American Express Marketing & Development Corp. v. Planet Amex and Blake Fleetwood
Claim Number: FA1106001395159
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill of American Express Marketing & Development Corp., New York, USA. Respondent is Planet Amex and Blake Fleetwood (“Respondent”), represented by John A. Karol of The Richard L. Rosen Law Firm, PLLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <planetamex.com>, registered with eNom.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2011; the National Arbitration Forum received payment on June 23, 2011.
On June 23, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <planetamex.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2011 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 email@example.com. Also on June 23, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
Respondent requested an extension of time to the Complaint. On July 13, 2011, the National Arbitration Forum granted Respondent an extension until August 2, 2011.
The Forum was ordered by the Supreme Court of New York to stay the proceedings on August 1, 2011. The Forum complied.
The Forum received an order from the Supreme Court of New York to reinstate the proceedings and proceed with the case on November 29, 2011. The Forum complied.
A timely Response was received and determined to be complete on November 30, 2011.
Complainant submitted an Additional Submission on December 5, 2011. On December 12, 2011, Respondent submitted an Additional Submission.
On December 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
American Express began using its AMEX trademark in 1969. Since that time American Express has expanded its use of the AMEX mark to include a wide variety of travel related and financial services. American Express uses its AMEX mark in connection with a wide variety of travel and travel-related services, gift card, charge card, credit card, smart card and stored value card services, banking and insurance services that are used by millions worldwide. As a result of its growth since Complainant’s first use of the AMEX mark in 1969, the AMEX mark has become famous around the world.
The strength of Complainant’s AMEX mark is further evidenced through its listing in both the 30th edition of Acronyms, Initialisms & Abbreviations Dictionary and the Internet search finder acronymfinder.com. This, as well as other evidence, demonstrates that AMEX is a commonly used acronym to refer to Complainant.
The Domain name <planetamex.com> is virtually identical to the AMEX trademarks of American Express and confusingly similar to the AMEX marks in that it contains the AMEX mark in its entirety. Adding “planet” to the AMEX trademark to create the domain name <planetamex.com> creates a false association and a tarnishing of the AMEX name and mark.
Respondent’s addition of “planet” to the well-known AMEX mark results in a domain name that is confusingly similar to the Complainant’s AMEX marks and its domain name <AMEXtravel.com>. When consumers enter the <planetamex.com> domain name and are not connected to an American Express web site, they will be confused as to whether the domain name and/or web site is authorized by Complainant, which is not true. Therefore, it appears that by registering <planetamex.com>, Respondent intended to capitalize on the potential 60 million monthly visitors to the American Express web site. A side-by-side comparison of American Express‟ AMEX marks and <planetamex.com> shows the Domain name is virtually identical as it contains the AMEX mark in its entirety with no more than the addition of a generic or descriptive term. Registration and use of <planetamex.com> by the Respondent will result in consumer confusion as to source and tarnishing of American Express‟ AMEX and AMEX travel marks.
Respondent should be considered as having no legitimate rights in <planetamex.com>. While Respondent lists Blake Fleetwood and Planet Amex in connection with the domain name registration, Respondent has no legitimate rights in the domain name. Based on the fame of Complainant’s AMEX mark, together with Complainant’s ownership of numerous registrations for its AMEX mark in the U.S. and around the work, Complainant asserts that Respondent cannot show that it is commonly known by the disputed domain name as contemplated by Policy ¶ 4(c)(ii).
The same rule can be applied to Respondent’s use of Planet Amex in its domain name registration and the <planetamex.com> domain name. Indeed, Respondent cannot show a legitimate interest in a domain name incorporating Complainant’s famous AMEX mark. The fact that Respondent used the domain name to link to a travel-related services site further demonstrates that Respondent’s interest in the domain name was to trade on the renown of the AMEX mark in connection with travel services, certainly not a legitimate purpose contemplated under the Policy.
Further, Respondent’s website at <planetamex.com> identifies the operator of the site as Cook Travel, Inc., which is discussed in more detail below. As such, Respondent has not adopted use of Planet Amex as a company name apart from listing the name in the domain name registration record. Given that Respondent does not operate under the corporate name Planet Amex, he is further precluded from arguing a legitimate purpose for registration of the domain name based on use as a company name. The Respondent has no trademark application or registration for the AMEX mark or for PLANET AMEX.
