DECISION

American Express Company v. Bung Ran, Lee

Claim Number: FA0209000126638

PARTIES

Complainant is American Express Company, New York, NY, USA (“Complainant”) represented by Dianne K. Cahill, of American Express Company.  Respondent is Bung Ran, Lee, Inchon, SOUTH KOREA (“Respondent”)

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <american-express.com>, registered with NetPia.com.

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 Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 27, 2002; the Forum received a hard copy of the Complaint on September 25, 2002.

On September 29, 2002, NetPia.com confirmed by e-mail to the Forum that the domain name <american-express.com> is registered with NetPia.com and that Respondent is the current registrant of the name.  NetPia.com has verified that Respondent is bound by the NetPia.com 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 October 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 23, 2002 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.com 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 November 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <american-express.com> domain name is identical to Complainant’s registered AMERICAN EXPRESS mark.

2. Respondent does not have rights to or legitimate interests in the <american-express.com> domain name.

3. Respondent registered and used the <american-express.com> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has provided travel and financial services worldwide for over one and a half centuries. The AMERICAN EXPRESS mark has been maintained and used continuously from that point forward. Complainant has numerous marks registered with the United States Patent and Trademark Office (“USPTO”). Among these, the AMERICAN EXPRESS mark is listed with the USPTO on the Principle Register (e.g., Reg. No. 1,024,840). Moreover, the AMERICAN EXPRESS and other such formative marks are registered in several other countries, including South Korea, where the Respondent is listed as residing.

In 2001, Complainant grossed over $22 billion in revenue and spent over $1.3 billion in marketing and promotion worldwide. Complainant extensively advertises its marks and services through all forms of the media. In the course of such an extensive marketing program, the AMERICAN EXPRESS mark has become internationally famous, and commonly associated with a worldwide travel and financial corporation.

Complainant also maintains the domain name <americanexpress.com>. At the  <americanexpress.com> website, consumers can access and conduct business with Complainant. Complainant receives over 70 million visits to its website per year. The <americanexpress.com> website had been established and in use prior to the registration of the disputed domain name, <american-express.com>.

Respondent registered the disputed domain name on June 28, 2001. Respondent’s disputed domain name and corresponding website is currently “under construction.” The website states “welcome to the American-Express” and “American Express transportation service”.  There is no indication of the services to be provided by the website.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the AMERICAN EXPRESS mark through registration with the USTPO and subsequent continuous use of the mark.

Respondent’s <american-express.com> domain name is identical to Complainant’s AMERICAN EXPRESS mark. Respondent incorporates Complainant’s entire mark in its domain name. Given the fame and international recognition of Complainant’s mark, the mere addition of a hyphen is not adequate to create a distinct and unique domain name that is not confusingly similar.  Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has thus been satisfied.

Rights or Legitimate Interests

Respondent has not submitted a reply to Complainant’s allegations, thereby permitting the Panel to conclude that all reasonable inferences made by Complainant are true and accurate unless there is evidence that is clearly contradictory.  Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true);  Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).  There is no evidence that contradicts the allegations of Complainant.  Complainant has presented evidence that substantiates its claim that Respondent has no legitimate rights or interests in the contested domain name.

Respondent deliberately registered the disputed domain name to capitalize on Complainant’s commonly known mark.  Moreover, Respondent used Complainant’s mark to intentionally divert Internet consumers to its website. There are no rights or legitimate interests when one tries to benefit from the unauthorized use of another’s mark by diverting Internet traffic to its website. Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

There has been no evidence submitted to indicate that Respondent has a substantial affiliation with, or is known by the <american-express.com> name. Complainant has established itself as the sole possessor of all legitimate rights and interests in the name AMERICAN EXPRESS. Since Respondent has not come forward with a viable alternative rationalization for its use of Complainant’s registered mark, and uses an identical domain name to direct users to its website, it can be deduced that Respondent has no rights to the domain name according to Policy ¶ 4(c)(ii). 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); 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).

Finally, the disputed domain name is currently “under construction.” However, this assertion standing alone is not sufficient to satisfy the burden of proof in showing rights and/or legitimate interests in the contested domain name. See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii))

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has thus been satisfied.

Registration and Use in Bad Faith

Respondent has registered and is using the disputed domain name in bad faith. Complainant’s registered mark AMERICAN EXPRESS  is registered with the relevant South Korean trademark authorities. Respondent was placed on constructive notice by virtue of Complainant’s registration of the marks in South Korea, Respondent’s purported place of domicile. Respondent’s registration of the disputed domain name thereafter, containing the distinctive service mark, is an indication of bad faith registration. Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

As stated previously, Complainant is a well-known international business enterprise and its name and service marks are well renown through extensive marketing and advertising. Respondent has capitalized on Complainant’s marks as well as reputation by registering and using a domain name that is identical to the registered marks. The facts of this case suggest that Respondent is engaged in opportunistic bad faith. Respondent is using Complainant’s mark in its entirety; the mark is very well known and has been in use for over 100 years; and, Respondent has failed to allege any good faith basis for use of the disputed domain name. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains Complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name); see also Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has thus been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel hereby concludes that the requested relief shall be GRANTED.

Accordingly, it is ordered that the domain name  <american-express.com> be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated: November 23, 2002

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