DECISION

American Express Company v. Buy Now

Claim Number: FA0408000318783

PARTIES

Complainant is American Express Company (“Complainant”), represented by Dianne K. Cahill, 200 Vesey Street, 49th Floor, New York, NY 10285.  Respondent is Buy Now (“Respondent”), 420 US Hwy 1 #16, North Palm, FL 33408.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <americanexpresscashback.com>, <americanexpressprivatepayments.com>, <cashbackamericanexpress.com>, <americanexpressgiftcard.com>, <americanexpressgiftcards.com>, <prepaidamericanexpress.com>, <americanexpressdining.com>, <americanexpressdiningcard.com>, <americanexpressgiftcheque.com>, <americanexpressgolfcard.com>, <americanexpressblack.com>, <americanexpressbluecash.com>, <americanexpressbusiness.com>, <americanexpressbusinesscard.com>, <americanexpresscheque.com>, <americanexpressaffiliate.com>, <americanexpressaffiliates.com>, <creditcardamericanexpress.com>, <americanexpresstravelfundscard.com>, <americanexpressprepaid.com>, <americanexpressprepaidcard.com>, <americanexpressgreencard.com>, <americanexpresshilton.com>, <americanexpressmembershipreward.com>, <americanexpressmembershiprewards.com>, <americanexpressmerchant.com>, <amexblack.com>, <amexdiningcard.com>, <amexgolfcard.com>, <amexgreencard.com> and <amexprepaid.com>, registered with Go Daddy Software, Inc.

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. Sir Ian Barker QC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 27, 2004; the Forum received a hard copy of the Complaint on August 30, 2004.

On August 27, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <americanexpresscashback.com>, <americanexpressprivatepayments.com>, <cashbackamericanexpress.com>, <americanexpressgiftcard.com>, <americanexpressgiftcards.com>, <prepaidamericanexpress.com>, <americanexpressdining.com>, <americanexpressdiningcard.com>, <americanexpressgiftcheque.com>, <americanexpressgolfcard.com>, <americanexpressblack.com>, <americanexpressbluecash.com>, <americanexpressbusiness.com>, <americanexpressbusinesscard.com>,<americanexpresscheque.com>, <americanexpressaffiliate.com>, <americanexpressaffiliates.com>, <creditcardamericanexpress.com>, <americanexpresstravelfundscard.com>, <americanexpressprepaid.com>, <americanexpressprepaidcard.com>, <americanexpressgreencard.com>, <americanexpresshilton.com>, <americanexpressmembershipreward.com>, <americanexpressmembershiprewards.com>, <americanexpressmerchant.com>, <amexblack.com>, <amexdiningcard.com>, <amexgolfcard.com>, <amexgreencard.com> and <amexprepaid.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 September 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 22, 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@americanexpresscashback.com, postmaster@americanexpressprivatepayments.com, postmaster@cashbackamericanexpress.com, postmaster@americanexpressgiftcard.com, postmaster@americanexpressgiftcards.com, postmaster@prepaidamericanexpress.com, postmaster@americanexpressdining.com, postmaster@americanexpressdiningcard.com, postmaster@americanexpressgiftcheque.com, postmaster@americanexpressgolfcard.com, postmaster@americanexpressblack.com, postmaster@americanexpressbluecash.com, postmaster@americanexpressbusiness.com, postmaster@americanexpressbusinesscard.com, postmaster@americanexpresscheque.com, postmaster@americanexpressaffiliate.com, postmaster@americanexpressaffiliates.com, postmaster@creditcardamericanexpress.com, postmaster@americanexpresstravelfundscard.com, postmaster@americanexpressprepaid.com, postmaster@americanexpressprepaidcard.com, postmaster@americanexpressgreencard.com, postmaster@americanexpresshilton.com postmaster@americanexpressmembershipreward.com, postmaster@americanexpressmembershiprewards.com, postmaster@americanexpressmerchant.com, postmaster@amexblack.com, postmaster@amexdiningcard.com, postmaster@amexgolfcard.com, postmaster@amexgreencard.com and postmaster@amexprepaid.com by e-mail.

A timely Response was received and determined to be complete on September 22, 2004.

An Additional Submission was received from Complainant on September 27, 2004.  An Additional Submission was received from Respondent, out of time, on October 5, 2004.  Despite the late filing of this additional submission, the Panel has decided to consider it, in the interests of justice. 

On October 1, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Sir Ian Barker as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant owns numerous trademarks for the words AMERICAN EXPRESS with or without additional words.  These marks are the subject of numerous registrations at the United States Patent and Trademark Office over a period from 1975 to the present.  Complainant has over 400 trademark registrations for AMERICAN EXPRESS in some 100 different countries worldwide.  Complainant has also a number of pending US trademark applications involving the words AMERICAN EXPRESS.  Some of its registered trademarks refer to particular services provided by Complainant such as ‘Travelers Checks’ or ‘Bank’.