Respondent began as an American Express travel representative franchisee in 1992. He traded as Planetarium Travel exclusively until late 1990s when he bought Cook Travel. From that point, he operated both Planetarium and Cook as American Express travel representative franchisees under a single agreement with American Express until American Express declined to renew the franchise agreement in December 2010, with expiration effective June 2011.
According to affidavits and testimony in litigation recently concluded between the parties, Respondent has owned and used <planetamex.com> since 1998. On numerous occasions Complainant contacted Respondent to try to work out a settlement of the issue by allowing the Respondent a phase out period for the <planetamex.com> domain name. Complainant also advised Respondent that registration of a domain name that contained any American Express mark was not allowed under Complainant’s policy, practice or the Franchise Agreement. American Express also engaged counsel, who sent cease and desist letters and had some discussions with Respondent’s counsel, none of which resolved the issue.
In settlement of the litigation, Respondent committed to stop referring to itself as an authorized American Express Travel Representative. The 2003 Travel Representative Agreement that Respondent signed states in Article I (A), paragraph 7:
“Representative may not use, in any form or medium, including but not limited to, print, radio, television, or electronic any American Express name, service mark, trademark, or logo unless expressly and explicitly authorized in writing by AMEX pursuant to Article II hereof, the Representative Manual, and/or such other instructions as may be used by AMEX from time to time. In addition, Representative may not use any American Express name in its domain name.”
As such, Respondent is not authorized by American Express to use its marks in a domain name. The Complainant has not licensed or otherwise permitted the Respondent to use or to apply for any domain name incorporating any of Complainant’s marks. Registration of the <planetamex.com> domain name with no legitimate rights in, or connection to, the AMEX mark and name additionally demonstrates Respondent’s bad faith in attempting to capitalize on the goodwill Complainant has established in its marks and in diverting consumers to Respondent’s web site.
Respondent had constructive notice of American Express’ AMEX mark and selected a virtually identical domain name to capitalize on the American Express AMEX marks and its travel services through a domain name that would divert consumers seeking Complainant’s travel services and web sites to Respondent’s web site at <planetamex.com>. Due to the virtually identical nature of the <planetamex.com> domain name to American Express’ AMEX marks, the Respondent knew that registration and use of <planetamex.com> would divert consumers to another site and disrupt the Complainant’s business, would capitalize on the goodwill associated with the AMEX trademarks, trade name and existing domain names, and would result in a likelihood of confusion for consumers and misrepresent an association with the Complainant and its goodwill, resulting in passing off and trademark infringement. Thus, based on the foregoing, Respondent does not have a legitimate interest in registering or using the disputed domains.
The Respondent acted in bad faith. The Respondent should be considered as registering and using the <planetamex.com> domain names in bad faith based on the following:
The value of <planetamex.com> rests in its appropriation and use of the AMEX mark. Complainant is the owner of several AMEX trademark applications and registrations in the United States, where the Respondent is located. Accordingly, under the law, Complainant may protect against infringement, dilution and tarnishment of its trademarks.
Respondent’s use of the <planetamex.com> domain name is likely to cause confusion for consumers searching the Internet and to damage the goodwill and integrity of American Express and its AMEX trademarks and domain names. The Respondent has registered a domain name containing the Complainant's trademark without authorization from the Complainant. The <planetamex.com> domain name, registered without permission and for no permissible purpose, demonstrates Respondent’s bad faith.
Respondent’s motivation for registering <planetamex.com> was to capitalize on the goodwill associated with the Complainant’s trademarks and travel services and the renown of the AMEX mark in connection with those services. If consumers mistakenly access the Respondent’s site, it is likely that many consumers will assume that the site is sanctioned by American Express, which it is not, thereby creating confusion for consumers, disrupting American Express’ business and damaging American Express’ reputation. Interfering with American Express’ ability to conduct business on the Internet further demonstrates Respondent’s bad faith.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web sites or other on-line locations, by creating a likelihood of confusion with the AMEX marks as to the source, sponsorship, affiliation, or endorsement of its web sites or other on-line locations or of a product or service on its web sites. The domain name resolves to a Cook Travel web site, which is directly competitive with Complainant’s services.
