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Generic Top Level Domain Name (gTLD) Decisions |
American Express Company v. Tier One
Networks
Claim
Number: FA0404000250824
Complainant is American Express Company (“Complainant”),
represented by Dianne K. Cahill, 40 Wall Street, 19th Floor, New
York, NY 10005. Respondent is Tier One Networks (“Respondent”), 2290
Brookhaven Pass, Vista, CA 92083.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americanexpressblue.com>, registered with
Dotster Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 8, 2004; the Forum
received a hard copy of the
Complaint on April 9, 2004.
On
April 8, 2004, Dotster confirmed by e-mail to the Forum that the domain name <americanexpressblue.com>
is registered with Dotster and that Respondent is the current registrant of the
name. Dotster has verified that Respondent is bound
by the Dotster 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 12, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
May 3, 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@americanexpressblue.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 14, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable
Charles K. McCotter,
Jr. (Ret.) 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americanexpressblue.com>
domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark.
2. Respondent does not have any rights or
legitimate interests in the <americanexpressblue.com> domain name.
3. Respondent registered and used the <americanexpressblue.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
provides a wide variety of goods and services including charge card, credit
card, smart card and stored value card services,
travel and travel-related
services, and banking, investment and insurance services that are used by
millions worldwide. Complainant uses
the AMERICAN EXPRESS mark in conjunction with its business. Complainant holds several registrations for
the AMERICAN EXPRESS mark with the U.S. Patent and Trademark Office (“USPTO”),
including
Reg. Nos. 1,024,840 and 1,032,516 (registered on November 11, 1975
and February 3, 1976, respectively).
Complainant uses the term “blue” in conjunction with its promotional
offerings, such as, Blue for Music, Blue Jam Sessions, Blue from
American
Express, Blue for Students, Blue for Business, etc.
Respondent
registered the <americanexpressblue.com> domain name on October
21, 1999. Respondent uses the domain
name to direct Internet users to its website.
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.
Complainant has
established rights in the AMERICAN EXPRESS mark through registration with the
USPTO. 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).
Respondent’s <americanexpressblue.com>
domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark
because the domain name incorporates the mark and merely
adds the generic term
“blue.” The addition of the generic
term “blue” is insufficient to distinguish the domain name from Complainant’s
mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant
combined with a generic word or term); see also 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).
Furthermore, the
addition of the generic top-level domain “.com” to the mark is irrelevant in
determining whether the <americanexpressblue.com> domain name is
confusingly similar to Complainant’s mark.
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain
(gTLD) “.com”
after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to provide a Response, the Panel accepts 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 Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply
to the Complaint).
Furthermore,
Respondent has failed to contest the allegations of the Complaint; therefore,
the Panel presumes that Respondent lacks
rights and legitimate interests in the
<americanexpressblue.com> domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstance
which
could demonstrate any rights or legitimate interests in the domain name);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no
legitimate interest in the domain names).
Nothing in the
record establishes that Respondent is commonly known by the <americanexpressblue.com>
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name 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).
Complainant
asserts that Respondent uses the <americanexpressblue.com> domain
name for commercial gain. Due to
Respondent’s failure to contest this assertion, the Panel accepts the assertion
as true. Therefore, the Panel concludes
that Respondent’s use of a domain name confusingly similar to Complainant’s
mark for commercial gain
does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use
pursuant to Policy ¶ 4(c)(iii). See
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 MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to
profit using Complainant’s mark by redirecting Internet
traffic to its own website).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used a domain name confusingly similar to Complainant’s mark for
commercial gain. The Panel finds that
Respondent registered and used the <americanexpressblue.com> domain
name 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
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <americanexpressblue.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 26, 2004
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