Complainant began using the AMEX mark in 1969 as an abbreviation of its AMERICAN EXPRESS mark.  It holds trademark registrations for the AMEX mark at the United States Patent and Trademark Office.  In some of the registered marks, there are additional words such as in ‘AMEX LIFE ASSURANCE CO’ or a combination word like ‘AMEXMAILSERVICES’. 

Complainant began using its AMERICAN EXPRESS mark in 1850.  In that same year, it also began use of AMERICAN EXPRESS as a trade name.  Since that time, it has expanded its use of the AMERICAN EXPRESS mark and the American Express name to include a wide variety of financial services and travel related services.  Complainant started its AMEX trademark in 1969 and has expanded its use of this mark to include a wide variety of financial services and travel-related services.  Complainant uses its mark and name in connection with a wide variety of goods and services including travel and travel-related services, charge card, credit card, smart card and stored value card services, banking, investment and insurance.  These services are used by millions worldwide. 

As a result of its growth since its first use of the AMERICAN EXPRESS mark and name in 1850, Complainant is now a multi-national company with offices worldwide.  It currently has over 60 million cardholders worldwide, with cardholders and consumers of its varied services spanning the globe.  In 2003, Complainant grossed over $25.9 billion in revenue and spent over $1.45 billion in advertising worldwide.  It extensively advertises its trademark and services through television, radio and print advertising, through statement inserts, through brochures available at merchant sites and on the American Express website at <americanexpress.com>.  The above facts are verified by an affidavit from an executive of Complainant.

The AMERICAN EXPRESS mark has been adjudicated a famous mark in court decisions, including, American Express Company v. Lyons, d/b/a American Express et. al., 193 USPQ 96 (E.D. CA 1976) and American Express Co. v. South American Express Inc., 207 USPQ 893 (C.D. CA 1980).  A NAF Panel held “Complainant’s trademark is well known in the U.S. and around the world.”  (See American Express Company v. Strategic Concepts, NAF 96378, February 15, 2001.

In addition, a NAF Panel recognized “the fame of Complainant’s AMEX mark. . . .”  in American Express Company v. (This Domain is For Sale) Joshuathan Investments, Inc.  (See American Express Company v. (This Domain is For Sale) Joshuathan Investments, Inc. FA154647 (NAF June 3, 2003).

The strength of Complainant’s AMEX mark is further evidenced through its listing in both the 30^th edition of Acronyms, Initialisms & Abbreviations Dictionary and the Internet search finder <acronymfinder.com>.  This fact clearly demonstrates that AMEX is a commonly used acronym to refer to Complainant.  Complainant also submitted excerpts from news articles from a Westlaw search, for a recent 60 day period, showing that AMEX is synonymous with American Express.  Over 2,600 articles were found where American Express is referred to as “Amex” around the world.  Accordingly, Complainant submits that it is recognized as AMEX in the United States and in other jurisdictions outside the U.S. and famous around the world.

Complainant uses its AMERICAN EXPRESS trademark in connection with its website at <americanexpress.com.> which allows consumers worldwide to contact Complainant and to conduct business with it via its web site.  On average, Complainant receives approximately 15 million unique visits per month to its <americanexpress.com> website.

The 31 disputed domain names in dispute (collectively, “Domain Names”) are virtually identical to the trademarks and trade name of Complainant and/or confusingly similar to the AMERICAN EXPRESS and AMEX marks.  They contain the AMERICAN EXPRESS and AMEX marks in their entirety and merely add non-distinctive, descriptive, generic terms and/or other American Express trademarks.  The descriptive terms added to the famous AMERICAN EXPRESS trademark in the Domain Names are terms associated with American Express services (i.e., gift card, dining, merchant, business card, etc.), further creating consumer confusion.  The Domain Names at issue are likely to cause confusion given the obvious connection between the Domain Names and American Express.  Consumers could mistakenly enter any one of the 31 Domain Names when looking for the American Express website. 

The addition of a non-distinctive, descriptive or generic term does not change the overall impression of a mark.  In American Express Company v. Stealth Commerce it was held that “the domain name . . . 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 . . . .”  See American Express Company v. Stealth Commerce, NAF No. 106119, (May 8, 2002.); see also American Express Company v. Corey Pierce d/b/a 4eStrategy LLC , NAF 166008 Aug. 14, 2003 (Respondent had registered 18 domain names containing “American Express” and terms associated with Complainant, the Panel “found that this amounts to bad faith conduct”  ).