The Complainant has no control over the nature and quality of the Respondent’s web site(s) or services; therefore, the valuable reputation of American Express and its AMEX mark is likely to be diminished, diluted and tarnished by association with Respondent’s web site and its uncontrolled use.
Respondent’s choice of the <planetamex.com> domain name diverts Internet users wishing to search under Complainant’s AMEX mark to Respondent’s website through the use of <planetamex.com>, which is confusingly similar to Complainant’s AMEX marks and travel services and the AMEXtravel.com domain name. Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names, evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Registration and renewal of <planetamex.com> over Complainant’s stated objections and with knowledge of Complainant’s AMEX mark and the Franchise Agreement signed by Respondent which spells out that Respondent cannot register or use a domain name that incorporates AMEX or any of American Express trademark constitutes bad faith use of the planetamex.com domain name. In American Express Company v. Strategic Concepts, FA96378 (Nat. Arb. Forum Feb. 15, 2001), the panel held that the domain name owner’s constructive knowledge of Complainant’s trademark “evidences his registration and use of the domain name in bad faith.” Accordingly, mere registration of the <planetamex.com> domain name by Respondent is sufficient to establish bad faith as defined by Paragraph 4(b) of the Domain Name Dispute Resolution Policy.
Respondent’s use of <planetamex.com> will raise issues of passing off, consumer privacy and protection issues, and infringement of the Complainant’s rights under trademark law. Such interference with the AMEX name and trademarks constitutes bad faith use of <planetamex.com> as defined by Paragraph 4(b) of the UDRP.
In light of Respondent’s bad faith use of <planetamex.com>, this Complaint is now filed requesting transfer of <planetamex.com> to the Complainant.
Respondent contends as follows:
Blake Fleetwood is the registrant of the domain name (the person listed in the “WHOIS” registration information at the time of the filing of the Complaint). The WHOIS registration also incorrectly lists “Planet Amex” as the second registrant. “Planet Amex” is actually “Planetarium Travels, Inc.,” and is the entity under which Mr. Fleetwood has been doing business in the travel services industry for decades (d/b/a planetamex). Blake Fleetwood is the President and owner of Planetarium Travels, Inc., a travel agency founded by Blake Fleetwood, and an active New York Corporation formed in 1973, 25 years before the subject domain registration was filed. Planetarium currently uses the domain name <planetamex.com> to transact its ongoing business operating a travel agency, and is therefore a proper respondent in this proceeding.
Planetarium Travels, Inc. is a former franchisee (from approximately Nov. of 1992 through May 18, 2010) of American Express Travel Related Services, Inc. (an “affiliate” of Complainant), and is a party to an ongoing litigation, currently pending between Planetarium and American Express Travel Related Services, Inc. wherein Planetarium inter alia is bringing claims arising from improper termination of its eighteen year franchise relationship with American Express, including claims for breach of the implied covenant of good faith and fair dealing, promissory estoppel and unjust enrichment.
This matter should be denied before even reaching the underlying merits for the following reasons:
(1) American Express violated UDRP Rule 3(b)(xi) by failing to disclose an ongoing litigation (The New York Action) between the parties (or their “affiliate”) which addressed the domain name in question.
(2) Even if the violation of UDRP Rule 3(b)(xi) by Complainant can be overcome, this action should be “denied” as Res Judicata or Collateral Estoppel / Issue Preclusion should be applied by the panel; and
(3) There is an ongoing legitimate business dispute with multifaceted civil litigation pending between the parties. This is not a simple cyber-squatting matter, and this forum is ill- suited for resolving these issues under the UDRP Policy. Alternatively, the New York Action between Planetarium and American Express’ affiliate (American Express Travel Related Services, Inc.) will address many of the same issues (and indeed already has) that will be presented in this proceeding—as they are inextricably intertwined—and therefore the Complaint should be denied under UDRP Rule 18(a), or the panel should defer any action until after the court case is resolved.
