American Express Marketing & Development Corp. v. Sameul Badri
Claim Number: FA1906001847670
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Timothy J. Kelly of McCarter & English, LLP, New York, United States. Respondent is Sameul Badri (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanexpressconfirmcard.info>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2019; the Forum received payment on June 13, 2019.
On June 14, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <americanexpressconfirmcard.info> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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 firstname.lastname@example.org. Also on June 18, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an e-mail to the Forum, see below.
On July 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
Complainant states that it began in 1850 as an express mail business. Over the next 160-plus years, it has grown into one of the 100 biggest public companies in the world. As of May 2017, Forbes, Inc. ranked Complainant as number 97 in its annual Global 2000 list of Biggest Public Companies, with a market cap of $70 billion. Complainant’s AMERICAN EXPRESS® brand currently is and has continuously been ranked as one of the most valuable brands in the world. Complainant offers a range of charge card products and revolving credit cards to consumers throughout the world, with more than 10 million new cards issued in 2016 alone. Complainant has rights in the AMERICAN EXPRESS mark through its registration in the United States in 1975. The mark is also registered elsewhere around the world. Complainant has invested billions of dollars advertising and promoting its AMERICAN EXPRESS® brand throughout the world, including in the United States. Since 2013, Complainant has invested on the average of $2 billion per year in advertising and promotion in the United States alone. This advertising and promotion – all of which features the AMERICAN EXPRESS trademark – has taken various forms, including television and online advertising, direct mail advertising, and banner advertising, among others, and has given rise to sales in excess of $24 billion annually since 2009. As a result of Complainant’s long-term and widespread advertising and promotional efforts, the AMERICAN EXPRESS® brand has become one of the most recognized brands in the world.
Complainant alleges that the disputed domain name is identical to its AMERICAN EXPRESS mark as the domain name incorporates the entire mark along with the descriptive language “confirm card.”
According to Complainant, Respondent has no legitimate rights or interests in the disputed domain name as Complainant has not authorized Respondent to use any of Complainant’s marks nor is there any evidence that Respondent is commonly known by the disputed domain name. Nor is Respondent using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, the resolving website displays the image of what purports to be an AMERICAN EXPRESS® card together with material taken from Complainant’s genuine website; and the resolving website repeatedly and prominently includes Complainant’s legitimate domain name <americanexpress.com/confirmcard> in such a way that consumers viewing the resolving website would be likely to believe that it was one of Complainant’s legitimate websites.
Further, says Complainant, Respondent has registered and used the disputed domain name in bad faith by using it to confuse internet users into believing that Respondent’s domain name is affiliated with Complainant. Respondent’s use of the disputed domain name will perpetuate fraud in hopes that consumers will associate the domain name with Complainant and give away personal information. Lastly, Respondent had constructive or actual knowledge of Complainant’s rights in the AMERICAN EXPRESS Mark as the mark is well known in the US and around the world.
Respondent failed to submit a Response in this proceeding. In its e-mail to the Forum, Respondent states (sic): “I have deleted the domain from my servers and it is not live anymore .. I'm okay to for are the domain to you at some compensation to me”
Complainant owns the mark AMERICAN EXPRESS and uses it to marked credit card services around the world. The mark is famous.
Complainant’s rights in its marks date back to at least 1975.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving website displays an image of Complainant’s credit card, material copied from Complainant’s legitimate website, and the URL of Complainant’s legitimate website.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name incorporates the entirety of Complainant’s AMERICAN EXPRESS mark along with the descriptive language “confirm card.” Changes to a mark such as the addition of descriptive terms are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See United Services Automobile Association v. Gabriel Joseph, FA 1781133 (Forum Apr. 17, 2018) (finding the <usaatrustfund.com> domain name confusingly similar to the USAA mark and holding “the inclusion of the term “trustfund” in the domain name is somewhat suggestive of Respondent’s finance related business. Therefore, incorporating the term “trustfund” into the at-issue domain name only adds to any confusion resulting from the inclusion of Complainant’s USAA trademark.”). Further, the addition of the “.info” generic top-level domain (gTLD) is irrelevant when determining whether a domain name is identical to a mark. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the Panel finds that the <americanexpressconfirmcard.info> domain name is identical to Complainant’s AMERICAN EXPRESS mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use any of its marks in any way. Respondent is not commonly known by the disputed domain name: absent a reply, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “Sameul Badri” as Respondent. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Both the disputed domain name itself, and the content of the resolving website, falsely suggest that they are associated with the Complainant. That is not a fair or legitimate use of the disputed domain name. Indeed, according to paragraph 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner …”. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, D2014-1359 (WIPO, Oct. 28, 2014). Consequently the Panel finds that Respondent has failed to use the disputed domain name to make 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). Moreover, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.
Consumers visiting the resolving website are likely to be confused as to whether Respondent and/or its website is affiliated in some way with Complainant; and/or the disputed domain name or the associated website are endorsed, authorized, or sponsored by Complainant, none of which are true. This is a form of bad faith use of the disputed domain name. See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Forum June 3, 2003) (bad faith established “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.”).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays an image of Complainant’s well-known credit card, material from Complainant’s legitimate website, and the URL of Complainant’s legitimate website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith registration and use 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.info> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 10, 2019
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