American Express Company v. Elt Inc. Air
a/k/a Jose Josejose
Claim
Number: FA0508000537921
Complainant is American Express Company (“Complainant”),
represented by Dianne K. Cahill, of American Express Company,
200 Vesey Street, (49-12), New York, NY 10285.
Respondent is Elt Inc. Air a/k/a Jose Josejose (“Respondent”), 532 Carey Ave., Staten Island, NY
10310.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <americanexpressair.com> and <americanexpressvacation.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.
Honorable
Paul A. Dorf, (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 15, 2005.
On
August 11, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <americanexpressair.com> and <americanexpressvacation.com>
domain names are registered with Go Daddy Software, Inc. and that Respondent is
the current registrant of the 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
August 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 12, 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@americanexpressair.com and postmaster@americanexpressvacation.com
by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 19, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Honorable Paul A. Dorf (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americanexpressair.com>
and <americanexpressvacation.com> domain names are confusingly
similar to Complainant’s AMERICAN EXPRESS mark.
2. Respondent does not have any rights or
legitimate interests in the <americanexpressair.com> and <americanexpressvacation.com>
domain names.
3. Respondent registered and used the <americanexpressair.com>
and <americanexpressvacation.com> domain names 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. 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).
Respondent
registered the <americanexpressair.com> domain name on December
18, 2004 and the <americanexpressvacation.com> domain name on
January 20, 2005. Respondent is using
the disputed domain names to redirect Internet users to its commercial websites
featuring travel-related services that compete with Complainant’s business.
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 rights in the AMERICAN EXPRESS mark through registration of the
mark with the USPTO and through continuous use of the mark in commerce for 155
years. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed
Tech., 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.”).
The <americanexpressair.com>
and <americanexpressvacation.com> domain names registered by
Respondent are confusingly similar to Complainant’s AMERICAN EXPRESS mark
because the domain names incorporate Complainant’s mark in its entirety and add
the common terms “air” and “vacation,” and the generic top-level domain
“.com.” The Panel finds that such minor
additions to Complainant’s registered mark are insufficient to negate the
confusingly similar aspects of Respondent’s domain names 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 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 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); 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
alleged that Respondent does not have rights or legitimate interests in the <americanexpressair.com>
and <americanexpressvacation.com> domain names. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to prove
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain names. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); 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 does not have rights or legitimate interests 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 <americanexpressair.com> and <americanexpressvacation.com>
domain names to redirect Internet users to Respondent’s commercial website
featuring travel-related services that compete with Complainant’s
business. Respondent’s use of domain
names that are confusingly similar to Complainant’s AMERICAN EXPRESS mark to
redirect Internet users interested in Complainant’s products to websites that
offer similar goods in competition with Complainant’s business is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc.,
FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal
services and sale of law-related books under Complainant's name is not a bona
fide offering of goods and services because Respondent is using a mark
confusingly similar to the Complainant's to sell competing goods.”).
Moreover,
Respondent has offered no evidence and there is no evidence in the record
suggesting that Respondent is commonly known by the <americanexpressair.com>
or <americanexpressvacation.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the <americanexpressair.com> and <americanexpressvacation.com>
domain names pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent is
not known by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <americanexpressair.com> and <americanexpressvacation.com>
domain names, which are confusingly similar to Complainant’s AMERICAN EXPRESS
mark, to redirect Internet users to Respondent’s commercial websites that
feature goods and services that compete with Complainant’s business. The Panel finds that such use constitutes
disruption and is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that the respondent diverted business from the
complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing websites. Because
Respondent’s domain names are confusingly similar to Complainant’s AMERICAN
EXPRESS mark, Internet users accessing Respondent’s domain names may become
confused as to Complainant’s affiliation with the resulting websites. Thus, Respondent’s use of the <americanexpressair.com>
and <americanexpressvacation.com> domain names constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See
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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat.
Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed
Internet users seeking the complainant’s site to its own website for commercial
gain).
Furthermore,
Respondent registered the <americanexpressair.com> and <americanexpressvacation.com>
domain names with 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 domain names that are
confusingly similar to another’s mark despite actual or constructive knowledge
of the mark holder’s rights constitutes 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 <americanexpressair.com> and <americanexpressvacation.com>
domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
October 5, 2005
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