The Panel should dismiss the Complaint on its merits if not for procedural reasons. Respondent submits this is really a case of reverse domain name high-jacking. American Express is conducting itself in bad faith, and the instant filing of American Express’ Complaint with NAF is a punitive measure against Planetarium.
Planetarium contends that American Express has failed to show that “(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.” Planetarium admits that American Express has a registered trademark for the letters “amex.” However, “amex” is not the same as the domain name <planetamex.com>.
Respondent notes that the Judge in the New York Action, when presented with this issue, found that the domain name <planetamex.com> was not confusingly similar to “amex.” If the Panel should find that the decision is not binding as res judicata or collateral estoppel / issue preclusion, then at the minimum, Planetarium submits it should be afforded some persuasive authority.
“Planet” is clearly descriptive of Planetarium, and specifically references the travel services business, not the credit card business, and further is not likely to be confusing to the public, who is unlikely to type in “planet” prior to “amex” in searching for American Express.
Further, Respondent has rights and/or legitimate interests with respect to the domain name <planetamex.com>. Planetarium Travels, Inc. has been in existence since 1973. It registered the at-issue domain name in 1998 and has been actively using it (in connection with a “bona fide offering of services,” that of its travel agency services for over a decade), and with American Express’ full knowledge since 1998. Planetarium actively uses the domain to transact its travel agency business and has spent literally millions of dollars in advertising directly tied to the domain name (through inter alia e-mail advertising to its client base).
Planetarium has spent more than six million dollars over the last eight years promoting the <planetamex.com>. Since 1998, Planetarium has done more than $200 million worth of business using the name <planetamex.com>. Millions of internet viewers have seen Planetarium’s ads over the last thirteen years.
Further, there is no attempt to divert customers of American Express, nor has American Express provided any proof that customers have been diverted. A travel agency providing services is not going to divert American Express cardholders from using American Express.
Respondent is, and has been since 1998, using the domain name <planetamex.com> in good faith in conjunction with providing legitimate bona fide travel agency services. At all times, American Express had full knowledge of Planetarium’s usage of <planetamex.com>. “Planet” is not a “generic” term, but rather is derived from “Planetarium,” and it precedes the letters “amex.” The letters “amex” also appears in many other domain names, currently for sale, and in use. While Planetarium is now re-branding itself under Cook Travel (in part due to the ongoing litigation), the critical domain name, and its affiliated e-mail addresses, and high search engine ranking, remain crucial to Planetarium’s ongoing business operations.
In over a decade during the franchise relationship (since 1998) American Express took no action to prohibit Planetarium’s use of the domain name <planetamex.com>. Even if American Express were to overcome the other obstacles in this proceeding, by resting on any purported rights, Planetarium would have well over a decade of “good faith” usage (indeed Planetarium invested decades of work and millions of dollars into building and cultivating that domain name’s standing), and American Express should be barred by waiver, laches, and acquiescence.
C. Additional Submissions
Complainant contends in its Additional Submission as follows:
There are no other legal proceedings in connection with or relating to the domain name that is the subject of the complaint. No outcome of the pending litigation between the parties will impact upon the propriety use of the at-issue domain name. The only claims in the State Court litigation are money damages claims for wrongful non-renewal of its Travel Representative Agreement based on promissory estoppel, the implied covenant of good faith and fair dealing and unjust enrichment. It can win or lose those claims without any impact on the issue of who owns the at-issue domain name.
Res judicata or issue preclusion has no application to respondent because it is not the same party as in the state court action. Furthermore the state court bench ruling is neither a final judgment nor a fully litigated "fact."
The Complaint did contain an inconsequential error that does not go to propriety of registration of <planetamex.com>. AEMD’s representative in these proceedings, Dianne Cahill, is not a lawyer; she is the manager of American Express’ trademark and domain name portfolio. Ms. Cahill was the author of Complaint. She inadvertently misconstrued PTI's oral agreement not to make any further use of the American Express "blue box" logo or further reference to itself as an American Express Travel Representative as a “settlement agreement."
