DECISION

American Express Company v. Stephen B. McWilliam

Claim Number: FA0405000268423

PARTIES

Complainant is American Express Company (“Complainant”), represented by Dianne K. Cahill, 200 Vesey Street, New York, NY 10285.  Respondent is Stephen B. McWilliam (“Respondent”), 101 NE Third Avenue, Suite 1270, Fort Lauderdale, FL 33301.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americanexpresstravel.us>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 6, 2004; the Forum received a hard copy of the Complaint on May 7, 2004.

On May 11, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <americanexpresstravel.us> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name.  Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On June 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 21, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

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 June 25, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. The domain name registered by Respondent, <americanexpresstravel.us>, is confusingly similar to Complainant’s AMERICAN EXPRESS mark.

2. Respondent has no rights to or legitimate interests in the <americanexpresstravel.us> domain name.

3. Respondent has registered and used the <americanexpresstravel.us> domain name in bad faith.

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

FINDINGS

Complainant, American Express Company, is a diversified company specializing in travel-related services, global network services, financial advising, and banking. 

Complainant holds numerous registrations for the AMERICAN EXPRESS mark with the United States Patent and Trademark Office (Reg. No. 1,024,840 issued November 11, 1975 for computerized credit authorization, Reg. No. 1,032,516 issued February 3, 1976 for financial services for travelers, Reg. No. 1,178,455 issued November 17, 1981 for charge card services, Reg. No. 1,230,270 issued March 8, 1983 for charging purchases at subscribing establishments, Reg. No. 1,288,141 issued July 31, 1984 for traveler’s cheque services, Reg. No. 1,622,856 issued November 13, 1990 for charge card services and travel agency services for business travel, Reg. No. 1,847,678 issued August 2, 1994 for periodicals dealing with travel, dining and hotels, and Reg. No. 1,958,496 issued February 27, 1996 for traveler’s cheque services).

Complainant began using the AMERICAN EXPRESS mark in 1850.  Since that time, Complainant has expanded its use of the mark to include a wide variety of financial services and travel-related services.  Complainant is a multi-national company with offices worldwide and has become the largest travel agency in the world.  In 2003, Complainant grossed over $25.9 billion in revenue and spent over $1.45 billion in advertising worldwide. 

Complainant’s main website is operated at the <americanexpress.com> domain name.

Respondent registered the <americanexpresstravel.us> domain name on December 3, 2003.  Currently, the domain name is listed as unavailable. 

Complainant corresponded with Respondent requesting transfer of the disputed domain name.  Respondent offered to sell the domain name to Complainant for $500.

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Complainant established with extrinsic proof in this proceeding that it has rights to the AMERICAN EXPRESS mark as evidenced by its registration with the United States Patent and Trademark Office and its use in commerce since 1850.  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 <americanexpresstravel.us> domain name is confusingly similar to the AMERICAN EXPRESS mark because the domain name incorporates Complainant’s mark in its entirety and simply adds the generic or descriptive term, “travel” and the country-code “us.”  The mere addition of a generic or descriptive word and a country-code to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  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 AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark).

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

Rights or Legitimate Interests

Complainant has alledged that Respondent has no rights or legitimate interests in the <americanexpresstravel.us> domain name, which wholly contains Complainant’s AMERICAN EXPRESS mark.  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 name.  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 such 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).

Furthermore, 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 was not authorized or licensed by Complainant to register or use a domain name that incorporates the AMERICAN EXPRESS mark.  Nothing in the record shows that Respondent holds a trademark pursuant to Policy ¶ 4(c)(i) or is commonly known by the <americanexpresstravel.us> domain name pursuant to Policy ¶ 4(c)(iii).  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(i) and (iii).  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 UDRP ¶ 4(c)(iii) 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). 

In addition, Respondent’s misleading domain name tarnishes Complainant’s mark by redirecting Internet users to a website that has not yet been developed.  Respondent’s use of the disputed domain name that takes advantage of Complainant’s well-known mark does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

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

Registration and Use in Bad Faith

Complainant has established that its AMERICAN EXPRESS mark is famous worldwide and registered in several countries.  Registration of a domain name confusingly similar to a mark, despite knowledge of another’s rights, is evidence of bad registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here 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. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Complainant contends that Respondent’s offer to transfer the disputed domain name registration for $500 demonstrates Respondent’s bad faith registration and use of the domain name.  The Panel finds that Respondent’s offer intimates that the domain name was registered primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name, which evidences registration and use in bad faith under Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). 

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

DECISION

Complainant having established all three elements under the usTLD Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <americanexpresstravel.us> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated: July 6, 2004

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