American Express Marketing & Development Corp. v. Domain Administrator / See PrivacyGuardian.org
Claim Number: FA2002001884237
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Timothy J. Kelly of T. J. Kelly Intellectual Property Law, P.C., New Jersey, United States. Respondent is Domain Administrator / See PrivacyGuardian.org (“Respondent”), Arizona, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanexpressconfirmcard.net>, registered with NameSilo, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2020; the Forum received payment on February 21, 2020.
On February 24, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <americanexpressconfirmcard.net> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2020 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 postmaster@americanexpressconfirmcard.net. Also on March 2, 2020, 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.
On March 27, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant is a global payment and travel company. Complainant has rights in the AMERICAN EXPRESS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,024,840, registered Nov. 11, 1975).
2. Respondent’s <americanexpressconfirmcard.net>[i] domain name is identical or confusingly similar to Complainant’s mark as it combines Complainant’s mark and the term “confirmcard.”
3. Respondent lacks rights or legitimate interests in the <americanexpressconfirmcard.net> domain name. There is no evidence that Respondent is known by the domain name and Complainant has not provided authorization or consent to Respondent to use the AMERICAN EXPRESS mark.
4. There is also no evidence that Respondent uses the domain name in any legitimate manner.
5. Respondent registered and uses the <americanexpressconfirmcard.net> domain name in bad faith. Respondent displays Complainant’s marks and various aspect of Complainant’s branding on the resolving webpage of the domain name which is likely to cause consumers to be confused into believing the website is a legitimate website of Complainant, likely in furtherance of phishing.
6. Given the fame of Complainant’s mark, it is likely that Respondent had knowledge of Complainant’s trademark rights prior to registration of the <americanexpressconfirmcard.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the AMERICAN EXPRESS mark. Respondent’s domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <americanexpressconfirmcard.net> domain name and that Respondent registered and uses the domain name in bad faith.
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”).
Complainant has rights in the AMERICAN EXPRESS mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a table of its trademark registrations as well as copies of its USPTO trademark registrations (e.g. Reg. No. 1,024,840, registered Nov. 11, 1975). Accordingly, Complainant has established rights in the AMERICAN EXPRESS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <americanexpressconfirmcard.net> domain name is identical or confusingly similar to Complainant’s mark as it combines Complainant’s mark and the term “confirmcard.” The <americanexpressconfirmcard.net> domain name also adds the “.net” generic top-level domain (“gTLD”). The addition of generic or descriptive terms and a gTLD fail to sufficiently distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel holds that the <americanexpressconfirmcard.net> domain name is confusingly similar to the AMERICAN EXPRESS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <americanexpressconfirmcard.net> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interests in the <americanexpressconfirmcard.net> domain name as there is no evidence that Respondent is known by the domain name and Complainant has not provided authorization or consent to Respondent to use the AMERICAN EXPRESS mark. WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <americanexpressconfirmcard.net> domain name lists the registrant as “Domain Administrator/See PrivacyGuardian.org,” and there is no other evidence to suggest that Respondent was authorized to use the AMERICAN EXPRESS mark. Therefore, Respondent is not commonly known by the <americanexpressconfirmcard.net> domain name per Policy ¶ 4(c)(ii).
Complainant next contends Respondent fails to use the <americanexpressconfirmcard.net> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent creates the false impression of affiliation with Complainant. A domain name which incorporates the mark of another and which passes off as a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant has provided evidence that on the resolving webpage, Respondent uses the phrase “American Express Confirm Card,” images of Complainant’s cards, and other references to Complainant. Therefore, Respondent does not use the <americanexpressconfirmcard.net> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues Respondent registered and uses the <americanexpressconfirmcard.net> domain name in bad faith as Respondent displays Complainant’s AMERICAN EXPRESS mark and various aspects of Complainant’s branding on the resolving webpage of the domain name which is likely to cause consumers to be confused into believing the website is a legitimate website of Complainant. Complainant has provided evidence that on the resolving webpage, Respondent uses the phrase “American Express Confirm Card,” images of Complainant’s cards, and other references to Complainant. Complainant also argues that the card confirmation Respondent purports to offer is likely an attempt to collect personal information from Internet users. Passing off as a complainant in furtherance of phishing is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). The Panel holds that Respondent registered and uses the <americanexpressconfirmcard.net> domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant contends that given the fame of Complainant’s AMERICAN EXPRESS mark, Respondent had actual knowledge of Complainant’s trademark rights prior to registration of the <americanexpressconfirmcard.net> domain name. Actual knowledge of a Complainant’s mark prior to registering a domain name incorporating that mark is adequate to find bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous); Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Given the longstanding use and international exposure of the AMERICAN EXPRESS mark, it is reasonable to infer that Respondent was aware of Complainant’s trademark rights when Respondent registered the <americanexpressconfirmcard.net> domain name. Thus, Respondent registered the <americanexpressconfirmcard.net> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 3, 2020
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