Use of' AMEX in connection with travel services by a no longer authorized American Express Travel Representative improperly suggests a continuing affiliation and sponsorship by American Express Company.
Planetarium and Fleetwood's continued use of the at-issue domain name is in bad faith and disregards the 2005 agreement to phase out its use.
American Express Company has objected to Planetarium and Fleetwood's registration and use of the <planetamex.com> domain name for many years. On May 30, 2008, Planetarium and Fleetwood's lawyer, Arthur L. Schiff, acknowledged that in the years between 1995 and 2008, "representatives of American Express have communicated concern to Planetarium regarding its use of the name, and have even said it must be dropped....” Mr. Schiff then asserted that Fleetwood and an American Express employee had agreed in April 2005 that Planetarium would phase in a new domain name, <Cookamerican.travel>, and voluntarily discontinue all "planetamex" advertising. In response, counsel for American Express Company, advised Mr. Schiff that Fleetwood had been given three months to phase out "planetamex" and phase in a new website in an "attempt to mitigate disruption to business." Ms. Naffziger specifically requested that Fleetwood not re-register the domain name on its expiration on February 8, 2009, thereby giving additional time to phase or some other URL. Respondent continues to trade off of American Express Company's world famous, travel related trademark. While there was some connection with American Express Company so long as Respondent was an authorized American Express Travel Representative, since June 2010 there is no connection, and no basis for any continuing ownership of a URL which incorporates an AEMD identifier.
Respondent contends in its Additional Submissions as follows:
American Express may not attempt to sweep under the rug its misrepresentations to the Panel (e.g., that there was no other litigation over the subject domain name) simply by trying now to belatedly amend its Amended Complaint to inter alia remedy its violations of UDRP Rule 3(b)(xi).
It is significant that American Express is embroiled in an ongoing multifaceted litigation with Planetarium, which included the domain name in at least one direct decision by a New York Court. American Express is attempting to misuse this forum as a form of “bully pulpit” against Planetarium, a financially inferior company that is dependent upon its domain name. Planetarium submits that this Panel should send a message that it is unacceptable conduct for a larger company with comparably unlimited financial and legal resources at its disposal, to try and strip a legitimately used domain name from an active, ongoing, entity, especially when it appears to be in order to misuse this forum’s purpose (to combat cyber-squatting) in order to gain a litigation advantage and deplete a party’s resources.
American Express’ continued references to and reliance on papers, submissions, and correspondences in the ongoing and hotly contested litigation and business dispute between the parties, proves planetarium’s point that there is a significant on-going litigation connected with the instant proceeding. American Express seeks redress from this Panel based, at least in part, upon a contract, that is presently in dispute in the New York Court. As such, there is a civil dispute, a court case, seeking to resolve the rights of the parties, and this matter extends well beyond any “cyber-squatting” issues. This is a dispute outside of the UDRP Policy.
Planetarium disagrees with American Express’ contention that the ongoing New York Litigation will not impact upon the claims herein, as evinced from a quick perusal of the scope of the action.
Dianne K. Cahill is “director of legal affairs” at American Express. Complainant, in an apparent attempt to excuse the misrepresentations in its operative Complaint, and failure to disclose to the panel the ongoing litigation in New York, argues that the person who signed the filing, Ms. Cahill, is not a lawyer. Dianne K. Cahill is “director of legal affairs” at American Express and is well versed in the applicable Rules and law. It is inconceivable that Complainant’s lawyers were not involved in preparing the Complainant.
UDRP Rule 3(xi) specifically requires identification of all legal proceedings that have been commenced – or terminated – with or relating to … the domain name. Complainant continues to fail to admit or identify legal proceedings that have been commenced or terminated in connection with or relating to domain name as required by Rule 3(xi). Decisions by the New York Court on motion by American Express are in connection with or relate to the disputed domain name. Complainant thus failed to make the required disclosures in its Complainant. Complainant additionally misrepresents the underlying facts and legal arguments concerning the New York litigation and its marks.
The instant dispute is appropriate for rendition under the UDRP.
Complainant holds rights in the trademark AMEX.
