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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
American Express Company v. Global Marketing
Claim Number: FA0102000096610
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 Global Marketing, Neshanic Station, NJ, USA ("Respondent"). The Respondent was not represented by counsel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "americamexpress.com", registered with Network Solutions.
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.
The Panelist is Richard DiSalle.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (
"the Forum") electronically on February 8, 2001; the Forum received a hard copy of the Complaint on February 12, 2001.On February 12, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "americamexpress.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 February 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of March 6, 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@americamexpress.com by e-mail.A timely response was received and determined to be complete on February 15, 2001. The Complainant filed a Supplemental Written Statement on February 21, 2001.
On February 23, 2001, pursuant to Complainant
’s request to have the dispute decided by a One Member Panel, the Forum appointed Richard DiSalle as Panelist.RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant bases this Complaint on its company name and trade name American Express Company and its trademark registrations for numerous AMERICAN EXPRESS marks, specifically, Registration Nos. 688, 103, 738, 813, 1,024,840, 1,032,516, 1,178,455, 1,230,270, 1,288,141, 1,242,630, 1,622,856, 1,724,234, 1,847,678, 1,958,496, 2,050,430, 2,154,760, 2,302,524, 2,245,543, 2,293,940, 2,270,732, 2,272,210, 2,338,220, 2,380,657, 2,399,629, 2,399,682 and 2,411,806.
The American Express Company 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 American Express has expanded its use of the AMERICAN EXPRESS mark and American Express name to include a wide variety of financial and travel related services. American Express uses its mark and name in connection with a wide variety of goods and services that are used by millions worldwide. As a result of its growth since its first use of the AMERICAN EXPRESS mark and name in 1850, the American Express Company is now a multi-national company with offices worldwide.
American Express also uses its AMERICAN EXPRESS trademark in connection with its web site at "americanexpress.com." Its "americanexpress.com" web site allows consumers worldwide to contact the American Express Company and conduct business with the company via its web site.
American Express claims that the Respondent should be considered as having no legitimate rights in the domain name "americamexpress.com," as it is not the trade name or company name of the Respondent and the Respondent has no federal or state application or registration for the mark AMERICAN EXPRESS. It says that Respondent is using the domain name in connection with an adult content web site offering erotic photographic developing and viewing.
B. Respondent
Respondent denies that he registered americamexpress.com to purposely steal business and tarnish American Express’s name. He says one way to resolve it "would be to place an entrance page prior to my entrance page informing customers that this is not an American Express website. If they are trying to reach American Express, Click Here."
Respondent also states, "There is more sex on daytime TV then [sic] there is on my website and you see smaller undergarments on TV commercials and ‘NYPD Blue’ then [sic] some of the samples I rotate on my site."
FINDINGS
(1) the domain name registered by the Respondent is 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.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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
Complainant asserts that it has rights in the AMERICAN EXPRESS mark because of its numerous registered trademarks for the AMERICAN EXPRESS mark. Complainant contends that the domain name is confusingly similar to its registered mark because the domain name differs only by replacing the letter
"n" with the letter "m." Common misspellings of a mark do not establish a distinct mark or defeat the owner’s rights in the mark. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names "tdwatergouse.com" and "dwaterhouse.com" are virtually identical to Complainant’s TD WATERHOUSE name and mark); Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the AMERICAMEXPRESS term contained in the domain name, as the Respondent
’s company name is American Camera Express. Policy ¶ 4(c)(ii).Complainant also contends that Respondent
’s commercial use of the domain name is not bona fide, legitimate or fair. Policy ¶ 4(c)(i). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).Registration and Use in Bad Faith
Complainant contends that Respondent had knowledge of Complainant
’s famous mark and only selected the domain name in question to capitalize on the good will associated with the mark. See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the Respondent, at the time of registration, had notice of the Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity); Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) ("The domain name "singaporeairlines.com" is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’").Respondent is using the domain name in connection with an adult content website that offers erotic photo developing. Using a domain name, which infringes upon another
’s trademark rights, to offer pornographic images, is evidence of bad faith registration and use. See National Football League Properties, Inc., et al. v. One Sex Entertainment Co. D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website); MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith).DECISION
Based upon the above findings, and pursuant to policy 4(i), it is hereby ordered that the domain name, americamexpress.com be transferred from the Respondent to the Complainant.
Honorable Richard DiSalle
Superior Court Judge (Ret.)
Arbitrator
Dated: March 20, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/558.html