National
Arbitration Forum
DECISION
American Express Marketing & Development Corp. v.
Gold Coast Employee Relations c/o Michael Corrigan
Claim Number: FA0603000662950
PARTIES
Complainant is American Express Marketing &
Development Corp. (“Complainant”), represented by Dianne K. Cahill,
of American Express Marketing & Development Corp., 200 Vesey Street
(49-12), New York, NY 10285. Respondent
is Gold Coast Employee Relations c/o Michael Corrigan (“Respondent”),
represented by Michael Corrigan, of Gold Coast Employee Relations Pty
Ltd., PO Box 814, Broadbeach 4218 Queensland, Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amexplatinumtravelservice.com>,
<amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>,
<amexcenturiontravelservice.info>, <centuriontravelservice.com>
and <centuriontravelservice.info>, registered with Primus Telco
Pty Ltd d/b/a Primusdomain/Planetdomain.
PANEL
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.
Carol M. Stoner, Esq. sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on March 21, 2006; the National Arbitration
Forum received a hard copy of the Complaint on March 24, 2006.
On March 28, 2006, Primus Telco Pty Ltd d/b/a
Primusdomain/Planetdomain confirmed by e-mail to the National Arbitration Forum
that the <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>,
<amexcenturiontravelservice.com>, <amexcenturiontravelservice.info>,
<centuriontravelservice.com> and <centuriontravelservice.info>
domain names are registered with Primus Telco Pty Ltd d/b/a
Primusdomain/Planetdomain and that the Respondent is the current registrant of
the name. Primus Telco Pty Ltd d/b/a
Primusdomain/Planetdomain has verified that Respondent is bound by the Primus
Telco Pty Ltd d/b/a Primusdomain/Planetdomain 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 March 30, 2006, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of April19, 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@amexplatinumtravelservice.com,
postmaster@amexplatinumtravelservice.info,
postmaster@amexcenturiontravelservice.com, postmaster@amexcenturiontravelservice.info,
postmaster@centuriontravelservice.com and
postmaster@centuriontravelservice.info by e-mail.
A timely Response was received and determined to be
complete on April 4, 2006.
An Additional Submission from Complainant was received
on April 10, 2006 and the National Arbitration Forum determined it to be timely
and complete in accordance with Supplemental Rule 7.
An Additional Submission from Respondent was received
on April 10, 2006 and the National Arbitration Forum determined it to be timely
and complete in accordance with Supplemental Rule 7.
On April 17, 2006, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Carol M. Stoner,
Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations:
1. Respondent’s domain names are confusingly
similar to Claimant’s marks;
2. Respondent
does not have any rights nor legitimate interests in the <amexplatinumtravelservice.com>,
<amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>,
<amexcenturiontravelservice.info>, <centuriontravelservice.com>
and <centuriontravelservice.info> domain names.
3. Respondent
registered and used the <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>,
<amexcenturiontravelservice.com>, <amexcenturiontravelservice.info>,
<centuriontravelservice.com> and <centuriontravelservice.info>domain
names in bad faith.
B. Respondent makes the following allegations:
1. Respondent
denies that his domain names are confusingly similar to AMEX and CENTURION
trademarks and corporate names;
2. Respondent
alleges that he has rights and legitimate interests in all of the disputed
domain names; and
3. Respondent
denies that he registered or used any of the disputed domain names in bad
faith.
C. Additional Submissions
Claimant disputes certain assertions made by
Respondent in its response. Namely,
that Claimant has not agreed to pay any monetary compensation to Respondent,
not even in the form of a charitable donation; that the two remaining domains
at issue incorporate Claimant’s registered Centurion mark and merely add two
descriptive words that reflect the travel related services offered by
Complainant in the United States and around the world under its CENTURION mark,
American Express’s first use of CENTURION in the United States in connection
with related services predates Respondent’s Delaware incorporation by over six
years and American Express’ CENTURION mark was granted a United States
trademark registration over four (4) years prior to Respondent’s corporate
filing. Respondent is not commonly known by the disputed domain names, pursuant
to policy Par. (4)c) (ii), as WHOIS records reflect that Respondent identifies
itself as Gold Coast Employee Relations. Respondents’ arguments that “its marks
and branding are distinctly different” are irrelevant, as is also, Respondents’
residential status and domicile.
Finally, Complainant states in additional submission, that Respondents’
mere registration of the six domains at issue is evidence of Respondents intent
to trade on the goodwill of Complainant, and also constitutes an inference that
Respondent acted in bad faith and with actual knowledge of Complainant and its
marks.
