DECISION

American Express Company v. Lee HyunGyu

Claim Number: FA0209000126649

PARTIES

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

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myamericanexpress.com>, registered with Hangang Systems Inc. d/b/a DoRegi.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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 30, 2002; the Forum received a hard copy of the Complaint on September 25, 2002.

On September 30, 2002, Hangang Systems Inc. d/b/a DoRegi.com confirmed by e-mail to the Forum that the domain name <myamericanexpress.com> is registered with Hangang Systems Inc. d/b/a DoRegi.com and that Respondent is the current registrant of the name.  Hangang Systems Inc. d/b/a DoRegi.com has verified that Respondent is bound by the Hangang Systems Inc. d/b/a DoRegi.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 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 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@myamericanexpress.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 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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

The <myamericanexpress.com> domain name is nearly identical to Complainant’s AMERICAN EXPRESS mark. 

Respondent does not have any rights or legitimate interests in the <myamericanexpress.com> domain name.

Respondent registered and used the <myamericanexpress.com> domain name in bad faith. 

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has over 34 registered trademarks with the United States Patent and Trademark Office (“USPTO”) for marks reflecting the AMERICAN EXPRESS moniker.  Complainant’s first registration of an AMERICAN EXPRESS related mark was on October 2, 1962, AMERICAN EXPRESS CARDS (Reg. No. 738,813).  Shortly thereafter, Complainant registered the AMERICAN EXPRESS word mark with the USPTO as Reg. No. 1,024,840. 

Complainant has actively sought trademark protection for its valuable AMERICAN EXPRESS mark and has over 400 trademark registrations for the mark or marks containing AMERICAN EXPRESS in over 100 countries around the world.  One such country is Respondent’s homeland South Korea.  Complainant has provided proof of twenty trademark registrations in South Korea for AMERICAN EXPRESS related marks. 

Complainant has used the AMERICAN EXPRESS mark since 1850.  The mark is used in conjunction with Complainant’s financial service related business ventures.  Complainant’s AMERICAN EXPRESS goods and services include banking services, travel and travel-related services, and charge card, credit card, smart card and stored value card services that are used by millions worldwide. 

Complainant is a company with a global presence, as Complainant has offices located throughout the world.  There are over 55 million AMERICAN EXPRESS cards in force around the world.  Complainant has had a business presence in South Korea since 1967 and established banking offices there in 1977. 

Complainant’s goods and services enjoy a substantial amount of business success as evidenced by Complainant grossing over $22 billion in revenue in 2001.  In the same year Complainant expended significant resources globally, including $1.3 billion in marketing and promotional efforts, for its AMERICAN EXPRESS related services.  Complainant extensively advertises its AMERICAN EXPRESS mark in television, radio and print advertising, through brochures available at merchant sites and on the <americanexpress.com> website.  Due to Complainant’s business success and promotional efforts the AMERICAN EXPRESS mark has accumulated a significant amount of goodwill and is famous worldwide. 

Respondent registered the <myamericanexpress.com> domain name on April 5, 2001.  The domain name resolves to a single screen that contains no information other than an email contact.  Complainant revealed that Respondent has done nothing more with the domain name.  Complainant sent Respondent a letter notifying Respondent of its infringing registration of the <myamericanexpress.com> domain name and requesting transfer of the registration.  Respondent replied with an offer to sell the domain name registration rights to Complainant for $5,000 and purported to register the domain name for its business.

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 its rights in the AMERICAN EXPRESS mark through proof of trademark registration with the USPTO among other trademark governing bodies.  Complainant has also shown the value of the AMERICAN EXPRESS mark as a business asset established by widespread commercial use of the mark since 1850. 

Respondent’s <myamericanexpress.com> domain name incorporates Complainant’s entire AMERICAN EXPRESS mark.  The only deviation the <myamericanexpress.com> domain name contains is the suggestive prefix “my” and the generic top-level domain “.com.”  The addition of “my” to another entity’s trademark in a domain name has long been held to be an addition that does not affect the domain names capacity to confuse the domain name with the associated trademark.  This is because the word “my” is suggestive of the trademark that follows in the second-level domain.  Furthermore, generic top-level domains are inconsequential in a confusingly similar analysis since they are required in domain names.  Thus, Respondent’s <myamericanexpress.com> domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark.  See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark…”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent failed to submit a Response in this dispute.  Therefore, the Panel will accept all of Complainant’s uncontested allegations as true and draw all reasonable inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also 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).

Furthermore, Complainant effectively shifted the burden on Respondent to establish rights or legitimate interests in the <myamericanexpress.com> domain name by submitting a prima facie Complaint.  Respondent failed to meet its burden by neglecting to submit a Response.  Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the <myamericanexpress.com> domain name.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”).

Respondent does not use the <myamericanexpress.com> domain name in conjunction with a website containing content.  Respondent purportedly notified Complainant that it registered the <myamericanexpress.com> domain name for its business but has not developed a use for the domain name for over one and a half years.  Respondent also failed to come forward and defend its claim to the <myamericanexpress.com> domain name with evidence of demonstrable plans to use the domain name.  Moreover, Respondent did offer to sell the registration rights in the <myamericanexpress.com> domain name to Complainant for $5,000.  Respondent’s actions evidence a lack of rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

There exists no evidence of record that shows Respondent is commonly known by MY AMERICAN EXPRESS or <myamericanexpress.com>.  The only information available in regards to Respondent’s identity suggests that Respondent is known as Lee HyunGyu.  Therefore, Respondent has no rights or legitimate interests in the <myamericanexpress.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <myamericanexpress.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has only used the <myamericanexpress.com> domain name to solicit the sale of the registration rights to Complainant after being contacted by Complainant.  Respondent offered to transfer the <myamericanexpress.com> domain name for $5,000.  This amount of money is clearly out of proportion to the amount expended on the <myamericanexpress.com> domain name since Respondent does not have a content based website establishing a developed business.  Therefore, Respondent’s sales solicitation warrants a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a 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); see also Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs).

In addition, because of the worldwide strength of the AMERICAN EXPRESS mark, it can be inferred that Respondent registered the <myamericanexpress.com> domain name with knowledge of Complainant’s interest in the mark.  It is apparent that Respondent registered the <myamericanexpress.com> domain name for its potential value associated with the AMERICAN EXPRESS mark because Respondent has not used the domain name other than to offer the sale of its registration rights.  In addition, Complainant provides evidence of Respondent’s behavior of registering domain names with trademarks of other entities, such as CNBC and MICROGRAPX.  Therefore, the surrounding circumstances make it evident that Respondent registered the <myamericanexpress.com> domain name with knowledge of Complainant’s vested interest in the AMERICAN EXPRESS mark in bad faith.  See 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 Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the domain name <myamericanexpress.com> be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: November 25, 2002

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