DECISION

American Express Company v. vsi

Claim Number:  FA0405000269348

PARTIES

Complainant is American Express Company (“Complainant”), represented by Dianne K. Cahill, 40 Wall Street, 19th Floor, New York, NY 10005.  Respondent is vsi (“Respondent”), ABC Main Street, Nevada City, CA 95959.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americanexpresstravel.com>, registered with Network Solutions, 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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 10, 2004; the Forum received a hard copy of the Complaint on May 12, 2004.

On May 17, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <americanexpresstravel.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 May 18, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 7, 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@americanexpresstravel.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 June 17, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <americanexpresstravel.com> domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark.

2. Respondent does not have any rights or legitimate interests in the <americanexpresstravel.com> domain name.

3. Respondent registered and used the <americanexpresstravel.com> 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 disputed domain name on January 6, 1999.  Respondent was using the domain name to redirect Internet users to a website that features advertising for a variety of goods and hosts a search engine to link viewers to a variety of websites, including travel websites.  Currently, the domain name is listed as unavailable.

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 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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the AMERICAN EXPRESS mark through trademark registrations with the United States Patent and Trademark Office and through continued use of its mark in commerce over the last 154 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 in its entirety and simply adds the generic or descriptive term, “travel.”  The mere addition of a generic or descriptive word 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

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 domain name that contains in its entirety Complainant’s 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 rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also 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).

Moreover, where Respondent does not respond, the Panel may accept reasonable allegations and inferences in the Complaint as true.  See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also 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 wholly appropriating Complainant’s mark and was redirecting Internet users to a website that features advertising for a variety of goods and hosts a search engine to link viewers to a variety of websites, including sites that offer the same type of services that Complainant offers online.  The Panel finds that this use of a domain name that is confusingly similar to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See U.S. Franchise Sys., Inc. v. Howell III, 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 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

Nothing in the record, including the WHOIS domain name registration information, suggests that Respondent is commonly known by the domain name or by Complainant’s mark 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

 

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

Registration and Use in Bad Faith

Respondent intentionally registered the <americanexpresstravel.com> domain name that contains in its entirety Complainant’s well-known mark.  Respondent’s domain name diverts Internet users seeking Complainant’s services to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s AMERICAN EXPRESS mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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 to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); 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); 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)).

Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s well-known registered mark in its entirety and deviates only with the addition of a generic or descriptive term, suggests that Respondent knew of Complainant’s rights in the AMERICAN EXPRESS mark.  Furthermore, Complainant works in the travel industry and the generic or descriptive term incorporated in the domain name describes one of Complainant’s core businesses.  Thus, the Panel finds that Respondent likely chose the <americanexpresstravel.com> domain name based on the distinctive and well-known qualities of Complainant’s mark.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)  (finding that given the long use and fame of Complainant’s mark, Respondent’s conduct is evidence of bad faith).

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 <americanexpresstravel.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  July 1, 2004

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