The Panel finds Claimant’s assertions to be
persuasive.
Respondent filed a timely response to additional
submission, wherein Respondent consented to the transfer of four domain names
to American Express Co., but denied that they were registered in bad faith.
Respondent laments that AMEX would not make a donation to charity for
Respondent’s incurred expenses. Respondent continued to assert that <centuriontravelservice.com>
and <centuriontravelservice.info>domain names are legitimate
domains for existing businesses; that AMEX does not use the disputed Centurion
mark as part of its business name; and that they are not trying to trade on the
goodwill of AMEX.
FINDINGS
Complainant, American Express Company, is in the
business of providing a wide variety of goods and services, including travel,
rewards programs, charges cards, credit cards, smart card and stored value card
services and banking cards.
Complainant holds over 300 trademark registrations for
AMEX in over 80 countries around the world, including Australia and the United
Kingdom, and 75 trademark registrations for CENTURION in 48 countries around
the world including Australia and the United Kingdom. American Express owns an Australian trademark registration for
CENTURION TRAVEL SERVICE, under Registration No. 958,660 covering, “passenger
travel services, namely, passenger tickets and tour arrangements, passenger
transportation, tour and sightseeing reservation services, arranging for
automobile rental and cruises.”
American Express currently has millions of
cardholders, worldwide and annually grosses billions in revenue. American
Express extensively advertises its trademarks and service marks through
television, radio and print advertising, through statement inserts, through
brochures available at merchant sites and on the American Express website at
<americanexpress.com>.
American Express also spends billions annually in marketing, promotions,
rewards and card member services worldwide.
As such, the AMEX and CENTURION trademarks and names are famous and in
wide use worldwide.
Respondent registered the following domain names with Primus
Telco Pty Ltd d/b/a Primusdomain/Planetdomain: <amexplatinumtravelservice.com>,
<amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>,
<amexcenturiontravelservice.info>, <centuriontravelservice.com>
and <centuriontravelservice.info>.
Currently, <centuriontravelservice.com>
is the only domain name that connects to an active web site where visitors are
provided with information about travel and travel-related service.
DISCUSSION
Paragraph 15(a) of the Rules
for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the 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.
Identical and/or Confusingly Similar:
Complainant has established rights in the following marks by registering
them with the United States Patent and Trademark Office (“USPTO”): AMEX (including
Reg. No. 1,149,220 issued March 24, 1981 and Reg. No. 1,161,278 issued July 14,
1981) and CENTURION (Reg. No. 1,096,266 issued July 11, 1978 and Reg. No.
2,488,068 issued September 11, 2001).
Complainant hasalso established rights to the CENTURION TRAVEL
SERVICE mark by registering the mark in Australia (Reg. No. 958,660 issued June
23, 2003). 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 Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction).
Respondent’s <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info>, <centuriontravelservice.com> and <centuriontravelservice.info> domain names are confusingly similar to Complainants' AMEX, CENTURION and CENTURION TRAVEL SERVICE
marks pursuant to Policy ¶ 4(a)(i), because each domain name wholly
incorporates one or two of the marks and merely adds the generic term “travel service”
or “platinum” and the generic top-level domain “.com” or “.info.” The mere
addition of generic terms and generic
top-level domains to Complainant’s marks render Respondent's domain
names confusingly similar to Complainants'
marks. See Amer. Express Co.
v. MustNeed.com, FA 257901 (Nat. Arb. Forum Jun. 7, 2004) (finding the
respondent’s <amextravel.com> domain name confusingly similar to
Complainant’s AMEX mark because the “mere addition of a generic or descriptive
word to a registered mark does not negate” a finding of confusing similarity
under Policy ¶ 4(a)(i)); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights to and Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain names under Policy ¶
4(a)(ii), and then the burden shifts to Respondent to show it does have rights
or legitimate interests. See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate
interests in respect of the Domain Name requires the Complainant to prove a
negative. For the purposes of this sub-paragraph, however, it is sufficient for
the Complainant to show a prima facie case and the burden of proof is
then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to
seek to bring themselves within one of the examples of paragraph 4(c) or put
forward some other reason why they can fairly be said to have a relevant right
or legitimate interests in respect of the domain name in question.”).