            [b.]            Respondent Has No Rights or Legitimate Interests in the Domain Name

            Respondent has no rights or legitimate interests in the 31 disputed Domain Names.  None of them is the trade name or company name of Respondent which conducts business under the name “Buy Now”.  Respondent is not a licensee of, affiliated with, or authorized by, Complainant to use its famous marks.  Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of Complainant’s marks.  Registration of the Domain Names with no legitimate rights in or connection to the “American Express” or “Amex” name demonstrates Respondent’s bad faith in attempting to capitalize on the goodwill Complainant has established in its mark and in diverting consumers to Respondent’s web sites.

[c.]            Respondent Acted in Bad Faith

Respondent should be considered as registering and using the 31 disputed Domain Names in bad faith based on the following:

The value of the 31 Domain Names rest in its appropriation of the AMERICAN EXPRESS and AMEX marks.  Complainant is the owner of hundreds of AMERICAN EXPRESS and AMEX trademark registrations in the United States and around the world.  It has used the AMERICAN EXPRESS mark continuously since 1850 and the AMEX mark since 1969, making the marks famous around the world. 

Respondent’s use of the 31 disputed Domain Names is likely to cause confusion for consumers searching the Internet and to damage the goodwill and integrity which Complainant has developed in its company name, trade names, trademarks and premier service.  Respondent has registered 31 domain names containing Complainant's famous trademark without authorization from Complainant. These registrations without permission and for no permissible purpose demonstrate bad faith.

Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the AMERICAN EXPRESS mark as to the source, sponsorship, affiliation, or endorsement of its web sites or other on-line locations or of a product or service on its websites. 

Respondent’s only motivation for registering the 31 Domain Names was to capitalize on the potential of 15 million average monthly visitors to the American Express web site who might mistakenly enter any of the Domain Names as a web address. 

Because there is no affiliation between Respondent and Complainant, Complainant has no control over the nature and quality of Respondent’s web site(s) or services; therefore, the valuable reputation of Complainant and its marks is likely to be diminished, diluted and tarnished by association with Respondent’s websites and their uncontrolled use.

Respondent’s only rationale for registering the Domain Names was primarily for the purpose of disrupting the business of another company and to capitalize and trade on the goodwill of Complainant’s marks, name and premier services.  In short, the evidence shows a bad faith attempt to reap a windfall off the fame and recognition accruing to the marks.

 

Respondent is using the disputed domain names to advertise its own search engine using domain names that are confusingly similar to Complainant’s protected AMERICAN EXPRESS mark.  Respondent’s domain names divert Internet users wishing to search under Complainant’s well-known mark to Respondent’s websites through the use of domain names that are confusingly similar to Complainant’s marks.  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 Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

B. Respondent

Respondent denies “all complaints that are brought forth against me from American Express”.  Respondent relies on an affiliate agreement with an affiliate of Complainant, sunspotweb.com (sunspot), as authority for His registration of the disputed domain names.  He says that he has generated revenue for Complainant through this agreement which entitles him, inter alia, to sign people up for American Express cards.  The document produced by him contains no provision to countenance the registration of 31 domain names, each of which incorporates a mark owned by Complainant. 

He also makes assertions about the conduct of Complainant’s lawyer which appear irrelevant to the issues to be determined.

C. Complainant’s Supplementary Submissions

Complainant referred to a clause in the Affiliate Agreement between Respondent and Sunspot which (a) specifically forbids use of the marks ‘American Express’ or ‘Amex’ as a domain name or portion of a domain name; (b) the use of any mark, name or domain name which is confusingly similar to those marks.

Complainant submitted that Respondent must have had constructive notice of Complainant’s marks when he registered the 31 domain names and therefore is deemed to have registered them in bad faith.

Complainant provided evidence that Respondent, through a related entity, had registered 4 other domain names of a similar kind to the currently disputed domain names.

D. Respondent’s Supplementary Submissions

Respondent denies that the affiliate programme did not prohibit him from “pointing my domains at this affiliate network”.  He had no bad faith because he was generating revenue for Complainant.  He denies bad faith at the time of registration of the disputed domain names and contended that Complainant could not provide it.

He did not contest Complainant’s reference to the specific provisions in the affiliate contract mentioned above, although he said “nothing in any agreement prohibited me from doing what I was doing”.  He was not more specific.

FINDINGS

(a) Complainant owns numerous registered trademarks using or incorporating the words American Express and Amex in the United States and in many other countries.  These marks were first registered years before the disputed domain names was registered by Respondent.

(b) Complainant has had for many years a worldwide reputation as a credit card operator and a provider of a variety of financial services.

(c) Complainant gave Respondent no rights to reflect its marks in any domain name.

