American Express Company v. Fang Suhendro
a/k/a American Express Indonesia
Claim Number: FA0211000129120
PARTIES
Complainant
is American Express Company, New
York, NY, USA (“Complainant”) represented by Dianne K. Cahill, of American
Express Company. Respondent is Fang Suhendro a/k/a American Express
Indonesia, Jakarta, INDONESIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <americanexpressrewards.com>,
registered with OnlineNIC.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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 4, 2002; the Forum received a hard copy of the
Complaint on November 4, 2002.
On
November 14, 2002, OnlineNIC.com confirmed by e-mail to the Forum that the
domain name <americanexpressrewards.com>
is registered with OnlineNIC.com and that Respondent is the current registrant
of the name. OnlineNIC.com has verified
that Respondent is bound by the OnlineNIC.com 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 14, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 4, 2002 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@americanexpressrewards.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
December 18, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed John J. Upchurch 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
The
<americanexpressrewards.com>
domain name is confusingly similar to Complainant's AMERICAN EXPRESS mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
FINDINGS
Complainant has used its AMERICAN EXPRESS
mark since 1850. Complainant holds numerous registrations for its AMERICAN
EXPRESS mark with the United States Patent and Trademark Office including
Registration Numbers 738,813; 1,024,840; 1,032,516; and 2,050,430. Complainant also holds trademark
registrations in Indonesia including Registration Numbers 306,592; 306,641;
306,643; and 306,645, Respondent’s place of domicile. Complainant uses the mark in connection with its banking, travel
and credit card services throughout the world.
Complainant operates a website that it uses to promote its services at
<americanexpress.com>.
Respondent registered the disputed domain
name on January 15, 2002. Respondent is
using the disputed domain name in order to display a website with links to
various merchandisers throughout the Internet.
Respondent does not have a license or permission from Complainant to use
the AMERICAN EXPRESS mark.
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(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 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 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 registration with the United States
Patent and Trademark Office, as well as its trademark registrations in
Indonesia.
Respondent’s <americanexpressrewards.com>
domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark
because it merely adds the generic term “rewards” to the end of Complainant’s
mark. The addition of “rewards” does
not add any distinctive features because it could easily be associated with
Complainant’s business, and Complainant’s AMERICAN EXPRESS mark is still the
dominant feature of the disputed domain name.
See Body Shop Int’l PLC v.
CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the
domain name <bodyshopdigital.com> is confusingly similar to Complainant’s
THE BODY SHOP trademark); see also Quixtar
Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000)
(finding that because the domain name <quixtar-sign-up.com> incorporates
in its entirety Complainant’s distinctive mark, QUIXTAR, the domain name is
confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response. Therefore, the Panel
is permitted to make reasonable inferences in favor of Complainant and accept
Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); 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”).
Furthermore, based on Respondent’s
failure to respond, it is presumed that Respondent lacks all rights and
legitimate interests in the disputed domain name. See 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 in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interest in the domain name because Respondent never submitted a Response nor
provided the Panel with evidence to suggest otherwise).
Respondent is using the disputed domain
name in order to provide links to various merchandisers throughout the
Internet. Respondent is using
Complainant’s mark to attract Internet users to this website, and therefore is
not using the domain name in connection with 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 Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet traffic is not
a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks).
Based on the fame of Complainant’s mark
it would be difficult for Respondent to establish that it is commonly known as
AMERICAN EXPRESS REWARDS or <americanexpressrewards.com>. Respondent has failed to come forward with
any evidence to establish this fact, and therefore the Panel may infer that it
is not commonly known by the disputed domain name and that Respondent lacks
rights and legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one
“would be hard pressed to find a person who may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark); see also Victoria’s Secret
v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient
proof that Respondent was not commonly known by a domain name confusingly
similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s
well-established use of the mark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent is using the disputed domain
name to attract Internet users to its own website. This website features links to various online vendors. It can be inferred that Respondent is making
a profit from the Internet traffic it directs to these vendors. This type of behavior, using a confusingly
similar domain name to cause Internet user confusion for commercial gain, is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, 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)); see also State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website).
Based on the fame of Complainant’s mark,
and the fact that Respondent is using the disputed domain name in order to
attract Internet users to its website, it can be inferred that Respondent had
actual knowledge of Complainant’s mark when it registered the disputed domain
name. Registration of an infringing
domain name, despite actual knowledge of Complainant’s rights is evidence of
bad faith registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
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 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).
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 the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <americanexpressrewards.com>
be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated:
December 30, 2002
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