The domain name was registered in advance of any dispute between the parties.
The Respondent has used the domain name extensively for both transacting business and communications from its registration until the present.
Complainant acquiesced to the use of its AMEX mark in the Respondent’s domain name for at least a period of several years subsequent to the domain name’s registration.
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.
Respondent contends that the Complaint should be denied without reaching its merits because: 1) Complainant failed to state that there was a pending related State Court proceedings; 2) The issue of confusing similarity has been decided in another forum and as such the decision reached therein is binding on the Panel by virtue of the doctrine of collateral estoppel/issue preclusions; and 3) the nature of an underlying business dispute between Respondent and Complainant’s affiliate is complex and the instant forum is ill-equipped for resolving such issues under the UDRP. Moreover, the New York Action will address many of the same issues that will be presented in this UDRP dispute and therefore Complainant should be denied under UDRP Rule 18(a). As discussed below, the Panel disagrees with each of the Respondent’s contentions.
First, Respondent argues that the case should be dismissed because Complainant violated Rule 3(b)(xi) by intentionally not informing the Panel via the Complaint that there was a related State Action, thereby Complainant desired to mislead the Panel. Complainant explains by way of its Additional Submission that it believed it was under no duty to disclose the State Action since, inter alia, there was no identity of issues between the State Action and those considered in a UDRP proceeding. In any event, the Panel is aware of the State Action and the Complainant’s failure to disclose that New York State Court Action does not appear to have caused Respondent any harm or disadvantage. Assuming for argument that the Complainant should have disclosed the State Action, the Panel concludes that such failure is not so reprehensible as to warrant such a draconian sanction as dismissing the Complaint without regard to its substantive merit.
Second, Respondent’s contention that the issue of confusing similarity is precluded by the ruling of the New York court is not well taken. Complainant correctly points out in its Additional Submission that the doctrine of issue preclusion should not be applied since neither was there a final judgment nor a fully litigated “fact,” and further that there is no identity of parties between the State Action and the instant proceedings. Although one supporting issue preclusion might argue that there is no longer a necessity that the parties be identical to deploy the doctrine, the lack of final judgment or fully litigated fact in the State Court Action seems insurmountable. Even assuming that these two requisites of issue preclusion (finality and mutuality) are inapplicable in the instant context, the issue of confusing similarity with regard to trademark infringement, which was presumably considered by the New York court, is not the same issue as confusing similarity for the purposes of UDRP ¶4(a)(i). The issue of confusing similarity with regard to trademark law concerns contextual and market factors whereas confusing similarity under the UDRP ¶4(a)() does not consider such factors. There can be no dispute that issue preclusion requires that there be identical issues in the respective proceedings. Finally and without elaboration, some panels have questioned the propriety of deploying equitable doctrines in administrative proceedings such as the instant UDRP action. For the foregoing reasons, the Panel concludes that it is not bound by the New York Court’s bench ruling and gives it little or no weight.
Third, the fact that there is a business dispute between the parties or their affiliates does not confound resolution of the core UDRP issues set out in the Policy. The questions for the Panel’s consideration are narrow and well defined and a determination of whether or not the at-issue domain name should transferred from the Respondent falls squarely within the ambit of the UDRP and this forum.
For the reasons stated above the Panel determines that the instant dispute is appropriate for rendition in this forum and continues accordingly.
The at-issue domain name, <planetamex.com>, is confusingly similar to a mark in which the Complainant has rights. Complainant’s USPTO trademark registration of its AMEX mark sufficiently establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”)
The domain name consists of the AMEX mark combined with the generic term “planet” and the generic top-level domain (“gTLD”) “.com.” The addition of a generic term to Complainant’s mark followed by the .com top-level does not remove the disputed domain name from the realm of confusing similarity. See 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 Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark). Likewise, prior cases show that attaching a gTLD does not affect the confusingly similar analysis 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). The fact that the generic term PLANET connotes or relates to the identity of the domain name holder is irrelevant for the purposes of paragraph 4(a)(i). While “planet” may refer to Planetarium Travels, Inc., this does not detract from the AMEX portion of the domain name’s match with Complainant’s mark. Further, AMEX is incorporated into Respondent’s domain name because of its trademark value in identifying Respondent’s prior relationship with Complainant rather than in spite of it. Respondent apparently used AMEX in the domain name to capitalize on Complainant’s trademark and intended that the domain name be similar to the AMEX mark for such purpose.
