American Express Marketing & Development Corp. v. Hiroyuki Murata
Claim Number: FA1706001736559
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill of American Express Marketing & Development Corp., New York, USA. Respondent is Hiroyuki Murata (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <american-express.cards>, registered with NameSilo, 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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2017; the Forum received payment on June 20, 2017.
On June 21, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <american-express.cards> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 June 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2017 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@american-express.cards. Also on June 21, 2017, 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.
A timely Response was received and determined to be complete on June 22, 2017.
On June 26, 1917, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant began using its AMERICAN EXPRESS mark in 1850 as a trade name, and has since expanded its use of the mark to include a wide variety of financial services, including charge card and credit card services, and travel related services. Complainant registered its AMERICAN EXPRESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,024,840, registered Nov. 11, 1975), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 1. Respondent’s <american-express.cards> domain name is identical or confusingly similar to Complainant’s mark because it merely replaces the space with a hyphen and appends the descriptive generic top-level domain (“gTLD”) “.cards” to the fully incorporated mark.
Respondent has no rights or legitimate interests in the <american-express.cards> domain name. Complainant has not licensed or otherwise authorized Respondent to use its AMERICAN EXPRESS mark in any fashion, and Respondent is not commonly known by the disputed domain name. Further, Respondent uses the disputed domain name to capitalize on Complainant’s good will and notoriety by diverting Internet users seeking Complainant’s website to Respondent’s website. Such use is not construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the disputed domain name in bad faith. Respondent attempts to disrupt the business of Complainant—under Policy ¶ 4(b)(iii)—by including competitors’ links on the resolving webpage. See Compl., at Attached Ex. 3. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the AMERICAN EXPRESS mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Finally, Respondent’s actual knowledge of Complainant’s rights in the mark is further evidence of bad faith.
B. Respondent
Respondent offers no facts or legal argument to dispute the claims of Complainant. Instead, he apologizes for using the trademark and consents to a transfer of the domain name.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <american-express.cards> domain name to Complainant. However, after the initiation of this proceeding, Namesilo, LLC. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <american-express.cards> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
It is the decision of the panel in this case to forego the traditional UDRP analysis and order an immediate transfer of the disputed domain name.
Respondent having failed to dispute the claims of Complainant and having consented to a transfer of the disputed domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <american-express.cards> domain name be TRANSFERRED FROM RESPONDENT TO COMPLAINANT.
Daniel B. Banks, Jr., Panelist
Dated: July 5, 2017
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