American Express Marketing and Development Corp. v. Nameboy and Thomas Jackson
Claim Number: FA0607000758449
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K Cahill, of American Express Marketing & Development Corp., 200 Vessey Street (49-12), New York, NY, 10285. Respondent is Nameboy and Thomas Jackson (collectively “Respondent”), PO Box 2136, White Salmon, WA, 98672.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <american-express-gift-cards.com> and <american-express-giftcards.com>, registered with Enom, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 25, 2006; the National Arbitration Forum received a hard copy of the Complaint July 27, 2006.
On July 25, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <american-express-gift-cards.com> and <american-express-giftcards.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has 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 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 16, 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@american-express-gift-cards.com and postmaster@american-express-giftcards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 in this proceeding:
1. The domain names that Respondent registered, <american-express-gift-cards.com> and <american-express-giftcards.com>, are confusingly similar to Complainant’s AMERICAN EXPRESS mark.
2. Respondent has no rights to or legitimate interests in the <american-express-gift-cards.com> and <american-express-giftcards.com> domain names.
3. Respondent registered and used the <american-express-gift-cards.com> and <american-express-giftcards.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Express Company, is a multi-national company with offices worldwide. Complainant began using and has continuously used the AMERICAN EXPRESS mark since 1850 in conjunction with a wide variety of financial services in addition to gift card related services. Complainant holds trademark registrations throughout the world and with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN EXPRESS mark (Reg. No. 1,024,840 issued November 11, 1975).
Respondent registered the <american-express-gift-cards.com> and <american-express-giftcards.com> domain names February 3, 2006. Respondent is using the <american-express-gift-cards.com> and <american-express-giftcards.com> domain names to redirect Internet users to Respondent’s commercial websites that feature links to competing gift card programs
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 will draw such inferences as the Panel 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 Complainant to 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 established with extrinsic proof in this
proceeding that it has rights in the AMERICAN EXPRESS mark based on
Complainant’s registration of the mark with the USPTO and continual use in
commerce since 1850. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed Tech., 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.”).
The
disputed domain names that Respondent registered, <american-express-gift-cards.com>
and <american-express-giftcards.com>, are confusingly similar to Complainant’s AMERICAN
EXPRESS mark, because
Respondent’s domain names incorporate Complainant’s mark in its entirety and
add hyphens and the common terms “gift” and “card.” The Panel finds that such minor additions to Complainant’s
registered mark do not negate the confusingly similar aspects of Respondent’s
domain names pursuant to Policy ¶ 4(a)(i).
See Health Devices Corp. v. Aspen S T C, FA
158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks
such as hyphens is irrelevant in the determination of confusing similarity
pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has legal rights to the mark used in its entirety within the disputed domain names. Complainant asserts that Respondent has no such rights or legitimate interests in the <american-express-gift-cards.com> and <american-express-giftcards.com> domain names. Once Complainant establishes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the <american-express-gift-cards.com>
and <american-express-giftcards.com> domain names to redirect Internet users to
Respondent’s commercial websites that feature links to competing gift card
programs. Respondent’s use of domain
names that are confusingly similar to Complainant’s AMERICAN EXPRESS mark to
redirect Internet users interested in Complainant’s goods and services to
websites that offer links to similar goods and services in competition with
Complainant is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), and its is not a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Coryn Group,
Inc. v. Media Insight, FA 198959 (Nat.
Arb. Forum Dec. 5, 2003) (finding that respondent was not using the domain
names for a bona fide offering of goods or services nor a legitimate
noncommercial or fair use because respondent used the names to divert Internet
users to a website that offered services that competed with those offered by
complainant under its marks); see also Glaxo Group Ltd. v. WWW Zban, FA
203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial
site).
Moreover, Complainant asserts, without contradiction from Respondent, that Respondent is not commonly known by the <american-express-gift-cards.com> or <american-express-giftcards.com> domain name, and is not authorized to use domain names featuring Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) complainant’s prior rights in the domain name precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith in registering and using the disputed domain names. Respondent is using the <american-express-gift-cards.com> and <american-express-giftcards.com> domain names to redirect Internet users to Respondent’s commercial websites that feature links to competing gift card programs. The Panel finds that such use constitutes disruption of a competitor and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel infers that Respondent receives click-through fees for diverting Internet users to competing websites. Internet users accessing Respondent’s domain names may become confused as to Complainant’s affiliation with the disputed domain names. Therefore, Respondent’s use of the <american-express-gift-cards.com> and <american-express-giftcards.com> domain names amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Complainant 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 <american-express-gift-cards.com> and <american-express-giftcards.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 5, 2006.
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