American Express Company v. Coliseum Inc.
Claim
Number: FA0505000486061
Complainant, American Express Company (“Complainant”),
is represented by Dianne K. Cahill, 200 Vesey Street, (49-12), New York,
NY 10285. Respondent is Coliseum Inc. (“Respondent”), 245 N.
Litchfield Rd., Ste. 202, Goodyear, AZ 85338.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americanexpresspharmacy.com>, registered
with Go Daddy Software, Inc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 31, 2005.
On
May 26, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <americanexpresspharmacy.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. 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
June 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 28, 2005 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@americanexpresspharmacy.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 30, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americanexpresspharmacy.com>
domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark.
2. Respondent does not have any rights or
legitimate interests in the <americanexpresspharmacy.com> domain
name.
3. Respondent registered and used the <americanexpresspharmacy.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American Express Company, has been using its AMERICAN EXPRESS trademark since
1850 in connection with a wide variety of financial and travel related
services, including credit card, smart card and stored value card services in
addition to banking, investment and insurances services that are used by
millions of people worldwide.
Complainant holds numerous trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the AMERICAN EXPRESS mark
(i.e., Reg. No. 1,024,840, issued November 11, 1975 and Reg. No. 1,032,516,
issued February 3,1976).
Complainant
extensively advertises its trademark and services through television, radio and
print advertising, including statement inserts and brochures that are available
at merchant sites and on Complainant’s <americanexpress.com> website.
Respondent
registered the <americanexpresspharmacy.com> domain name on
November 16, 2004 and is using the disputed domain name to redirect Internet
users to its website where Respondent is advertising the sale of
pharmaceuticals without the requirement of a prescription.
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
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 (Nat.
Arb. 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.").
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 that it has rights in the AMERICAN EXPRESS mark through registration
with the USPTO in addition to continuous use of the mark in commerce for the
last one hundred and fifty-five years. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <americanexpresspharmacy.com>
domain name registered by Respondent is confusingly similar to Complainant’s
AMERICAN EXPRESS mark because the domain name incorporates Complainant’s mark
in its entirety with the addition of the generic or descriptive term
“pharmacy.” The mere addition of a
non-distinctive, descriptive, generic word to a registered mark does not negate
the confusing similarity of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See L.L. Bean, Inc. v.
ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that
combining the generic word “shop” with the complainant’s registered mark
“llbean” does not circumvent the complainant’s rights in the mark nor avoid the
confusing similarity aspect of the ICANN Policy); see also Marriott Int’l, Inc. v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain
name <marriott-hotel.com> is confusingly similar to the complainant’s
MARRIOTT mark); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO
Nov. 22, 2000) (“Respondent does not by adding the common descriptive or
generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or
different marks in which it has rights or legitimate interests, nor does it
alter the underlying [PG&E] mark held by Complainant.”); see also
Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar.
6, 2001) (finding that the domain name
<christiesauction.com> was confusingly similar to the complainant's
mark since it merely added the word “auction” used in its generic sense); see
also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3,
2000) (finding that four domain names that added the descriptive words
"fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark).
Additionally,
the Panel finds that Respondent’s addition of the generic top-level domain
“.com” is insufficient to distinguish the domain name from Complainant’s
AMERICAN EXPRESS trademark. See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr.
27, 2000) (holding that the domain name <robohelp.com> is identical to
the complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Gardline Surveys
Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302
(Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>,
is identical to Complainant's KIOTI mark because adding a top-level domain name
is irrelevant for purposes of Policy ¶ 4(a)(i).”); see also Nev. State Bank
v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003)
(“It has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
established its rights in the AMERICAN EXPRESS mark and alleges that Respondent
has no such rights or legitimate interests in the disputed domain name. The burden shifts to Respondent to show that
it does have rights or legitimate interests once Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii).
Due to Respondent’s failure to respond to the Complaint, the Panel
assumes that Respondent lacks rights and legitimate interests in the disputed
domain name. See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
Respondent is
using the disputed domain name to redirect Internet users to its website where
Respondent is advertising the sale of pharmaceuticals without the requirement
of a prescription. Respondent’s use of
a domain name that is confusingly similar to Complainant’s AMERICAN EXPRESS
mark to redirect Internet users searching for Complainant to Respondent’s
commercial website is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See U.S. Franchise Sys.,
Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the
complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering
of goods or services); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where the respondent attempted
to profit using the complainant’s mark by redirecting Internet traffic to its
own website); see also Am. Online, Inc. v. Tencent Communicatins
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the
complainant’s mark “as a portal to suck surfers into a site sponsored by [the
respondent] hardly seems legitimate”); see also G.D. Searle & Co. v.
Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s
use of the disputed domain name to solicit pharmaceutical orders without a
license or authorization from the complainant does not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i)).
Furthermore,
Complainant asserts that Respondent is not commonly known by the <americanexpresspharmacy.com>
domain name pursuant to Policy ¶ 4(c)(ii) of the Policy. Nothing in the record contradicts this
assertion. In fact, Respondent conducts
business under the name “Coliseum Inc.”
Thus, the Panel finds Respondent did not establish rights or legitimate
interests in the dispute domain name under this element. See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that contains Complainant’s entire
AMERICAN EXPRESS mark and did so for Respondent’s commercial gain. Respondent’s domain name diverts Internet
users searching under Complainant’s AMERICAN EXPRESS mark to Respondent’s
commercial website through the use of a domain name that is confusingly similar
to Complainant’s mark. Furthermore,
Respondent is unfairly and opportunistically benefiting from the goodwill
associated with Complainant’s AMERICAN EXPRESS mark. Respondent’s practice of diverting Internet users to advertising
for pharmaceuticals at Respondent’s commercial website constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that the respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb.
Forum Sept. 19, 2002) (finding that because the respondent is using the
infringing domain name to sell prescription drugs, the panel could infer that
the respondent is using the complainant’s mark to attract Internet users to its
website for commercial benefit); see also Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Am.
Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where the respondent registered and used a domain name
confusingly similar to the complainant’s mark to attract users to a website
sponsored by the respondent).
Furthermore,
Respondent registered the <americanexpresspharmacy.com> domain
name with actual or constructive knowledge of Complainant’s rights in the
AMERICAN EXPRESS mark due to Complainant’s registration of the mark with the
USPTO as well as the immense international fame associated with the mark. Registration of a domain name that is
confusingly similar to another’s mark despite actual or constructive knowledge
of the mark holder’s rights is tantamount to bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal
Register of the USPTO, a status that confers constructive notice on those
seeking to register or use the mark or any confusingly similar variation
thereof.”).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <americanexpresspharmacy.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
July 14, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum