American Express Marketing & Development Corp. v. Crown Insurance Partners
Claim Number: FA0904001255638
Complainant is American
Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill, of American Express
Marketing & Development Corp.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <american-express-gift-cards.com> and <amex-gift-cards.com>, registered with Godaddy.com, 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 electronically on April 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2009.
On April 3, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <american-express-gift-cards.com> and <amex-gift-cards.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 April 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 27, 2009 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@american-express-gift-cards.com and postmaster@amex-gift-cards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <american-express-gift-cards.com> and <amex-gift-cards.com> domain names are confusingly similar to Complainant’s AMERICAN EXPRESS GIFT mark.
2. Respondent does not have any rights or legitimate interests in the <american-express-gift-cards.com> and <amex-gift-cards.com> domain names.
3. Respondent registered and used the <american-express-gift-cards.com>and <amex-gift-cards.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Express Marketing & Development Corp., owns numerous registrations for the AMERICAN EXPRESS and AMEX marks with various governmental trademark authorities worldwide, including with the United States Patent and Trademark Office (“USPTO”). Additionally, Complainant has registered its AMERICAN EXPRESS GIFT mark with the USPTO (Reg. No. 3,357,397 issued December 18, 2007). Complainant utilizes its marks in connection with its credit and gift card products and services.
Respondent registered the <american-express-gift-cards.com> and <amex-gift-cards.com> domain names between November 22 and 23, 2008. The <american-express-gift-cards.com> domain name does not resolve to an active website; whereas the <amex-gift-cards.com> domain name resolves to a website that contains information on Complainant’s gift card products and advertises such products as well as those of Complainant’s competitors.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
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.
The Panel finds that Complainant’s registration of the
AMERICAN EXPRESS GIFT mark with the USPTO adequately demonstrates Complainant’s
rights in the mark under Policy ¶ 4(a)(i).
The <american-express-gift-cards.com> domain name contains the AMERICAN EXPRESS GIFT mark, while adding hyphens, the descriptive term “cards,” and the generic top-level domain “.com.” The <amex-gift-cards.com> domain name makes the same aforementioned changes, but shortens the “AMERICAN EXPRESS” element of the mark to Complainant’s commonly-used abbreviation “amex.” The Panel finds that the additions of hyphens and the generic top-level domain “.com” are irrelevant under the Policy. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Moreover, the term “cards” obviously relates to Complainant’s gift card operations, thus heightening the resulting confusing similarity between the disputed domain names and the mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Finally, the shortening of the “AMERICAN EXPRESS” element to the well-known contraction “amex” creates no distinction of merit under the Policy, especially where Complainant has undertaken trademark protection of such an abbreviation. See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”). Therefore, the Panel finds that both disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant has set forth sufficient allegations supporting a prima facie case, and thus Respondent bears the burden of demonstrating that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
There is no evidence in the record by which the Panel may
conclude that Respondent is commonly known by either or both of the disputed
domain names. Complainant contends that
Respondent is not authorized to use any of Complainant’s marks, and the WHOIS
information lists Respondent as “Crown Insurance Partners.” Therefore, the Panel finds that Respondent
lacks rights and legitimate interests in the disputed domain names under Policy
¶ 4(a)(i). See M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the
respondent was not commonly known by the <cigaraficionada.com> domain
name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence
in the record); see also
The <amex-gift-cards.com> domain name resolves
to a website that contains information on Complainant’s gift card products and
advertises such products as well as those of Complainant’s competitors. The misappropriation of Complainant’s mark in
a disputed domain name to further commercial gain through the promotion of not
only Complainant’s products and services, but those of its competitors as well,
fails as a bona fide offering of goods or services under Policy ¶
4(c)(i) and as a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the
<tesco-finance.com> domain name in connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use by maintaining a
web page with misleading links to the complainant’s competitors in the
financial services industry); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr.
18, 2007) (holding that the respondent’s use of the contested domain name to
maintain a commercial website with links to the products and services of the
complainant’s competitors did not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The <american-express-gift-cards.com> domain
name does not resolve to an active website.
There is no proposed alleged use of the disputed domain name in the record,
and without such evidence of demonstrable preparations to use the disputed
domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use, the Panel finds that Respondent
lacks rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb.
Forum July 12, 2006) (finding that the respondent’s non-use of the disputed
domain names demonstrates that the respondent is not using the disputed domain
names for a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii)); see also Boeing Co. v. Bressi,
D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests
where the respondent has advanced no basis on which the panel could conclude
that it has a right or legitimate interest in the domain names, and no
commercial use of the domain names has been established).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel finds that the use of the <amex-gift-cards.com>
domain name to provide advertisements for the products and services of
Complainant’s competitors demonstrates that Respondent has intentionally sought
to disrupt Complainant’s business. This
constitutes evidence of Respondent’s bad faith registration and use under
Policy ¶ 4(b)(iii).
See
Moreover, Respondent has created a likelihood of confusion as to Complainant’s affiliation and endorsement of the <amex-gift-cards.com> domain name through Respondent’s provision of commercial competing advertisements. The Panel therefore finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Finally, the failure of Respondent to make an active use of
the <american-express-gift-cards.com> domain name since registration
evidences Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii)
with respect to that disputed domain name.
See DCI S.A. v. Link Commercial
Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s
[failure to make an active use] of the domain name satisfies the requirement of
¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug.
30, 2000) (finding that the respondent made no use of the domain name or
website that connects with the domain name, and that [failure to make an active
use] of a domain name permits an inference of registration and use in bad
faith).
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 <american-express-gift-cards.com>and <amex-gift-cards.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 13, 2009
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