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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
American Express Company v. Strategic Concepts
Claim Number: FA0101000096378
PARTIES
The Complainant is American Express Company, New York, NY, USA ("Complainant") represented by Anne E. Naffziger, of Leydig, Voit & Mayer, Ltd. The Respondent is Strategic Concepts, Pottsville, PA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "americanexpress.net" registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.
Hon. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 10, 2001; the Forum received a hard copy of the Complaint on January 11, 2001.
On January 15, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "americanexpress.net" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 January 15, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 2001 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@americanexpress.net by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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." 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 the Respondent.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
Complainant began using its AMERICAN EXPRESS trademark in 1850. In that same year it also began use of AMERICAN EXPRESS as a trade name. Since that time, Complainant has expanded its use of the AMERICAN EXPRESS mark and trade name to include a wide variety of financial and travel related services. As a result of its growth since its first use of the AMERICAN EXPRESS mark and name in 1850, Complainant is now a multi-national company with offices worldwide. Additionally, American Express cardholders and consumers of its varied services span the globe.
In 1999, Complainant grossed over 21 billion dollars in revenue and spent approximately 250 million in advertising worldwide. As such, the AMERICAN EXPRESS trademark and name are famous worldwide. Indeed, the AMERICAN EXPRESS mark has been adjudicated a famous mark in court decisions, including, American Express Company v. Lyons, d/b/a American Express et. al., 193 USPQ 96 (E.D. CA 1976) and American Express Co. v. South American Express Inc., 207 USPQ 893 (C.D. CA 1980).
Complainant also uses its AMERICAN EXPRESS trademark in connection with its web site at americanexpress.com. Its web site allows consumers worldwide to contact Complainant and conduct business with Complainant via its web site. Indeed, Complainant receives approximately 760,000 visits per month to its web site.
Respondent registered the domain name americanexpress.net, which is identical to the AMERICAN EXPRESS mark and name. The domain name is also identical to the Complainant’s "americanexpress.com" and "americanexpress.org" domain names with the exception of ".net."
Respondent should be considered as having no legitimate rights in the domain name. Upon information and belief, Respondent has not made use of or demonstrable preparations to make use of the domain name in connection with a bona fide offering of goods or services, prior to being notified of Complainant’s objections to its registration and use of the domain name on February 25, 2000, and since its registration of the domain name on September 26, 1998 and renewal of the domain name on September 26, 2000 through September 26, 2001.
Respondent should be considered as registering and using the domain name in bad faith. After receiving the cease and desist letter from Complainant, Respondent stated that he would relinquish the domain name and asked Complainant’s counsel to advise him as to how the matter should be resolved. In his correspondence, the Respondent stated, "please accept my printed name below as an official signed and seal confirmation concerning the transaction of the domain name ‘americanexpress.net.’"
On July 25, 2000, counsel for Complainant received another e-mail correspondence from the Respondent. In the correspondence, Respondent stated he would have the documents notarized and faxed to counsel for Complainant on that day and that the original would be sent via first class mail. Despite the Respondent’s assurances, the transfer agreement was not faxed or sent to counsel for Complainant.
Beyond that, however, Respondent is now refusing to transfer the domain name without payment from Complainant. Indeed on August 31, 2000, counsel for Respondent, Mr. Fanelli, told counsel for Complainant, that his client was interested in discussing sale of the domain name "americanexpress.net" to Complainant.
FINDINGS
The Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") state the following with regard to default cases:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. Rule 14.
In this case, Respondent has not submitted a response, and therefore this Panel may infer, for the purposes of this decision, that the averments in the complaint are true. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that based on Respondent’s failure to respond, the Panel draws two inferences: 1) that Respondent does not deny the facts asserted by Complainant, and 2) Respondent does not deny conclusions which the Complainant asserts can be drawn from the facts).
DISCUSSION
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
The domain name americanexpress.net is identical to the AMERICAN EXPRESS mark and name. See American Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical to Complainant’s AMERICAN GOLF marks); Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name "wembleystadium.net" is identical to the WEMBLEY STADIUM mark). Thus, the complainant has satisfied the requirement of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Respondent has never been commonly known by the domain name. Policy ¶ 4(c)(ii). See Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where the Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question); Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one "would be hard pressed to find a person who may show a right or legitimate interest" in a domain name containing Complainant's distinct and famous NIKE trademark).
Moreover, Respondent has not provided any evidence that they are using the
domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or in connection with a legitimate noncommercial or fair use under Policy
4(c)(iii). See The Body Shop International PLC v. CPIC NET and Syed Hussain, D2000-1214 (Nov. 26, 2000) (finding "that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark"); Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question). Therefore, the Policy ¶ 4(a)(ii) requirement has been satisfied.
Registration and Use in Bad Faith
Complainant’s trademark is well known in the U.S. and around the world. Respondent’s constructive knowledge of the Complainant’s trademark evidences his registration and use of domain name in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); Exxon Mobil Corporation v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that the Respondent had actual and constructive knowledge of the Complainant’s EXXON mark given the world-wide prominence of the mark and thus the Respondent registered the domain name in bad faith).
Moreover, Respondent’s offer to sell, rent or otherwise transfer the domain name registration to Complainant demonstrates his bad faith in registration. Policy ¶ 4(b)(i). See American Anti-Vivisection Society v. "Infa dot Net" Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that "general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith"); Grundfos A/S v Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith). Therefore, the Complainant has met the requirement to show bad faith under Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "americanexpress.net" be transferred from the Respondent to the Complainant.
Hon. James A. Carmody, Panelist
Dated: February 15, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/326.html