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Generic Top Level Domain Name (gTLD) Decisions |
American Express Company v. Amexsux.com
Claim Number: FA0410000356410
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 ameXsuX.com (“Respondent”),
P.O. Box 7604, Mesa, AZ 85216-7604.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <amexsux.com>,
registered with Tucows Inc..
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.
Terry
F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
29, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 1, 2004.
On
October 29, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <amexsux.com>
is registered with Tucows Inc. and that the Respondent is the current
registrant of the name. Tucows Inc. has
verified that Respondent is bound by the Tucows 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
November 3, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 23, 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@amexsux.com by e-mail.
A
timely Response was received and determined to be complete on November 22, 2004.
Complainant
filed an Additional Submission as of November 30, 2004. Receipt of that Additional Submission was
not timely in conformity with Supplemental Rule 7, and, for that reason, would
not ordinarily
be considered. However,
Respondent elected to file an Additional Submission in response to
Complainant’s late filing. For that
reason, and, because both additional submissions contain information useful to
this decision, both additional submissions
have been considered.
On December 8, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Terry F. Peppard as Panelist
in this proceeding.
On December 16, 2004, the Panelist issued an Order
Extending Time for Rendering Decision, establishing the date for issuing this
decision
as December 27, 2004.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends, among other things:
that it
owns more than 160 trademark registrations for the mark AMEX in 83
countries;
that
it began using the mark AMEX in 1969 to identify a variety of financial and
travel related services, and that it annually spends
more than 1 billion USD to
advertise its services under that mark worldwide;
that
the mark AMEX has over many years become a commonly used acronym for American
Express Company, so that AMEX is today synonymous
with American Express;
that,
although there is no affiliation between Complainant and Respondent, the
disputed domain name, <amexsux.com>,
is sufficiently similar to Complainant’s mark that Internet search engines will
routinely list Respondent’s offending domain name
and website in response to a
search for Complainant’s mark;
that
Respondent intends to divert potential customers of Complainant to Respondent’s
website by the use of the disputed domain name,
and that registration and use
of that domain name results in both consumer confusion as to the source of that
site and tarnishment
of Complainant’s mark;
that
Respondent has not obtained registration nor filed an application to register
either of the marks AMEX or AMEXSUX;
that
although Respondent is free to comment publicly on Complainant’s services,
including by doing so on the Internet, such right
does not extend to use of a
domain name identical or confusingly similar to its mark;
that
the fair use doctrine does not apply to this case because Respondent’s website
not only contains material critical of Complainant,
but also offers for sale
merchandise, including tee-shirts, boxer shorts, mugs, baseball caps and bumper
stickers bearing the legend
“amexsux,” so that Respondent cannot claim that its
site constitutes genuine non-commercial use of the disputed domain name;
that
Respondent had notice of Complainant’s famous mark when it undertook to launch
its website using the disputed domain name, and
that it did so intentionally
and in bad faith in order to capitalize on Complainant’s good will; and
that,
as further evidence of bad faith, Respondent’s website hosts postings by third
parties to advertise for clients, including one
soliciting possible plaintiffs
in a class action lawsuit against Complainant.
B.
Respondent
Respondent
contends, among other things:
that
John Haritos is the sole owner of the subject domain name and webmaster for its
associated website;
that
the subject site is maintained as a public service to facilitate discussion,
criticism or defense of Complainant;
that
the public response to this site is such that it has, as of November 2004,
received more than 290,000 visitors and 19,000 postings;
that
Respondent has implemented safeguards to ensure that the disputed domain name
never causes any confusion that it might be associated
with American Express
Company, including that the banner at the top of the home page declares as
follows -- “This website is not
part of American Express. To visit American Express go to
http://www.americanexpress.com”; while a legend at the bottom of each page of
the same site recites
as follows – “This web site is not affiliated with
American Express.”
that,
although Respondent began offering merchandise for sale on the subject website
in July of 2004, this undertaking was terminated
on November 3, 2004, because,
in the intervening period, the sale of offered merchandise resulted in
commissions due to Respondent
of only $5.00, which sum is uncollectible owing
to the threshold payment policies of its online sales agent;
that
the Complaint in this proceeding admits that, because of the inclusion of the
pejorative term “sux” to the disputed domain name,
Internet “users, including
potential customers of Complainant, are not likely to conclude that Complainant
is the sponsor of the
identified website…”;
that
Respondent has never made any attempt to sell the disputed domain name to
Complainant or any other person; and,
that
Complainant’s motive in bringing this proceeding is not, as it alleges, to
protect its mark, but rather to stifle protected speech.
