American Express Marketing & Development Corp. v. AlphaThings / Abhijith S
Claim Number: FA1903001833496
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Timothy J. Kelly of McCarter & English, LLP, New York, USA. Respondent is AlphaThings / Abhijith S (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanexpressconfirmcard.com>, registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil-Jimenez as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 11, 2019; the Forum received payment on March 11, 2019.
On March 11, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <americanexpressconfirmcard.com> 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 March 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2019 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@americanexpressconfirmcard.com. Also on March 13, 2019, 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.
An untimely Response was received and determined to be complete on April 3, 2019.
On April 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil-Jimenez 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 names be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the company name, tradename, and more than 250 trademark registrations in more than 150 countries around the world comprised or incorporating the trademark AMERICAN EXPRESS. Complainant also relies on the fact that the trademark AMERICAN EXPRESS is a famous trademark, well known and widely promoted, which has been in use as early as 1850, when it began as an express mail business. American Express has also invested billions of dollars advertising and promoting the AMERICAN EXPRESS brand throughout the world. It is claimed that only in the U.S. American Express has invested an average of $2 billion per year as of 2013 in advertising and promotion. As a result of these efforts, the AMERICAN EXPRESS brand has become one of the most recognized brands in the world. In 2017, the trademark AMERICAN EXPRESS was identified as the 27th most valuable brand in the world, with a net worth of $17.8. billion.
Based on the foregoing, the Complainant contends:
A. That the accused domain is identical to the famous trademark AMERICAN EXPRESS, since the mere addition of the descriptive phrase “confirmcard” is insufficient to create a distinct and unique domain that is not similar.
B. That Respondent has no legitimate right or interest in the domain name inasmuch as there is no knowledge of any realistic basis for Respondent to have adopted the accused name other than capitalizing on American Express’ well-known, famous trademarks. There is no evidence that Respondent is known by the domain name in question, or that the domain is being used in an arguably legitimate manner, or that Respondent owns any registered trademarks for a mark that is the same as the domain name. Moreover, American Express has not granted any authorization or consent for Respondent to own or use the domain name <americanexpressconfirmcard.com>.
C. That respondent has acted in bad faith. The disputed domain <americanexpressconfirmcard.com> incorporates in its entirety the registered and famous trademark AMERICAN EXPRESS, and in addition the Respondent is using the famous and distinctive American Express “BLUE BOX” trademark as well as the trademark AMEX on the website associated with the accused domain name; Respondent is using images from the genuine American Express website on its website, and in addition the website associated with the accused domain name repeatedly and prominently includes American Express’ domain name “americanexpress.com/ confirmcard” in such a manner that consumers, viewing the website identified with the accused domain name would likely believe that the website is a legitimate American Express website.
B. Respondent
Respondent submitted a Response to the Forum on April 3, 2019. Since the deadline to respond to the Complaint, as identified in the Written Notice, was April 2, 2019, the Forum does not consider the Response to be in compliance with ICANN Rule 5.
Now, in his communication Respondent expressed his consent to transfer the <americanexpressconfirmcard.com> domain name to Complainant. However, considering the terms of the response wherein the Respondent states that he was unaware of the “copyright” issues associated with the domain, the Panel hereby has decided to analyze the case under the elements of the UDRP, in as much as the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
The Panel has thoroughly reviewed the Complaint together with the evidence submitted to support the allegations, and based on all the documents, the Panel finds:
- That Complainant is the owner of the company name and trademark AMERICAN EXPRESS, as it is evidenced with the list of the several trademark registrations around the world owned by Complainant submitted with the Complaint, and the copy of the trademark registrations for AMERICAN EXPRESS in the U.S.. The Panel therefore finds that with such registrations Complainant has established rights in the mark AMERICAN EXPRESS under Policy ¶ 4(a)(i) regardless of the location of Respondent. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
- That the addition of the word “confirmcard” does not contribute to establish a difference between said domain and the trademark AMERICAN EXPRESS, registered and undoubtedly famous.
