DECISION

 

American Express Marketing & Development Corp. v. Whois Privacy Services by gabia

Claim Number: FA1706001737908

 

PARTIES

Complainant is American Express Marketing & Development Corp.

(“Complainant”), represented by Dianne K. Cahill of American Express Marketing & Development Corp., New York, U.S.A.  Respondent is Whois Privacy Services by gabia (“Respondent”), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <xxamexxx.com> and <amexoo.com>, registered with Gabia, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 29, 2017; the Forum received payment on June 29, 2017.

 

On Jun 30, 2017, Gabia, Inc. confirmed by e-mail to the Forum that the <xxamexxx.com> and <amexoo.com> domain names are registered with Gabia, Inc. and that Respondent is the current registrant of the names.  Gabia, Inc. has verified that Respondent is bound by the Gabia, Inc. 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 July 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@xxamexxx.com, postmaster@amexoo.com.  Also on July 5, 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.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant uses its AMEX mark to offer a wide variety of financial and travel related services. Complainant registered the AMEX mark with the United States Patent and Trademark Office (“USPTO”) for the purposes of conducting its financial services. See Compl., at Attached Ex. 2 (Reg. No. 1,161,278, registered Jul. 14, 1981). Respondent’s <xxamexxx.com> and <amexoo.com> domain names are confusingly similar to Complainant’s AMEX mark since the domain names incorporate that mark in its entirety.

2.    Respondent has no rights or legitimate interests in the <xxamexxx.com> and <amexoo.com> domain names. Respondent is neither commonly known by the disputed domain names nor is Respondent using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain names to cause confusion among Internet users and divert those Internet users to Respondent’s websites, upon which Respondent displays pictures of Complainant’s spokespeople. See Compl., at Attached Ex. 4.

3.    Respondent registered, and is using, the <xxamexxx.com> and <amexoo.com> domain names in bad faith. Respondent’s use of the disputed domain name is likely to cause confusion among Internet users searching for Complainant’s services while disrupting Complainant’s services. Further, Respondent’s use is a clear case of cybersquatting. Furthermore, Respondent registered the domain name with knowledge of Complainant’s rights in the AMEX mark.

 

B.   Respondent

1.    Respondent did not submit any contentions for this proceeding.

 

FINDINGS

1.    Respondent’s <xxamexxx.com> and <amexoo.com> domain names are confusingly similar to Complainant’s AMEX mark.

2.    Respondent does not have any rights or legitimate interests in the <xxamexxx.com> and <amexoo.com> domain names.

3.    Respondent registered or used the <xxamexxx.com> and <amexoo.com> domain names in bad faith.

 

Language of Proceeding

 

The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a).  Complainant makes this request in light of the Korean language Registration Agreement.  It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties.  Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Korean language included in the Registration Agreement.  See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).  Further, the Panel weighs the relative time and expense in enforcing the Korean language agreement, which would result in prejudice toward either party.  See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).

 

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language.  After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

 

DISCUSSION

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

(3)  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 representations pursuant to paragraphs 5(f), 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable 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.”).

 

Identical and/or Confusingly Similar

The first prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a  trademark. Complainant claims to have registered the AMEX mark—used in the financial services industry—with the USPTO as early as 1981 (e.g., Reg. No. 1,161,278, registered Jul. 14, 1981), which it contends demonstrates its longstanding rights in the marks. See Compl., at Attached Annex 2. Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has established its rights in the AMEX mark under Policy ¶ 4(a)(i).

 

The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that a disputed domain name is identical or confusingly similar to the mark or marks at issue. Here, Complainant argues that the disputed domain names are confusingly similar to its AMEX mark because both domain names incorporate the mark in its entirety. Inclusion of an entire mark within a domain name is a substantial step towards creating confusing similarity. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law). While the foregoing is true, it is important to note that the disputed domain names also contain features that may or may not distinguish the domain names from Complainant’s mark, such as the additional letters “x” and “o”, as well as a generic top-level domain (“gTLD”), “.com”. Complainant fails to address the additional features of Respondent’s domain name. However, the Panel notes that the addition of superfluous letters and a gTLD is generally insufficient to distinguish a domain name from a mark. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015

(“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); 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). Therefore, the Panel finds that Complainant met its burden of proof with regards to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)

(“Complainant must first make a prima facie showing that Respondent 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 argues that Respondent has no rights or legitimate interests in the <xxamexxx.com> and <amexoo.com> domain names as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent’s use of the AMEX mark, Complainant contends that Respondent is not commonly known by the disputed domain names within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel notes that the WHOIS information concerning the <xxamexxx.com> and <amexoo.com> domain names identifies “Registration Private” and “Whois Privacy Services by gabia” as the respective registrants, which Complainant argues provides no evidence that Respondent is commonly known by the domain names. Accordingly, the Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interests in, the <xxamexxx.com> and <amexoo.com> domain names pursuant to Policy ¶ 4(c)(ii).

 

Complainant further argues that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain names to cause confusion among Internet users and divert those Internet users to Respondent’s website, upon which Respondent displays a picture of Complainant’s spokesperson, as well as its products. Using a disputed domain name to offer, fraudulently or otherwise, Complainant’s services, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum November 5, 2015) (finding no rights or legitimate interests where Respondent offered Complainant’s own financial news services in the Russian language). Respondent’s resolving websites appear to invite users to log in to use what appears to be Complainant’s credit card services, and each website displays a picture of the famous actor Robert DeNiro, who Complainant alleges is its spokesperson. See Compl., at Attached Ex. 5. Therefore, the Panel finds that Respondent is attempting to divert Internet users to a website offering services identical to Complainant’s services and therefore that Respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Registration and Use in Bad Faith

Complainant alleges that Respondent is using the disputed domain names in bad faith by causing confusion among Internet users seeking its products and services and prominently displaying Complainant’s products, thus disrupting its business. Using a confusingly similar domain name to create confusion in Internet users by displaying a complainants marks can adequately evince bad faith under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Complainant provides a screenshot of the resolving webpage for the disputed domain names, which appears to display Complainant’s credit card services. See Compl., at Attached Ex. 4. The Panel holds that Respondent is disrupting Complainant’s business and therefore registered and uses the disputed domain names in bad faith.

 

Further, the Panel looks beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). Complainant insists that Respondent had actual knowledge of Complainant’s rights in the AMEX mark and registered the disputed domain name despite its knowledge. Respondent’s use of a disputed domain name to offer services related, similar, or identical, to Complainant’s services, especially when those services are offered in connection with a widely-known mark, allows the inference that Respondent had actual knowledge and, as a corollary, the existence of bad faith. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Respondent’s resolving websites invite users to log in to use what appears to be Complainant’s credit card services, and each website also displays a picture of the famous actor Robert DeNiro, who Complainant alleges is its spokesperson. See Compl., at Attached Ex. 5. Furthermore, the Panel finds the widespread fame of the AMEX mark, as used in connection with Complainant’s financial services, to be dispositive in favor of Complainant. Therefore, the Panel infers actual knowledge, and on that basis determines that Respondent registered and uses the <xxamexxx.com> and <amexoo.com> domain names in bad faith.

 

DECISION

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

 

Accordingly, it is Ordered that the <xxamexxx.com> and <amexoo.com> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

August 8, 2017