C.
Additional Submissions
Complainant
additionally contends, among other things:
that,
while Respondent has the right to criticize Complainant on the Internet, that
right does not extend to doing so while selling
merchandise and collecting
information for use in a class action lawsuit against Complainant for financial
gain by means of the disputed
domain name;
that
the identity safeguards on Respondent’s website are insufficient to mitigate
adequately the initial confusion caused to Internet
users who visit the
site;
that,
even if Respondent’s profits from the sale of merchandise on its website may
have been minimal, the site has nonetheless been
used for the purpose of
producing commercial gain; and
that
further evidence of Respondent’s bad faith registration of the disputed domain
name is found in the fact that its WHOIS registration
contact information is
false, so that a mailing of a copy of the Complaint herein to Respondent was
returned by the postal service
as “undeliverable” and with the further notation
that service was “attempted, [addressee] not known.”
Respondent
additionally contends, among other things:
that
Respondent has no intention of ever again selling merchandise on the subject
website;
that
it must be obvious to any observer from Respondent’s inclusion of the term
“sux” in the disputed domain name that its use of
the subject website is
intended exclusively as a vehicle for permitted fair use criticism of
Complainant;
that
the objective of the class action lawsuit referenced in Respondent’s website is
not to produce commercial gain, but rather only
to recover financial planning
fees paid to Complainant by customers like John Haritos and to rescind
associated financial planning
contracts; and
that
the only reason why a mailing of the Complaint in this proceeding to the
attention of Respondent was returned as undeliverable
is that Respondent
inadvertently failed to keep its WHOIS contact information current after an
address change.
FINDINGS
(1)
The domain
name registered and used by Respondent is neither identical nor confusingly
similar to the trademark in which Complainant
has rights.
(2)
Respondent
has substantial rights or legitimate interests in respect of the disputed
domain name.
(3)
The subject
domain name has been registered and used in bad faith.
Accordingly,
Complainant cannot prevail in this proceeding.
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 the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
§
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
§
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
§
the domain
name has been registered and is being used in bad faith.
Complainant has widely registered its
well-known mark, and it is firmly established that such registration creates a
presumption that
the mark is inherently distinctive and has acquired secondary
meaning. See, e.g. , Men’s Warehouse, Inc. v. Wick, FA 117861
(Nat. Arb. Forum, Sep. 16, 2002).
Respondent has the burden of refuting this presumption. See Janus Int’l Holding Co. v. Rademacher
D2002-0201 (WIPO Oct. 3, 2002). This
Respondent has failed to do.
The only thing
that distinguishes Complainant’s mark from the disputed domain name is the
addition by Respondent of the pejorative
suffix “sux” to that name (the suffix
“sux,” taken in context, can only be understood to be a colloquial diminutive
of the English
slang term “sucks.”)
Because of the presence of this suffix, Complainant’s mark and the
disputed domain name are not identical.
A question remains however, as to whether they are confusingly similar
within the meaning of Policy ¶ 4(a)(i).
There is some authority for the
proposition that appending such a pejorative term to a domain name does not
defeat a claim of confusing
similarity.
See, e.g.: Full Sail, Inc. v. Spevack, D2003-0502 (WIPO Oct. 3, 2003), and
cases cited therein. However, those
authorities that subscribe to this view make clear that the issue is highly
fact-specific and often turns on such factors
as the intent of the
respondent. On the peculiar facts here
presented, it cannot fairly be said that the Internet public is likely to be
confused by Respondent’s use
of the disputed domain name. The name itself unmistakably indicates that
it is intended not to suggest affiliation with Complainant, but rather to serve
as a platform
for public criticism of the mark holder. See, e.g., Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24,
2000); see also E.& J. Gallo
Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000).
