DECISION

American Express Company v. Stealth Commerce

Claim Number: FA0203000106119

PARTIES

Complainant is American Express Company, New York, NY (“Complainant”) represented by Dianne K. Cahill.  Respondent is Stealth Commerce, Tortola, BRITISH VIRGIN ISLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <americanexpressbank.com>, registered with Intercosmos Media Group, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 27, 2002; the Forum received a hard copy of the Complaint on March 28, 2002.

On March 27, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <americanexpressbank.com> is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, Inc. 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 March 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 17, 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@americanexpressbank.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 April 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following allegations:

Respondent’s <americanexpressbank.com> domain name is confusingly similar to Complainant’s AMERICAN EXPRESS trademark.  Respondent lacks rights to and legitimate interests in the disputed domain name.  Respondent registered and used the disputed domain name in bad faith.

B. Respondent did not file a Response in this proceeding. 

FINDINGS

Complainant has used the trade name American Express Bank since 1919 and its AMERICAN EXPRESS mark since 1850, making the mark famous throughout the world. 

Complainant is the owner of more than 400 international registrations for its AMERICAN EXPRESS mark or marks that contain AMERICAN EXPRESS.  Complainant also uses its AMERICAN EXPRESS mark in connection with its website at <americanexpress.com>.  In addition, Complainant has trademark registrations for AMERICAN EXPRESS in over 100 countries around the world, including the British Virgin Islands, where it owns Registration No. 1525 covering financial services.

Respondent registered the disputed domain name January 15, 2002, and is using the domain name in connection with an adult content website offering erotic photographs and “secretarial” or escort-type services.

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 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 to and/or Confusingly Similar

For the reasons set forth above, Complainant owns valid and enforceable rights in the mark AMERICAN EXPRESS that Complainant acquired well prior to the date on which Respondent registered and began using the domain name.  The striking similarity between <americanexpressbank.com> and the AMERICAN EXPRESS mark is immediately apparent. 

The domain name registered by Respondent, <americanexpressbank.com>, consists of the AMERICAN EXPRESS trademark with the term “bank” appended at the end.  “Bank” is a generic term.  As such, it does not serve to distinguish the domain name from the AMERICAN EXPRESS mark.  To the contrary, it only serves to heighten the potentiality for confusion because Complainant has operated as American Express Bank since 1919.  See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

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

Rights to or Legitimate Interests

Respondent has not submitted a Response in this proceeding.  It is well established that when a Respondent fails to submit a Response, a Panel may take Complainant’s allegations to be true.  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 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).

Furthermore, there is a presumption that a Respondent has no rights or legitimate interests in a disputed domain name when it fails to submit a Response.  See 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).

Respondent’s use of the <americanexpressbank.com> domain name to redirect Internet users to websites offering pornographic material permits a finding that Respondent has no rights or legitimate interests in respect to the disputed domain name.  Further, the use of pornography in connection with a famous mark is not a bona fide use under Policy ¶ 4(c)(i), or a noncommercial or fair use under Policy ¶ 4(c)(iii).  See Nat’l Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where Respondent linked these domain names to its pornographic website).

Complainant has established the fame of its AMERICAN EXPRESS mark, and without contrary evidence, it would be impossible for Respondent to be commonly known by a domain name confusingly similar to Complainant’s famous mark under Policy ¶ 4(c)(ii).  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).

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

Registration and Use in Bad Faith

Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. This constitutes bad faith under Policy ¶ 4(b)(iv).  The posted pornographic material is evidence of bad faith when the domain name being used is confusingly similar to a famous mark.  See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to Complainant’s mark and used a pornographic depiction confusingly similar to Complainant’s registered trademark on its website that would cause confusion as to the source or affiliation of the site); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

Respondent’s registration and use of a domain name incorporating Complainant’s AMERICAN EXPRESS mark was in bad faith because Complainant’s mark is famous and it may be presumed that Respondent knew of it.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also 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 world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).

Therefore, the Panel concludes that Complainant has met the burden set forth under Policy ¶ 4(a)(iii).

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: May 8, 2002.

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