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Generic Top Level Domain Name (gTLD) Decisions |
START-UP TRADEMARK
OPPOSITION POLICY
American Express Company
v. Swarthmore Associates, LLC
Claim Number:
FA0204000110759
PARTIES
Complainant
is American Express Company, New York, NY (“Complainant”) represented by
Claudia M. Werner, of Leydig, Voit & Mayer, Ltd. Respondent is Swarthmore Associates, LLC,
Pacific Palisades, CA (“Respondent”) represented by Sherry A. Lear, of
Law Offices of Sherry Anne Lear.
The
domain name at issue is <amex.biz>, registered with PSI-Japan
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.
R.
Glen Ayers served as Panelist
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 19, 2002; the Forum
received a hard copy of the Complaint on
April 22, 2002.
On
April 29, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 20,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 20, 2002.
Complainant’s
Additional Submission was timely received and determined to be complete on May
29, 2002. Complainant filed another
“additional submission” on May 28, 2002, also considered timely.
On
June 26, 2002, pursuant to STOP Rule 6(b), the Forum appointed R. Glen Ayers
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
Complainant,
American Express Company, alleges that it holds a trademark in the word “AMEX”
and has used that trademark in commerce
since 1969. The domain name <amex.biz>
is obviously identical. Complainant
supplied evidence of its multiple registrations of the mark.
Complainant also alleges, under the STOP procedures, that Respondent certainly received notice of American Express’s rights from the registry operator. Complainant asserts that it had filed an IP Claim with NeuLevel on August 6, 2001. Complainant asserts that the Respondent has no rights in the name and that the name has been registered to prevent Complainant from reflecting its mark in a “.biz” domain name.
Complainant
asserts that Respondent acted in bad faith and that it must have selected <amex.biz> with “full knowledge
that the intended use of this domain name was in conflict with a registered
trademark....”
The
American Express Company asserts that the use of the domain name is likely to
cause confusion and that registration of the name
will interfere with
Complainant’s business.
B. Respondent
Respondent
acknowledges that the domain name and the trademark are identical. However, Respondent alleges that it acquired
the <amex.biz> name “for use
in conjunction with an American exporting business by Pacific China Industries,
Ltd. (PCI)...” It alleges that “AMEX”
in this context is an acronym or abbreviation for “American Export.”
Respondent
also points out that a number of entities have the right to use the acronym
“AMEX.” The trademark rights of
American Express do not confer exclusive use.
Further,
Respondent asserts that there is no likelihood of confusion, because the
services it intends to offer at the <amex.biz>
domain name relate to import/export services and have nothing to do with the
sorts of financial services and travel services offered
by the American Express
Company. Respondent asserts that it has
rights in the name.
Finally,
Respondent says that it did not register the domain name in bad faith or for
purposes of selling the domain name.
Respondent generally denies each
of the standards used to determine “bad faith.” Respondent does not deny the allegations that it received notice
of the IP Claim given by NeuLevel.
C. Additional
Submissions
The
American Express Company first filed an additional submission challenging
Respondent’s statements that it intended to use the
term “AMEX” in a generic
sense, referring to an export business.
The American Express Company also asserts that there is bad faith, given the famous nature of its mark and the
scope of American Express’ business
activities. Certainly, there would be
some business conflicts or interference.
Then,
Complainant filed an additional timely “additional submission” stating that it
had learned that the person or entity behind
the registration of the name is an
attorney named John C. Kirkland, a partner or a shareholder at a law firm known
as Greenberg Taurig. Kirkland is the
administrative and business contact for the entity, Swarthmore Associates,
which registered the domain name.
The
American Express Company cites an article by Ben Edelman, Disputed
Registration in “.BIZ”; A Case Study of domain names by Swarthmore Associates
and John Kirkland. The article
determined that Mr. Kirkland and
Swarthmore Associates appear to be in the business of registering domain names
in order to resell them. Mr. Kirkland
and Swarthmore Associates apparently registered such “.biz” names as
<ANAL.BIZ>, <HOOKER.BIZ> and <STRIPPER.BIZ>. Further, in a reported decision, MDU
Resources Group, Inc. v. Swarthmore Assocs., LLC, FA 102957 (Nat. Arb.
Forum Feb. 26, 2002), Mr. Kirkland and Swarthmore Associates were divested of
registration of the domain name
on other grounds.
The
parties have stipulated identity of name and mark. Respondent has not rebutted the Complainant’s allegations that it
has no right in the name. It has
offered no evidence it has rights to the name.
It had offered no credible evidence of preparation for use of the name.
Respondent’s
action in registering “.biz” names on a wholesale basis demonstrates bad faith
where the name and mark are identical,
and the mark is a famous, well-known
mark. Further, Respondent did not deny
Complainant’s assertion that it had received notice from NeuLevel of the IP
rights of American Express.
Paragraph
15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the
domain name is identical to a trademark or service mark in which the
Complainant has rights; and
(2) the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3) the
domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Certainly,
Complainant has rights in the mark.
Complainant has submitted evidence of its interest in the mark. Respondent has stipulated that the mark and
domain name are identical.
Other
than registration of the domain name, Respondent has shown no other rights in
the mark. Respondent has asserted that
it intends to use the name in a generic sense relating to “American exports.” Certainly, other entities have the right to
use forms of “amex” - - - Complainant admits as much. But, Respondent has not shown that it has rights other
than the domain registration. Such does
not create rights in the name where the Respondent only makes allegations about
future possible business uses in the export
trade. See Twentieth Century Fox Film Corp. v. Benstein,
FA 102962 (Nat. Arb. Forum - Feb. 27, 2002) (finding registration of
“foxstudios.biz” in order to establish a website for a planned
dance studio was
insufficient to establish rights with respect to the name).
“Bad
faith” issues are more difficult. The
Complainant and Respondent do not appear to be direct competitors. See Gene Logic, Inc. v. Bock, FA
10342 (Nat. Arb. Forum Mar. 4, 2002).
There has been no offer to sell the mark See Prudential Ins. Co. of Am. v. TPB Fin a/k/a B. Evans,
FA 108218 (Nat. Arb. Forum Apr. 18, 2001).
But, the Respondent certainly registered the domain name
with knowledge of Complainant’s rights.
See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum
Jan. 23, 2002). STOP Policy §4(b)(ii).
And, there is possibility, even probability, of
confusion. STOP Policy §4(b)(iv).
See Twentieth Century Fox Film Corp. v. Berstein, FA
102962 (Nat. Arb. Forum - Feb. 27, 2002).
Finally, registering names in gross, a practice engaged in
by Respondent, certainly allows the inference of improper intent - or,
bad
faith. See, e.g., Armstrong
Holdings, Inc. v. JAZ Assoc., FA95234 (Nat. Arb. Forum Aug. 17, 2000).
DECISION
The domain name will be transferred to Complainant
and subsequent challenges under the STOP Policy against this domain name shall
not be permitted.
R. GLEN AYERS
Dated: July 10, 2002
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