Moreover, any Internet user who
inadvertently calls up Respondent’s website quickly meets banners on each page
plainly reciting the
lack of affiliation.
Thus any doubt as to Respondent’s intentions is properly resolved
against Complainant on this issue.
For these
reasons, Complainant has not met its burden of proof as to Policy ¶ 4(a)(i).
Policy ¶ 4(c)
recites three nonexclusive means by which a fact-finder may assess the question
whether Respondent has any rights or
legitimate interests in respect of the
disputed domain name. One of these (¶ 4(c)(ii)) inquires whether Respondent has been
commonly known by the subject domain name.
That element has no application here.
Another subpart (¶ 4(c)(i)) inquires
whether Respondent has used the subject domain name in connection with a bona
fide offering of goods or services.
That element is of interest because there is evidence that, for a time,
Respondent offered for sale on its website merchandise, including
tee-shirts,
boxer shorts, mugs, baseball caps and bumper stickers, bearing the legend
“amexsux.”
Notably, the
language of ¶
4(c)(i) speaks to the timeframe before Respondent had notice of the pending
proceeding. In this instance, it is
undisputed that Respondent commenced commercial sale of merchandise on its
website in July of 2004, and that
this proceeding was commenced months later. Complainant does not argue that Respondent’s
offering of such goods was other than bona fide within the meaning of the
Policy. It therefore appears that
Respondent may find comfort under Policy ¶ 4(c)(i).
This
conclusion could, and, in other circumstances, would end inquiry under ¶ 4(c). However, Respondent has both ceased its
commercial activity on the subject website and disavowed any intention to
return to it. In addition, Respondent
insists that its primary (and now exclusive) purpose in operating that website
has at all times been to exercise
its “fair use” right to criticize
Complainant. The parties have therefore invested in an extended discussion of
the applicability
of the remaining subpart of Policy ¶ 4(c), that being ¶
4(c)(iii). The focus of that subpart is
whether Respondent is making legitimate noncommercial or fair use of the domain
name, without intent
for commercial gain either to divert consumers from
trafficking with Complainant or to tarnish Complainant’s mark.
Under this heading, timing is important,
because the language of the drafters is in the present tense (“You are
making….”). This suggests that
Respondent’s ability to take shelter under Policy ¶ 4(c)(iii) is
dependent upon the circumstances existing as of the time of filing of the
Complaint. The facts before this Panelist demonstrate
that, for months leading up to the date of filing of the Complaint, Respondent
was actively
engaged in commercial use of the website associated with the
disputed domain name. That his efforts
were ultimately unsuccessful does not change this. Respondent was a marketer, even if an ineffective one. The same is true of Respondent’s assertion
that it no longer uses the subject site to attempt to sell merchandise to the
Internet
public. If it was so engaged
on the date of filing, its commercial intent is fixed at that point in time,
and it matters not that Respondent
changed its mind soon after this Complaint
was filed.
Nonetheless, an inquiry into Respondent’s
“intent” does not end with a determination that it was, at least in part, commercial
in
character. Rather, under the
language of Policy ¶ 4(c)(iii),
it must also be determined whether that intent was to “misleadingly divert
consumers or to tarnish the trademark or service mark
at issue.” If Respondent did entertain such a malevolent
intent, it can find no shelter under Policy ¶ 4(c)(iii).
It may be noted
in this connection that Policy ¶
4(c)(iii) evidently contemplates a species of fair use which may have a
profit-making motive but is still permissible,
so long as the prescribed ill
motive is not present, the critical determinant being whether the scrutinized
activity is aimed at
diminishing the mark holder’s potential revenues or asset
values.
It is also important, therefore, to
reflect that while Complainant sells financial and travel services,
Respondent’s fleeting and
ill-fated commercial venture involved the marketing
of such items as tee-shirts, boxer shorts, mugs, baseball caps and bumper
stickers. This being so, it is
difficult to imagine a meaningful sense in which it might be said that
Respondent was, even if only briefly and
ineffectually, in the business of
diverting Complainant’s customers.
