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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
American
Express Company v. Americaexpress.com
Claim
Number: FA0210000128700
PARTIES
Complainant is American Express Company, New York,
NY, USA (“Complainant”) represented by Dianne
K. Cahill, of American Express
Company. Respondent is Americaexpress.com, Gdynsk, POLAND
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <americaexpress.com>,
registered with Tucows.
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.
Hon. Ralph Yachnin as
Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on
October 24, 2002; the Forum received
a hard copy of the Complaint on October
25, 2002.
On October 25, 2002,
Tucows confirmed by e-mail to the Forum that the domain name <americaexpress.com> is
registered with Tucows and that Respondent is the current registrant of the
name. Tucows has verified that
Respondent is bound by the Tucows 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 30, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”),
setting a deadline of November 19, 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@americaexpress.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 December 16, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed
Hon. Ralph Yachnin 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 <americaexpress.com> domain name is confusingly similar to
Complainant’s registered AMERICAN EXPRESS mark.
2. Respondent does not have rights to or
legitimate interests in the <americaexpress.com>
domain name.
3. Respondent registered and used the <americaexpress.com> domain name
in bad faith.
B. Respondent
Respondent failed to
submit a Response in this proceeding.
FINDINGS
Complainant
has used the AMERICAN EXPRESS mark since 1850. Complainant has numerous marks
registered with the United States Patent
and Trademark Office (“USPTO”).
Complainant holds numerous registrations for the mark on the Principal Register
(e.g., Reg. Nos. 1,024,840;
1,032,516). Complainant has also registered its AMERICAN EXPRESS mark in
several other countries, including
Poland, where the Respondent is listed as
residing (e.g., Polish Registration
No. 75,520). Complainant has provided services in Poland for at least 75 years,
and has maintained offices there
for over 10 years.
In
2001, Complainant grossed over $22 billion in revenue, and spent over $1.3
billion marketing and promoting the AMERICAN EXPRESS
mark worldwide.
Complainant extensively advertises its mark 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 registered, and in use, prior to
the registration
of the disputed domain name, <americaexpress.com>.
Respondent
registered the disputed domain name on May 17, 1998. Respondent’s disputed
domain name redirects Internet traffic to <megago.com>.
This website
includes links to, inter alia,
financial services, credit card services, travel and travel related services,
gifts and business services, all of which Complainant
provides. Respondent does
not have a license or permission to use the AMERICAN EXPRESS mark.
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. Complainant has also
established rights in the AMERICAN EXPRESS mark through registration with the
relevant Polish trademark
registration authorities and subsequent continuous
use of the mark in Poland.
Respondent’s
<americaexpress.com> domain name is confusingly similar to
Complainant’s AMERICAN EXPRESS mark. The only difference between Complainant’s
well-known AMERICAN
EXPRESS mark and the disputed domain name is the deletion
of the “n” in “American.” Given the fame and international recognition
of
Complainant’s mark, the mere deletion of a letter is not adequate to create a
distinct and unique domain name capable of overcoming
a claim of confusing
similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July
13, 2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency
to be confusingly similar to the trademark
where the trademark is highly distinctive); see
also Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a Respondent does not
create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has thus been satisfied.
Rights
or Legitimate Interests
Respondent
has failed to Respond, therefore, it is assumed that Respondent lacks rights
and legitimate interests in the disputed domain
name. When Complainant asserts a prima
facie case against Respondent, the burden of proof shifts to Respondent to
show that it has rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests in
respect of the domain, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which
could demonstrate any
rights or legitimate interests in the domain name).
Furthermore,
because Respondent has not submitted a Response, it is appropriate for the
Panel to accept all reasonable allegations
and inferences in the Complaint as
true. See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply
to the Complaint).
Respondent
registered the disputed domain name to capitalize on Complainant’s commonly
known mark. Moreover, Respondent used
Complainant’s AMERICAN EXPRESS mark to divert Internet users to the website,
<megago.com>. This type
of use is not considered to give rise to rights
and legitimate interests pursuant to Policy ¶ 4(c)(i), nor is it considered to
be
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
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); see also 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
is no evidence on record that Respondent is commonly known by AMERICA EXPRESS,
or <americaexpress.com>. Because Respondent has failed to present any
evidence that it is known by the disputed domain name to the Panel, the Panel
may infer
that Respondent has no rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See 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); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by
the disputed domain name or using
the domain name in connection with a legitimate or fair use).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent
registered the disputed domain name in bad faith. Complainant’s AMERICAN
EXPRESS mark is registered with the relevant Polish
trademark authorities.
Therefore, Respondent was placed on constructive notice by virtue of
Complainant’s registration of the marks
in Poland, Respondent’s place of
domicile. Respondent’s registration of the disputed domain name despite
knowledge of Complainant’s
mark is evidence of bad faith registration pursuant
to Policy ¶ 4(a)(iii). 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 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”).
Complainant
is a well-known travel and financial services provider and its name is
recognized throughout the world.
Respondent has capitalized on Complainant’s AMERICAN EXPRESS mark by
registering and using a domain name that is confusingly similar
to attract
Internet traffic to <megago.com>.
It can be inferred that Respondent makes a profit from the Internet
traffic that it directs to this website. Therefore, Respondent
is using the
disputed domain name in order to create Internet user confusion for Respondent’s
commercial gain. This type of behavior
is evidence of registration and use in bad faith pursuant to Policy ¶
4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract
users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users
seeking Complainant’s site
to its own website for commercial gain).
Accordingly,
the Panel finds that Policy ¶ 4(a)(iii) has 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 <americaexpress.com> be TRANSFERRED from Respondent to
Complainant.
Hon.
Ralph Yachnin
Justice,
Supreme Court, NY (Ret.)
Dated:
December 18, 2002
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