 (Nat. Arb. Forum July 25, 2002) (holding that Respondent, who was not an authorized distributor of Complainant’s products, lacked rights or legitimate interests in a domain name incorporating Complainant’s mark); see also Am. Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interest in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).

 

Furthermore, Complainant asserts that Respondent has not used the domain names for over eighteen (18) months.  The Panel may find that Respondent has passively held the domain names, and therefore Respondent lacks rights or legitimate interests in the domain names.  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

 

As noted above, Complainant has contended (and provided support for the proposition) that even if Respondent had been selected as the vendor for the RFP, it would not have permitted registration of domain names by a third party that contain Complainant’s trademark, trade name and company name. That would be consistent with good and usual corporate practice.

 

Respondent does not challenge Complainant’s rights and interest in the domain names and fails to adequately explain how registering them and then renewing them or allowing them to be renewed, contrary to earlier promises, is legitimate or according to a right or legitimate interest.

 

Accordingly, the ground is made out.

 

Registration and Use in Bad Faith

 

Complainant asserts that the AMERICAN EXPRESS mark is known worldwide and that Respondent registered the domain names in bad faith because Respondent had constructive knowledge of Complainant’s rights in the mark.  See Digi Int’l, Inc. 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”). Indeed, in the present case Respondent does not deny actual knowledge of Complainant’s marks and could hardly do so. However, he asserts he registered the domain names to protect that very same interest.

 

In addition, Complainant maintains that Respondent has not developed the disputed domain names for over eighteen (18) months, which constitutes passive holding.  Passive holding of a domain name is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

 

Furthermore, Complainant claims that Respondent registered the domain names with the intent to capitalize from the goodwill associated with the AMERICAN EXPRESS mark.  Complainant asserts that Respondent could not possibly use the domain names in a manner that could avoid Internet confusion, and therefore Respondent has engaged in bad faith pursuant to Policy ¶ 4(a)(iii).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of Complainant). 

 

Also, Complainant contends that Respondent has requested compensation for the domain names.  Attempts to sell a domain name that infringes on another’s trademark or service mark for valuable consideration in excess of Respondent’s documented out-of-pocket costs is evidence of bad faith pursuant to Policy 4(b)(i).  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith.

 

Respondent was vague and enigmatic about what it would take to effect a transfer, stating he was interested in “the domain name transfer costs, for our time, and compensate us fairly . . . .” whatever that means. However, it then became a “point of honor” and a “ fair and reasonable compensation” was required. For eighteen domain names, all incorporating the key words AMERICAN EXPRESS, it is reasonable to infer that Respondent was after a sum in excess of his out of pocket expenses and this was the sole or a major driver of his actions.  His conduct bears the hallmarks of opportunism and lack of candor.

 

For this reason and those reasons identified above it is found that this amounts to bad faith conduct and accordingly that the ground is made out.

 

DECISION

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

 

Accordingly, it is Ordered that the domain names <american-express-application.com>, <american-express-application.net>, <american-express-credit-card-applications.com>, <american-express-credit-card-applications.net>, <apply-for-american-express.com>, <apply-for-american-express.net>, <american-express-cards.net>, <american-express-credit-cards.net>, <american-express-corporate-card.com>, <american-express-corporate-card.net>, <american-express-blue-cards.com>, <american-express-blue-cards.net>, <american-express-gold-card.com>, <american-express-gold-card.net>, <american-express-platinum-card.com>, <american-express-platinum-card.net>, <american-express-credit-card-services.com>, and <american-express-credit-card-services.net> be TRANSFERRED from Respondent to Complainant.

 

 

 

Clive Elliott, Panelist
Dated: August 14, 2003

 

 

 

 

 

 

 

 

 

 

 

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