DECISION

American Express Company v. Amcore & Company For sale domains $250 or best offer

Claim Number:  FA0408000307727

PARTIES

Complainant is American Express Company (“Complainant”), represented by Dianne K. Cahill of American Express Company, 200 Vesey Street, 49th Floor, New York, NY 10285.  Respondent is Amcore & Company For sale domains $250 or best offer  (“Respondent”), 166 Sohrevardi Shomali Record Building, Second Floor, Tehran, Iran Postal District.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <amercanexpress.com> and <americanxpress.com>, registered with Bulkregister, Llc.

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 August 6, 2004; the Forum received a hard copy of the Complaint August 9, 2004.

On August 9, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain names <amercanexpress.com> and <americanxpress.com> are registered with Bulkregister, Llc. and that Respondent is the current registrant of the names. Bulkregister, Llc. verified that Respondent is bound by the Bulkregister, Llc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On August 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 1, 2004, 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@amercanexpress.com and postmaster@americanxpress.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 September 8, 2004, 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, <amercanexpress.com> and <americanxpress.com>, are confusingly similar to Complainant’s AMERICAN EXPRESS mark.

2. Respondent has no rights to or legitimate interests in the <amercanexpress.com> and <americanxpress.com> domain names.

3. Respondent registered and used the <amercanexpress.com> and <americanxpress.com> domain names in bad faith.

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

FINDINGS

Complainant, American Express Company, is a multi-national company with offices worldwide.  Complainant began using and has continuously used the AMERICAN EXPRESS mark since 1850 in conjunction with a wide variety of financial services in addition to travel related services. 

Complainant established by extrinsic proof in this proceeding that it owns federal trademark registrations for the AMERICAN EXPRESS mark with the United States Patent and Trademark Office (Reg. No. 1,024,840, issued November 11, 1974, Reg. No. 1,032,516, issued February 3, 1976, Reg. No. 1,178,455, issued November 17, 1981, Reg. No. 1,230,270, issued March 8, 1983, Reg. No. 1,242,630, issued June 21, 1983, Reg. No. 1,288,141, issued July 31, 1984, Reg. No. 1,622,856, issued November 13, 1990, Reg. No. 1,724,234, issued October 13, 1992, Reg. No. 1,847,678, issued August 2, 1994, Reg. No. 1,958,496, issued February 27, 1996, Reg. No. 2,050,430, issued April 8, 1997, Reg. No. 2,154,760, issued May 5, 1998, Reg. No. 2,245,543, issued May 18, 1999, Reg. No. 2,270,732, issued August 17, 1999, Reg. No. 2,272,210, issued August 24, 1999, Reg. No. 2,293,940, issued November 23, 1999, Reg. No. 2,302,524, issued December 21, 1999, Reg. No. 2,338,220, issued April 4, 2000, Reg. No. 2,364,167, issued July 4, 2000, Reg. No. 2,380,657, issued August 29, 2000, Reg. No. 2,399,629, issued October 31, 2000, Reg. No. 2,399,682, issued October 31, 2000, Reg. No. 2,411,806, issued December 12, 2000, Reg. No. 2,424,972, issued January 30, 2001, Reg. No. 2,437,508, issued March 20, 2001, Reg. No. 2,442,416, issued April 10, 2001, Reg. No. 2,451,979, issued May 15, 2001, Reg. No. 2,463,515, issued June 26, 2001, Reg. No. 2,506,124, issued August 21, 2001, Reg. No. 2,518,621, issued December 11, 2001, Reg. No. 2,587,728, issued July 2, 2002, Reg. No. 2,603,002, issued July 30, 2002, Reg. No. 2,604,346, issued August 6, 2002, Reg. No. 2,615,708, issued September 3, 2002, Reg. No. 2,623,485, issued September 24, 2002, Reg. No. 2,644,682, issued October 29, 2002, Reg. No. 2,709,658, issued April 22, 2003, Reg. No. 2,766,927, issued September 23, 2003 and Reg. No. 2,808,620, issued January 27, 2004).

Respondent is using the <amercanexpress.com> and <americanxpress.com> domain names to redirect Internet users to web directories that include links to financial services, credit card services, travel and travel-related services, gifts and business services.  Additionally, Respondent has been involved in at least four other ICANN proceedings where bad faith was found and the domain names were ordered transferred, including Reed Elsevier Inc. v. Amcore & Company for Sale Domains $250 or best offer, Google Inc. v. Amcore & Company For Sale Domains $250 or best offer, CareerBuilder, Inc. v. Amcore & Company For Sale Domains $250 or best offer, and Hershey Foods Corp. v. Amcore & Company For Sale Domains $250 or best offer.

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 Complainant to 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 established with extrinsic proof in this proceeding that it has rights in the AMERICAN EXPRESS mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last one hundred and fifty four years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The domain name registered by Respondent is confusingly similar to Complainant’s AMERICAN EXPRESS mark because the domain name incorporates Complainant’s mark with the omission of the letter “I” in the spelling of the word “American” and the omission of the letter “E” in the word “Express.”  The misspelling of the words in Complainant’s mark does not create a distinct mark; the domain name remains confusingly similar to Complainant’s mark.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

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

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain names.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that 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 this assertion 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).

Moreover, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <amercanexpress.com> and <americanxpress.com> domain names to redirect Internet users searching under Complainant’s mark to web directories that include links to financial services, credit card services, travel and travel-related services, gifts and business services, all of which are similar to Complainant’s financial and travel services.  Respondent’s use of domain names that are confusingly similar to Complainant’s AMERICAN EXPRESS mark to redirect Internet users interested in Complainant’s products and services to a commercial website that offers a web directory related to Complainant’s products and services is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name); 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, a simple misspelling of Complainant’s mark, 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); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Furthermore, Respondent has not offered any evidence, and no proof in the record or in the WHOIS database suggests, that Respondent is commonly known by the  <amercanexpress.com> and <americanxpress.com> domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); 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).

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

Registration and Use in Bad Faith

Respondent registered domain names containing misspelled versions of Complainant’s well-known mark and did so for Respondent’s commercial gain.  Respondent’s domain names divert Internet users who seek Complainant’s AMERICAN EXPRESS mark to Respondent’s website offering similar commercial services through the use of domain names that are confusingly similar to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Kmart v. Khan, 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 State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also 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).

Additionally, Respondent has been involved in at least four other proceedings under the Policy where bad faith was found and the domain names were ordered transferred.  The Panel finds that Respondent’s previous practice of registering domain names that infringe on trademarks of other businesses is further evidence of Respondent’s bad faith registration and use under Policy ¶4(b)(ii).  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that Respondent violated ¶ 4(b)(ii), as revealed by the number of other domain name registrations incorporating others’ trademarks and the fact that the domain names in question do not link to any on-line presence or website).

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 relief shall be GRANTED.

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

Hon. Carolyn Marks Johnson, Panelist

Dated: September 22, 2004.

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