- That the trademark AMERICAN EXPRESS is a widely recognized brand, famous and well-known by consumers around the world. In this concern, the Panel is in agreement with Complainant as regards the fact considering the contents of the website identified with the disputed domain <americanexpressconfirmcard.com>, Respondent demonstrated knowledge of the trademarks AMERICAN EXPRESS and “Blue Box” of Complainant, and such contents do lead to believe that Respondent has no legitimate right or interest in the domain name but instead, to take advantage of the reputation of Complainant and the confusion caused to web surfers who try to use the services offered the Respondent believing that they have accessed a webpage of American Express. The Panel believes that such activities do constitute bad faith, and this is the kind of behavior that merits being established in a decision on a domain name dispute since it is not simply a matter of accepting to transfer the domain to avoid an adverse decision that does constitute a precedent against the Respondent for future effects.
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.
Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademark AMERICAN EXPRESS. In addition, it was demonstrated that the mentioned trademark is widely used and promoted to an extent that it would not be possible to validly argue that the existence of said mark was not known.
The Panel concurs with the Complainant in that the disputed domain name comprises the trademark AMERICAN EXPRESS in its entirety even though it contains generic elements such as “confirmcard” and “.com”. The Panel considers that in spite of the attempted “changes” introduced by the Respondent to the trademark AMERICAN EXPRESS, there is no doubt that the disputed domain is based on said trademark, and also on the trademarks AMEX and “Blue Box” owned as well by Complainant. This is clearly seen on the webpage <americanexpressconfirmcard.com>, a printout of which was attached to the Complaint.
It is therefore evident for the Panel that the disputed domain is likely to be viewed as incorporating the AMERICAN EXPRESS trademark by visitors to Respondent’s website, a circumstance that no doubt may lead consumers to erroneously believe either that the website <americanexpressconfirmcard.com> belongs to the Claimant, or that there is a business association between the Claimant and the Respondent.
In light of the foregoing, the Panel considers that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <americanexpressconfirmcard.com> is confusingly similar to the trademark AMERICAN EXPRESS owned by the Complainant.
Once again, the Panel concurs with Complainant in that nothing in the present case evidences that the Respondent had something in mind when he registered the disputed domain name different from taking advantage from the confusion that users would suffer with the famous and well-known trademark AMERICAN EXPRESS when visiting his website. In fact, Respondent confirms so in his extemporaneous response when he states that “as I don’t have the rights to the domain, I’ll be transferring the domain to American Express without any issues”.
In light of the foregoing, the Panel determines that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <americanexpressconfirmcard.com>.
According to Paragraph 4(b) of the Policy, when certain circumstances are present in a given case they shall be evidence of the registration and use of a domain name in bad faith. Among such circumstances the Policy mentions in Paragraph 4(b)(iv): using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant 's mark as to the source, sponsorship, affiliation, or endorsement of you’re the Respondent’s site or location or of a product or service on the Respondent’s web site or location.
In the present case, the extreme similarity of the disputed domain name with the registered and famous trademark AMERICAN EXPRESS clearly indicates that there was a prima facie intention of the Respondent to attract Internet users for commercial gain. This is evidenced, again, with the document submitted by Complainant showing how Respondent’s website displays the “americanexpress.com/confirmcard” link making it appear that the website is in fact the American Express page. This fact, added to the unauthorized use of the “Blue Box” trademark owned by Complainant, the trademark AMEX and also even images taken from the American Express website, add more ingredients of bad faith to the present case, where Respondent appears as having been determined to make a business by using Complainant’s trademarks and goodwill. The undeniable intention of benefiting from the good-will, reputation and prominence of American Express, lead to conclude without doubt that the disputed domain name <americanexpressconfirmcard.com> was adopted and registered in bad faith.
Due to all the above, it is imperative to conclude that the disputed domain name <americanexpressconfirmcard.com> has been registered and is being used in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanexpressconfirmcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil-Jimenez Panelist
Dated: April 17, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page