American Express Marketing & Development Corp. v. ExpressLoanFunding, Inc. and Hossain Hariri
Claim Number: FA0607000746929
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 ExpressLoanFunding, Inc. and Hossain Hariri (collectively “Respondent”), 17 Douglass, Coto De Caza, CA 92679.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <americanexpresslending.com>, <americanexpresslending.net>, <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net>, <americanexpressloanfunding.biz>, and <americanexpressloanfunding.info>, registered with Wild West Domains, 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 July 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 13, 2006.
On July 11, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <americanexpresslending.com>, <americanexpresslending.net>, <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net>, <americanexpressloanfunding.biz>, and <americanexpressloanfunding.info> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 July 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 3, 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@americanexpresslending.com, postmaster@americanexpresslending.net, postmaster@americanexpresslending.biz, postmaster@americanexpresslending.info, postmaster@americanexpressloanfunding.com, postmaster@americanexpressloanfunding.net, postmaster@americanexpressloanfunding.biz, and postmaster@americanexpressloanfunding.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americanexpresslending.com>, <americanexpresslending.net>, <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net>, <americanexpressloanfunding.biz>, and <americanexpressloanfunding.info> domain names are confusingly similar to Complainant’s AMERICAN EXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <americanexpresslending.com>, <americanexpresslending.net>, <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net>, <americanexpressloanfunding.biz>, and <americanexpressloanfunding.info> domain names.
3. Respondent registered and used the <americanexpresslending.com>, <americanexpresslending.net>, <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net>, <americanexpressloanfunding.biz>, and <americanexpressloanfunding.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Express Marketing & Development
Corp., has been engaged in the offering of a wide variety of financial services
and travel related services under the AMERICAN EXPRESS mark since 1850. Complainant holds numerous trademark
registrations throughout the world for its AMERICAN EXPRESS mark, including a
trademark registration for the mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,024,840 issued November 11, 1975).
Respondent, ExpressLoanFunding, Inc. and Hossain Hariri, registered the <americanexpresslending.com>, <americanexpresslending.net>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net> domain names on December 30, 2005, and registered the <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.biz>, and <americanexpressloanfunding.info> domain names on December 31, 2005. Respondent’s disputed domain names resolve to commercial websites.
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 provides evidence of trademark registrations for the AMERICAN EXPRESS mark throughout the world, including a trademark registration with the USPTO. Thus, the Panel finds that Complainant has established rights in the AMERICAN EXPRESS mark consistent with Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Furthermore, the Panel finds that Respondent’s <americanexpresslending.com>, <americanexpresslending.net>, <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net>, <americanexpressloanfunding.biz>, and <americanexpressloanfunding.info> domain names are confusingly similar to Complainant’s AMERICAN EXPRESS mark for purposes of Policy ¶ 4(a)(i). Each of the disputed domain names consist of Complainant’s AMERICAN EXPRESS mark in its entirety, with the addition of the term “lending,” or “loan” and “funding,” and a generic top-level domain (“gTLD”). Prior panels addressing the issue of confusing similarity under Policy ¶ 4(a)(i) have found that the addition of a descriptive term to a mark does not negate the creation of confusing similarity between the resulting domain name and the mark. In Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005), the panel found that the domain name <suttonpromo.com> was confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name was immaterial to the analysis under Policy ¶ 4(a)(i). Likewise, in AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006), the panel held that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark did not distinguish the domain names from the mark. Moreover, previous panels have held that the addition of a gTLD is irrelevant for purposes of determining whether a disputed domain name is identical or confusingly similar to a mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially demonstrate that Respondent lacks rights or legitimate interests with respect to the disputed domain names. However, once Complainant sufficiently establishes a prima facie case, the burden then shifts to Respondent to demonstrate that it has rights or legitimate interests with respect to the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”); see also 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.”). The Panel finds that Complainant has established a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain names pursuant to Policy ¶ 4(c).
In light of the confusing similarity between Complainant’s mark and the disputed domain names, the Panel finds that Respondent registered the <americanexpresslending.com>, <americanexpresslending.net>, <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net>, <americanexpressloanfunding.biz>, or <americanexpressloanfunding.info> domain names with the intent to divert Internet users seeking Complainant’s website to websites operated by Respondent. The Panel finds that Respondent’s diversionary use of the disputed domain names does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also 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).”).
Moreover, the evidence on record fails to indicate that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). Complainant asserts that Respondent is not a licensee of Complainant, and Respondent is not affiliated with, or authorized by Complainant to use Complainant’s AMERICAN EXPRESS mark in connection with the disputed domain names. Additionally, Respondent’s WHOIS information does not suggest that Respondent is known by any of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the <americanexpresslending.com>, <americanexpresslending.net>, <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net>, <americanexpressloanfunding.biz>, or <americanexpressloanfunding.info> domain names pursuant to Policy ¶ 4(c)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers that Respondent’s disputed domain names cause confusion among Internet users as to the relationship between Complainant and the disputed domain names. Consequently, the Panel finds that the Internet user confusion caused by the diversionary use of the <americanexpresslending.com>, <americanexpresslending.net>, <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net>, <americanexpressloanfunding.biz>, or <americanexpressloanfunding.info> domain names evinces that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (finding that the user confusion caused by the respondent’s disputed domain names is evidence that the respondent registered and used the domain names in 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Furthermore, considering Respondent’s diversionary use of the disputed domain names, the Panel finds that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
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 <americanexpresslending.com>, <americanexpresslending.net>, <americanexpresslending.biz>, <americanexpresslending.info>, <americanexpressloanfunding.com>, <americanexpressloanfunding.net>, <americanexpressloanfunding.biz>, and <americanexpressloanfunding.info> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 22, 2006
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