American Express Company v. Wm M
Claim Number: FA0601000621312
Complainant is American Express Company (“Complainant”), represented by Dianne K. Cahill, 200 Vesey Street (49-12), New York, NY 10285. Respondent is Wm M (“Respondent”), P.O. Box 2115, New York, NY 10101-2115.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <amexcards.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 11, 2006.
On January 9, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <amexcards.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 January 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 2, 2006 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@amexcards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amexcards.com> domain name is confusingly similar to Complainant’s AMEX mark.
2. Respondent does not have any rights or legitimate interests in the <amexcards.com> domain name.
3. Respondent registered and used the <amexcards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Express Company, is an international financial services firm specializing in both credit card and travel-related services. Complainant has issued credit cards to over 65 million individuals worldwide. In 2004, Complainant grossed over $29 billion in revenue and spent over $5 billion on marketing and promoting its card services worldwide through various media outlets, including magazine and television advertisements.
Complainant owns numerous trademark registrations for the AMEX mark around the world, including United States Patent and Trademark Office (“USPTO”) Reg. No. 1,161,278, registered on July 14, 1981. Complainant uses the AMEX mark in connection with its credit cards and travel-related services. Complainant also holds USPTO trademark registrations for the AMEX LIFE ASSURANCE COMPANY, AMEXCLUSIVE, AMEXMAIL, and AMEXCELLENCE marks.
Respondent registered the <amexcards.com> domain name on April 12, 2005. Respondent is using the domain name to connect visitors to a web directory that features links to Complainant’s competitors in the travel and financial services industries.
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 AMEX mark through
registration of the mark with the USPTO.
See 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.”); 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.”).
Respondent’s <amexcards.com> domain name is
confusingly similar to Complainant’s AMEX mark pursuant to Policy ¶ 4(a)(i),
because it simply adds on the generic word “cards,” a common term in the
financial industry, to Complainant’s mark.
See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business); see also Christie’s Inc. v. Tiffany’s Jewelry
Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain
name <christiesauction.com> is
confusingly similar to the complainant's mark since it merely adds the word
“auction” used in its generic sense); see also Westfield Corp. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the WESTFIELD mark was the dominant
element).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <amexcards.com> domain name. Complainant has the initial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <amexcards.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
There is also no evidence in the record that Respondent is
commonly known by the <amexcards.com> domain name. Therefore, Respondent has not established
rights or legitimate interests in the <amexcards.com> domain name
pursuant to Policy ¶ 4(c)(ii). See 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 Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Moreover,
Respondent is using the <amexcards.com> domain name, which is
confusingly similar to Complainant’s AMEX mark, to operate a web directory that
features links to Complainant’s competitors.
Respondent’s website diverts Internet users seeking Complainant’s
website to competing websites and gives consumers the impression that Respondent
is affiliated with the Complainant. Use
of the disputed domain name for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use of the domain name pursuant to Policy
¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan.
11, 2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec.
5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial
or fair use because the respondent used the names to divert Internet users to a
website that offered services that competed with those offered by the
complainant under its marks).
Respondent is using the <amexcards.com> domain
name, which is confusingly similar to Complainant’s AMEX mark, to operate a web
directory that diverts Internet users looking for Complainant’s products and
services to competing websites. The
Panel infers that Respondent receives click-through fees for misleading
consumers to these websites. Therefore,
Respondent is taking advantage of the likelihood of confusion between
Respondent’s domain name and Complainant’s mark and capitalizing on the
goodwill of the mark. The Panel finds
that such use constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See
Am. Univ. v. Cook, FA 208629 (Nat. Arb.
Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”); see
also Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also Identigene,
Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where the respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that the complainant is the source of or is sponsoring the
services offered at the site).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amexcards.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 20, 2006
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