The Panel therefore finds that Respondent’s <planetamex.com> domain name is confusingly similar to Complainant’s AMEX mark pursuant to Policy ¶ 4(a)(i).
Under paragraph 4(a)(ii) of the Policy, Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then, in effect, shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in respect of the domain name. Complainant contends that it never authorized Respondent to incorporate its AMEX mark in a domain name and that the use of its mark in a domain name was expressly prohibited by an agreement of the parties. Complainant further argues that Respondent is not known by the domain name. Therefore, Complainant carries its initial burden.
Respondent claims it is using the <planetamex.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Respondent provides a travel-related services business at the domain name address and has done so since around or about 1998. There is no evidence that there was any dispute between the parties at time Respondent registered the domain name and for years thereafter. Respondent explains, and Complainant does not dispute, that it has conducted extensive business through its <planetamex.com> website, that the website has been viewed by millions, and that it uses the domain name for extensive email communication. As a result of this activity Respondent claims it has become known as <planetamex.com> consistent with Policy ¶4(c)(ii).
Respondent demonstrates rights and interest in the <planetamex.com> domain name. It is apparent and undisputed that Respondent made preparations to use, and did use, the domain name in a bona fide manner. Complainant either acquiesced to, or otherwise approved by its silence, Respondent’s use of the <planetamex.com> domain name from the time of registration in 1998 and for several years thereafter. In its papers, Complainant submits a 2003 agreement between the parties to show that use of its AMEX mark in a domain name was prohibited. Naturally, the agreement did not control in the period prior to its execution when the domain name was first registered and the referenced website implemented.
Furthermore, Respondent’s continuous operation of a commercial website at the at-issue domain name, along with undisputed evidence of extensive transactions and email communications related to the website and domain name, makes it reasonable to conclude, as Respondent contends, that Respondent is commonly known by the domain name <planetamex.com> and that it is more likely than not that Respondent became commonly known as PLANET AMEX sometime prior to the 2003 agreement prohibiting the use of the AMEX mark in a domain name. Therefore, Respondent demonstrates that it has rights and interest in respect of the domain name pursuant to Policy ¶4(c)(ii).
The Policy’s bad faith element requires both bad faith registration and bad faith use. See Policy ¶4(a)iii. It is well settled that in determining bad faith registration, a panel should consider the time of the initial registration rather than subsequent renewals. See Arena Football League, LLC v. Armand F. Lange & Associates, FA128791 (Nat. Arb. Forum Dec. 26, 2002) (“It was not the intent of the drafters of the Policy to include bad faith renewals of domain name registrations as relevant for Policy ¶ 4(a)(iii) analysis.”) The at-issue domain name was first registered in 1998. At that time and for years thereafter, Respondent operated as an American Express affiliated travel representative using <planetamex.com> for its online presence. While Complainant claims that it never permitted Respondent to use its AMEX mark in conjunction with a domain name and that such use was expressly prohibited by a written agreement, there is no compelling evidence that Complainant objected to Respondent’s overt use of the domain name until in or about 2003. It thus appears that at least until that time, or perhaps longer, Respondent had a de facto license to use the AMEX mark in conjunction with its business and as part of its domain name. As such Respondent was acting in good faith at the time it registered <planetamex.com>.
Furthermore, having found that Respondent has rights and interests in respect of the at-issue domain name bad faith is logically precluded. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Therefore, the Panel finds that the domain name was not registered in bad faith.
Bad Faith Filing of the Instant Complaint
Finding for the Respondent does not necessarily render a finding of reverse domain name hijacking against Complainant in bringing its claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”) On review of the record, the Panel does not find that the Complaint was filed in bad faith. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <planetamex.com> domain name REMAIN WITH Respondent.
Paul M. DeCicco, Panelist
Dated: January 6, 2012
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