DECISION

American Express Company v. american express pay

Claim Number:  FA0309000196044

PARTIES

Complainant is American Express Company, New York, NY (“Complainant”) represented by Dianne K. Cahill. Respondent is american express pay, Lewisville, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americanexpresspay.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide (hereinafter “Internet Names Worldwide”).

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 15, 2003; the Forum received a hard copy of the Complaint on September 16, 2003.

On September 15, 2003, Internet Names Worldwide confirmed by e-mail to the Forum that the domain names <americanexpresspay.com> is registered with Internet Names Worldwide and that Respondent is the current registrant of the name. Internet Names Worldwide has verified that Respondent is bound by the Internet Names Worldwide 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 September 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 2003 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@americanexpresspay.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 October 17, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 assertions:

1. Respondent’s <americanexpresspay.com> domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark.

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

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

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, American Express Company, holds numerous registrations for the AMERICAN EXPRESS mark on the Principal Register of the U.S. Patent and Trademark Office (e.g. U.S. Reg. Nos. 1,024,840: 1,032,516; 2,245,543; and 2,451,979). Complainant began using the AMERICAN EXPRESS mark in 1850 and currently uses the mark in connection with a wide variety of financial services, charge/credit/smart/stored value card services and travel related services. Currently, Complainant has over 57 million cardholders worldwide, and grossed over $23 billion in revenue in 2002.

Respondent, american express pay, registered the <americanexpresspay.com> domain name on January 9, 2003, without license or authorization to use Complainant’s AMERICAN EXPRESS mark for any purpose. Respondent uses the disputed domain name to redirects Internet users to the <verioidp.com> domain name, a web directory that includes links to services that compete with those of Complainant.

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 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 and/or Confusingly Similar

Complainant has established rights in the AMERICAN EXPRESS mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the mark in commerce.

Respondent’s <americanexpresspay.com> domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark. The dominant feature of the domain name is Complainant’s famous and registered AMERICAN EXPRESS, and Respondent’s addition of the generic word “pay” (which bears an obvious relationship with Complainant’s services) does not dispell any confusing similarity between the domain name and Complainant’s mark. See 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); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that the <americanexpresspay.com> domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is using Complainant’s AMERICAN EXPRESS mark to misdirect Internet users to an online web directory. At that online location, Internet users are provided hyperlinks to webpages sponsored by competitors of Complainant. Respondent’s opportunistic use of Complainant’s mark for these purposes is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of Complainant’s mark, rendering Policy ¶¶ 4(c)(i) and (iii) inapplicable in this dispute. See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 25, 2003) (finding that Respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the disputed domain name to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Based on the fame of Complainant’s AMERICAN EXPRESS mark, and the fact that Complainant has obtained numerous registrations of its mark on the Principal Register of the U.S. Patent and Trademark Office, the Panel holds that Respondent is not “commonly known by” the disputed domain name as contemplated by 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 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).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <americanexpresspay.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using Complainant’s famous AMERICAN EXPRESS mark to redirect Internet users to an Internet directory. The Panel presumes that Respondent’s motivation in this redirection is the receipt of referral fees or commissions from the <verioidp.com> domain name. Thus, Respondent is using a liklihood of confusion between its domain name and Complainant’s mark for commercial gain, evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]hile an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion").

The Panel thus finds that Respondent registered and used the <americanexpresspay.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

Tyrus R. Atkinson, Jr.,, Panelist

Dated:  October 27, 2003

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