American Express Company v. MustNeed.com
Claim
Number: FA0404000257901
Complainant is American Express Company (“Complainant”),
represented by Dianne K. Cahill, 200 Vesey Street, 49th Floor, New
York, NY 10285. Respondent is MustNeed.com (“Respondent”), P.O. Box
3506, Taipei, Taiwan 100-00.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <amextravel.com>, registered with Moniker
Online Services, 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 21, 2004; the Forum received a hard copy of the
Complaint on April 22, 2004.
On
April 21, 2004, Moniker Online Services, Inc. confirmed by e-mail to the Forum
that the domain name <amextravel.com> is registered with Moniker
Online Services, Inc. and that Respondent is the current registrant of the
name. Moniker Online Services, Inc. has verified that Respondent is bound by
the Moniker Online Services, 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 27, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 17, 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@amextravel.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 26, 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 <amextravel.com>
domain name is confusingly similar to Complainant’s AMEX mark.
2. Respondent does not have any rights or
legitimate interests in the <amextravel.com> domain name.
3. Respondent registered and used the <amextravel.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American Express Company, is in the business of providing a wide variety of
goods and services including travel, rewards programs, charge card, credit
card, smart card and stored value card services and banking services.
Complainant
holds over 160 trademark registrations worldwide for the AMEX mark, including a
trademark registered with the United States Patent and Trademark Office on July
14, 1981 (Reg. No. 1,161,278).
Complainant has
used the AMEX mark continuously and extensively since 1969 in connection with
its financial and travel related services.
Complainant extensively advertises its trademark and services through
television, radio, print advertising, and a variety of other means. Currently, Complainant has over 60 million
cardholders worldwide.
Complainant’s
main website is operated at the <americanexpress.com> domain name.
Respondent
registered the <amextravel.com> domain name August 30, 2001. Respondent is using the domain name to offer
and advertise travel-related products and services.
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 with extrinsic proof in this proceeding that it has rights in the
AMEX mark through registration with the United States Patent and Trademark
Office and by continuous use of its mark in commerce for the last thirty-five
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 AMEX 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 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); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat.
Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name
is confusingly similar to Complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does not take the disputed domain name out of the realm of
confusing similarity).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in a domain name
that contains 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 such rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). 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 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); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that under certain circumstances the mere
assertion by Complainant that Respondent has no right or legitimate interest is
sufficient to shift the burden of proof to Respondent to demonstrate that such
a right or legitimate interest does exist).
Moreover, where
Complainant makes a 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 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).
Respondent is
using the <amextravel.com> domain name to direct Internet users to
a website that provides a directory of commercial websites which provide
travel-related services and products, the same type of goods and services that
Complainant offers. Respondent’s use of
a domain name confusingly similar to Complainant’s mark to direct users to a
commercial website that offers goods that compete with those in the scope of
Complainant’s AMEX mark is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v.
Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s
use of the disputed domain name to solicit pharmaceutical orders without a
license or authorization from Complainant does not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i)); see also Nike,
Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona
fide” offering of goods or services where Respondent used Complainant’s mark
without authorization to attract Internet users to its website, which offered
both Complainant’s products and those of Complainant’s competitors).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <amextravel.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because Respondent is not commonly known by the disputed
domain name or using the domain name in connection with a legitimate or fair
use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain name for commercial gain. Respondent is using the disputed domain name to advertise
travel-related products and services.
The Panel finds that, by creating confusion around Complainant’s mark,
Respondent is attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark to
sell goods similar to Complainant’s goods and services is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Hewlett Packard Co. v. Full Sys.,
FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and
used the domain name primarily for the purpose of disrupting the business of
Complainant by offering personal e-mail accounts under the domain name
<openmail.com> which is identical to Complainant’s services under the
OPENMAIL mark).
Respondent intentionally registered a domain name that contains in its
entirety Complainant’s well-known mark and did so for Respondent’s commercial
gain. Respondent’s domain name directs
Internet users who seek Complainant’s AMEX mark to Respondent’s commercial
website through the use of a domain name that is confusingly similar to
Complainant’s mark. Furthermore,
Respondent is unfairly benefiting from the goodwill associated with
Complainant’s AMEX 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).
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 <amextravel.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
June 7, 2004
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