DECISION

American Express Company v. (This Domain is For Sale) Joshuathan Investments, Inc.

Claim Number:  FA0304000154647

PARTIES

Complainant is American Express Company, New York, NY (“Complainant”) represented by Dianne K. Cahill of American Express Company. Respondent is (This Domain is For Sale) Joshuathan Investments, Inc., Belize City, BZ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <amexmal.com> and <amexmai.com>, registered with Bulkregister.Com, 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 electronically submitted a Complaint to the National Arbitration Forum (the "Forum") April 17, 2003; the Forum received a hard copy of the Complaint April 18, 2003.

On April 17, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain names <amexmal.com> and <amexmai.com> are registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the name. Bulkregister.Com, Inc. verified that Respondent is bound by the Bulkregister.Com, 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 April 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 12, 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@amexmal.com and postmaster@amexmai.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 May 20, 2003, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain names registered by Respondent, <amexmal.com> and <amexmai.com>, are confusingly similar to Complainant’s AMEX mark.

2. Respondent has no rights or legitimate interests in the <amexmal.com> and <amexmai.com> domain names.

3. Respondent registered and used the <amexmal.com> and <amexmai.com> domain names in bad faith.

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

FINDINGS

Complainant, American Express Company, holds some 160 trademark registrations for the AMEX mark in 83 countries around the world (e.g., U.S. Reg. No. 1,161,278, registered on July 14, 1981, first used in commerce in 1969). Complainant uses this mark, an abbreviation of its business name, in connection with a wide variety of banking, travel, and travel-related services, as well as with its rewards programs and charge, credit, smart and stored value card services. Complainant has some 57 million cardholders worldwide, and in 2002 grossed more than $23 billion in revenue, spending some $1.45 billion in advertising the AMEX mark worldwide. Complainant also operates a website at <americanexpress.com>.

Along with its registrations for the AMEX mark, the strength of Complainant’s mark is evidenced through its listing in both the 30^th edition of Acronyms, Initialisms & Abbreviations Dictionary and the Internet search finder <acronymfinder.com>. A search for news articles on the legal research website <westlaw.com>, restricted to a sixty-day period, revealed 86 articles referring to Complainant as AMEX.

 

Respondent, (This Domain is For Sale) Joshuathan Investments, Inc., registered the <amexmal.com> and <amexmai.com> domain names March 4, 2001, but Respondent is not licensed or authorized to use Complainant’s AMEX mark for any purpose. Respondent uses the disputed domain names to redirect Internet users to the <top10sites.com> domain name. Upon arriving at the disputed domain name, a pop-up window appears, stating that: “The domain name you typed is for Sale. Feel free to Contact our Representative listed Below. (sic) joshuathainvest@aol.com.” A directory of commercial websites is also listed, as is a link to an adult-oriented website that professes to be the “Napster of Pornography” and links to online gambling casinos. When Internet users accessing the site attempt to close their web browser, an additional series of pop-up advertisements appear.

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 will draw such inferences as the Panel 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

Complainant has established in this proceeding that it has rights in the AMEX mark through registration of the mark with the appropriate governmental agencies worldwide, as well as by widespread use of the mark in commerce.

The domain names registered by Respondent, <amexmal.com> and <amexmai.com>, are both confusingly similar to Complainant’s AMEX mark. Each domain name entirely incorporates Complainant’s famous AMEX mark, with the addition of a three-letter suffix. Tacking on a series of letters to Complainant’s mark does not change the fact that Complainant’s mark remains the prominent feature of the disputed domain names. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); 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, Respondent does not create a distinct mark but renders the domain name confusingly similar to Complainant’s marks).

Accordingly, the Panel finds that the <amexmal.com> and <amexmai.com> domain names are confusingly similar to Complainant’s AMEX mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant can make a prima facie case against Respondent having rights or legitimate interests in the domain names with a showing that the “safe harbor” provisions of Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent. With such a showing, the burden of demonstrating rights or legitimate interests in the domain names shifts to Respondent, who has not filed a response to the Complaint in this proceeding. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting the allegations because this information is “uniquely within the knowledge and control of the respondent”); see also 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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent’s use of the disputed domain names to redirect Internet users to commercial and pornographic websites that bear no relation to the AMEX mark is not a “bona fide” offering of goods or services under Policy ¶ 4(c)(i), and it is not an example of a legitimate noncommercial or fair use of domain names 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 Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Both the fame of Complainant’s AMEX mark and the WHOIS contact information for the disputed domain names compel the inference that Respondent is not “commonly known by” the name AMEXMAL, AMEXMAI, <amexmal.com> or <amexmai.com>. The Panel concludes that Complainant satisfied the requirements of Policy ¶ 4(c)(ii) and that its does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <amexmal.com> and <amexmai.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant urges that Respondent registered and used the domain names in bad faith. Evidence that Respondent registered the <amexmal.com> and <amexmai.com> domain names in bad faith can be inferred from the fact that Respondent deliberately chose to register two domain names that entirely incorporated Complainant’s famous AMEX mark. Registration with actual or constructive knowledge of a trademark holder’s rights in a mark is evidence of bad faith registration. See 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”); 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").

Nothing about the websites associated with the disputed domain names reference the phrases “amexmal” or “amexmai.” The value of these domain names rests in their appropriation of the AMEX mark. In using the infringing domain names to redirect Internet users to commercial websites that prominently display links to adult-oriented websites, Respondent’s activities tarnish Complainant’s mark and support findings of bad faith use of the disputed domain names. See 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); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use).

Using Complainant’s AMEX mark in both disputed domain names creates a likelihood of confusion as to the source or sponsorship of the websites linked to the <amexmal.com> and <amexmai.com> domain names. As Respondent presumably redirects Internet users for commercial gain via referral fees, its activities evidence bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

The Panel thus finds that Respondent registered and used the <amexmal.com> and <amexmai.com> domain names in bad faith and that Complainant satisfied Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <amexmal.com> and <amexmai.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 3, 2003.

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