(d) The Affiliate Agreement between Respondent and Sunspot gave Respondent no rights to register a domain name incorporating Complainant’s mark(s).  To the contrary, it expressly forbade this.

(e) Respondent must be deemed to have known of the reputation of Complainant and its marks at the date of registration of the domain names.

(f) The fact that Respondent may have been able to sign up persons with Complainant via the affiliate programme is no excuse for his registration of 31 domain names, all incorporating Complainant’s trademark and which refer, in most instances, to Complainant’s financial services or types of cards.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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

In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks.  Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combined Complainant’s mark with a generic term with 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 was 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).

It is well settled that the addition of the generic top-level domain “.com” is irrelevant in determining whether the domain names are confusingly similar to Complainant’s mark. 

Rights or Legitimate Interest

Complainant gave no right to Respondent to use its marks in a domain name.  Respondent may rely upon any of the limbs of Policy ¶ 4(c) to show some right or interest.  In the Panel’s view it has not demonstrated any of the situations under Paragraph 4(c) of the Policy.

The disputed domain names are used to redirect Internet users to a search engine offering goods and services unrelated to Complainant’s business.  Respondent’s use of the confusingly similar domain names to divert Internet users to websites offering unrelated goods and services does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum March 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements was not a bona fide offering of goods or services); see also Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); 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); see also 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).

Respondent is not commonly known by any of the disputed domain names and therefore lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 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). 

Respondent claims it has an agreement with Complainant’s third-party affiliate, Sunspotweb.com, whereby, inter alia, Respondent signed up consumers for credit cards through the affiliated party.  In essence, Respondent contends that its cooperation with the affiliate is evidence of Complainant’s knowledge of and acquiescence in Respondent’s use of the domain names.  However, the relevant agreement specifically forbade Respondent from registering a domain name, which included a mark of Complainant.  Respondent’s contention can carry no weight.  It is hard to imagine that Complainant, who enjoys a world-wide reputation for its cards and financial services, would countenance such a wholesale registration of domain names ranging over the bulk of its services.

Bad Faith

Respondent must have had actual or constructive knowledge of Complainant’s marks because the marks are registered throughout the world, including in the USPTO, and, therefore, Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  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”).  The inference is very easy to draw.

Moreover, Respondent’s disputed domain names must cause Internet users mistakenly to believe that the disputed domain names are affiliated with Complainant.  The user confusion that the domain names must cause is evidence that Respondent registered and used the domain names in bad faith.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that Respondent could make any active use of the disputed domain names without creating a false impression of association with Complainant”).  Here it is inconceivable that Respondent would have registered the 31 domain names without the knowledge of Complainant’s marks and their reputation.  Without knowledge of that reputation, it is impossible to see why the various additional words would have been added to the words of the registered marks.

The Panel infers that Respondent intends to create a likelihood of confusion to attract Internet users for commercial gain 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 ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name intentionally to attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness).

Complainant contends in its Additional Submission that Respondent, through a related entity, Innovative ideas Inc., has registered four other domain names containing Complainant’s AMERICAN EXPRESS mark with the addition of generic and descriptive terms.  Complainant asserts that Respondent’s additional registrations combined with the registration of the disputed domain names is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where Respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).

The Panel does not base its finding on this additional material because the registrant is another party and there are different names.  There is ample evidence of bad faith without it.

The sheer number of the domain names registered by Respondents and the various combinations referring to financial services offered by Complainant show a determined effort by Respondent to capitalize on the fame of Complainant.  In these circumstances, bad faith registration and use is easy to infer.

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 <americanexpresscashback.com>, <americanexpressprivatepayments.com>, <cashbackamericanexpress.com>, <americanexpressgiftcard.com>, <americanexpressgiftcards.com>, <prepaidamericanexpress.com>, <americanexpressdining.com>, <americanexpressdiningcard.com>, <americanexpressgiftcheque.com>, <americanexpressgolfcard.com>, <americanexpressblack.com>, <americanexpressbluecash.com>, <americanexpressbusiness.com>, <americanexpressbusinesscard.com>,<americanexpresscheque.com>, <americanexpressaffiliate.com>, <americanexpressaffiliates.com>, <creditcardamericanexpress.com>, <americanexpresstravelfundscard.com>, <americanexpressprepaid.com>, <americanexpressprepaidcard.com>, <americanexpressgreencard.com>, <americanexpresshilton.com>, <americanexpressmembershipreward.com>, <americanexpressmembershiprewards.com>, <americanexpressmerchant.com>, <amexblack.com>, <amexdiningcard.com>, <amexgolfcard.com>, <amexgreencard.com> and <amexprepaid.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Sir Ian Barker QC

Dated:  October 14, 2004

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