Moreover, inasmuch as Respondent’s wares were both dramatically
different from those of Complainant’s and targeted at a unique audience
(i.e.,
those disaffected with Complainant), it is likewise difficult to imagine that
Respondent’s intent was to tarnish Complainant’s
mark. Rather, having in mind that all of
Respondent’s goods bore the legend “amexsux,” Respondent’s driving motive
appears to have been
to publish critiques of an enterprise whose image had, in
Respondent’s view, already been tarnished by Complainant’s marketplace
behavior
(whether or not that view was at all justified).
Finally, Complainant argues that
Respondent’s hosting of materials on its site aimed at recruiting possible
plaintiffs for a class
action lawsuit against Complainant is evidence that
Respondent used the disputed domain name for commercial gain in contravention
of the strictures implicit in Policy ¶ 4(c)(iii). Respondent, in its defense, contends that the object of
Respondent’s owner in posting the allegedly offending materials was not to
acquire commercial gain, but merely to recover through the legal system, for
himself and others, professional fees paid to Complainant
in connection with
its financial services business.
Complainant’s
argument on this point is unpersuasive for two reasons. First, legal action to recover financial
restitution cannot fairly be said to constitute an attempt to procure “commercial
gain” within
the meaning of the Policy.
Secondly, hosting information about a publicly filed legal action is in
the nature of fair use free speech permitted under Policy
¶ 4(c)(iii). See, e.g., Geobra Brandstätter GmbH v. Only Kids Inc. D2001-0841 (WIPO Sep.
20, 2001; see also Navigator
Yachts, Inc. v. TD Curran, FA 226452 (Nat. Arb. Forum Mar. 4, 2004).
For all of these reasons, Respondent’s
right of fair use prevails. Complainant has therefore failed to establish that
Respondent has
no legitimate rights or interests in respect of the disputed
domain name.
In order to
satisfy the requirements of the final prong of Policy ¶ 4(a),
(subpart 4(a)(iii)) Complainant must demonstrate that Respondent has both registered
and is using the disputed domain name
in bad faith. A finding of either bad
faith registration or bad faith use, without the other, will not suffice.
Policy
¶ 4(b) sets out four possible bases upon which a fact-finder might evaluate the
question of bad faith registration and use
of a contested domain name. None of those possible bases is squarely
addressed in the facts here presented.
However, the recitations of Policy ¶ 4(b) are declared in the Policy to
be non-exclusive. A fact-finder may,
therefore, inquire into other grounds upon which bad faith might be
established. Pertinent examples include
those addressed below.
Complainant’s mark is well known and has
been widely registered around the world.
It has often been held that longstanding and extensive use and
widespread registration of a complainant’s mark may be taken as evidence
that a
respondent must have known of that mark when its offending domain name was
created. See Dell Computer Corp. v. MTO C.A.,
D2002-0363 (WIPO Jul. 5, 2002); Pfizer,
Inc. v. Sangwoo Cha, D2003-0256 (WIPO Jun. 19, 2003). This is sufficient to establish that
Respondent registered the subject domain name in bad faith.
Further inquiry is required to determine
whether Respondent has also used the same domain name in bad faith. Evidence on this point includes Respondent’s
failure to keep current its WHOIS contact information through the date of
filing of the
Complaint in this proceeding.
See Land Sachsen-Anhalt v.
Skander Bouhaouala, D2002-0273 (WIPO Jul. 8, 2002). Likewise relevant is Respondent’s use of the
subject domain name to offer commercial merchandise for sale on a site
ostensibly devoted
exclusively to critical fair use, coupled with the guilty
knowledge implicit in Respondent’s abrupt cessation of that commercial
activity
immediately upon the filing of the instant Complaint.
It must be concluded, therefore, that
Respondent has both registered and used the subject domain name in bad faith.
DECISION
The
facts before this Panelist demonstrate that Respondent has behaved badly in its
registration and use of the disputed domain name.
However, bad faith on the
part of Respondent is but one of three distinct elements of proof that
Complainant must establish in order
to prevail in this proceeding. Complainant
having failed to establish two of the three essential elements required to be
proven under
the ICANN Policy, the relief requested must be, and it is,
therefore,
DENIED.
Terry F. Peppard, Panelist
Dated: December 27, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/1524.html