Respondent is not commonly known by the disputed domain names, because
Respondent registered the domain names as “Gold Coast Employee Relations c/o
Michael Corrigan,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the disputed domain names. Complainant has not authorized or licensed
Respondent to register or use domain names incorporating Complainant’s AMEX or
CENTURION marks or any variation. As
Respondent is not commonly known by the disputed domain names, the Panel finds
that Respondent does not have rights or legitimate interests in the domain
names pursuant to Policy ¶ 4(c)(ii). See
Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25,
2003) (finding that without demonstrable evidence to support the assertion that
a Respondent is commonly known by a domain name, the assertion must be
rejected); 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"
Respondent is using the <centuriontravelservice.com> domain name to operate a
travel-related website in direct competition with Complainant. The Panel finds
that Respondent is misdirecting Internet users to its own website for
commercial gain, and holds that Respondent is not using the disputed domain
name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb.
Forum Sept. 26, 2003) (“Respondent's registration and use of the
<gayaol.com> domain name with the intent to divert Internet users to
Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”);
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).
Respondent has not made any demonstrable preparations to use the <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info> and <centuriontravelservice.info> domain names,as evidenced by the fact that said domain names do not resolve to any content from the time that
Respondent registered the domain names between September and November of 2005. The Panel finds that such non-use of the
disputed domain names provides evidence that Respondent lacks rights and
legitimate interests in the disputed domain names pursuant to Policy ¶
4(a)(ii). See Vestel Elektronik
Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely
registering the domain name is not sufficient to establish rights or legitimate
interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also
Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding
that no rights or legitimate interests can be found when the Respondent fails
to use disputed domain names in any way).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith:
Respondent has registered and is using the <centuriontravelservice.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is
diverting Internet users seeking Complainant’s travel-related services to its
own websites offering competing travel services. Respondent is taking advantage of the confusing similarity
between Complainant’s CENTURION TRAVEL SERVICE mark and the <centuriontravelservice.com> domain name in order to profit from the goodwill associated with the
mark. The Panel therefore concludes that Respondent has registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See World Wrestling
Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24,
2001) (concluding that the respondent registered and used the <wwfauction.com>domain
name in bad faith because the name resolved to a commercial website that the
complainant’s customers were likely to confuse with the source of the
complainant’s products, especially because of the respondent’s prominent use of
the complainant’s logo on the site); see also Luck's Music Library v.
Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding
that the respondent engaged in bad faith use and registration by using domain
names that were identical or confusingly similar to the complainant’s mark to
redirect users to a website that offered services similar to those offered by
the complainant).
The Panel has adduced evidence that Respondent has registered and is
using the <centuriontravelservice.com> domain name for
the primary purpose of disrupting Complainant’s business. Because Respondent registered the domain
name on January 13, 2005, well after Complainant registered the CENTURION mark
with the USPTO in 1981 and the CENTURION TRAVEL SERVICE mark in Australia in
2003, and is using the disputed domain name to operate a travel website in
direct competition with Complainant, the Panel rules that Respondent’s conduct
provides evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See Gen. Media Commc’ns, Inc. v. Vine Ent.,
FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor
of the complainant registered and used a domain name confusingly similar to the
Complainant’s PENTHOUSE mark to host a pornographic web site); see also 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).
In addition, evidence shows that Respondent is passively holding the <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info> and <centuriontravelservice.info> domain names because they have never resolved to any content. Moreover, because Complainant’s AMEX and
CENTURION marks are well-known, Respondent cannot make any use of the disputed
domain names without creating consumer confusion. Given the fame of Complainant’s AMEX and CENTURION marks,
Respondent’s registration of domain names confusingly similar to the marks, in
and of itself, constitutes bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Phat Fashions v.
Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) even though the Respondent has not used the domain name
because “[i]t makes no sense whatever to wait until it actually ‘uses’ the
name, when inevitably, when there is such use, it will create the confusion
described in the Policy”); see also CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000)
(finding that given the long use and fame of the Complainant’s mark, the
Respondent’s registration of the <twilight-zone.net> domain name and
subsequent non-use of the disputed domain name is evidence of bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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
<amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>,
<amexcenturiontravelservice.com>,
<amexcenturiontravelservice.info>, <centuriontravelservice.com> and
<centuriontravelservice.info> domain names shall be TRANSFERRED
from Respondent to Complainant.
Carol M. Stoner, Esq., Panelist
Dated: May 01, 2006
Click Here
to return to the main Domain Decisions Page.
Click
Here to return to our Home Page
National Arbitration Forum
