American Express Marketing & Development Corp. v. NADEEM QADIR
Claim Number: FA1610001696978
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill of American Express Marketing & Development Corp., New York, USA. Respondent is NADEEM QADIR (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanexpess.com>, registered with eNom, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2016; the Forum received payment on October 6, 2016.
On October 6, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <americanexpess.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@americanexpess.com. Also on October 7, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant contends as follows:
Complainant, American Express Marketing & Development Corp., is a multi-national company that uses the AMERICAN EXPRESS mark to provide services including card, travel, banking, and insurance services to millions of consumers worldwide.
Complainant has rights in the AMERICAN EXPRESS mark based on multiple registrations with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies around the world (e.g., Reg. No. 1,024,840, Registered Nov. 11, 1975).
Respondent’s <americanexpess.com> is confusingly similar as it incorporates the AMERICAN EXPRESS mark in its entirety, save the omission of the spacing between words and the letter “R” in EXPRESS.
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent authorized to use the mark in the disputed domain name. Respondent’s domain name addresses a log-in page that diverts users to Respondent’s web sites, indicating a lack of rights or legitimate interests in the disputed domain name.
Respondent’s registration and use of the domain name is in bad faith because it is an attempt to confuse and attract Internet users for commercial gain in connection with a fraudulent scheme. Respondent had constructive notice of the AMERICAN EXPRESS mark due to the famous nature of the mark, and selected a virtually identical domain name to capitalize on the goodwill of Complainant’s mark. Further, the domain name’s inclusion of only the mark with a typographical error constitutes typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the AMERICAN EXPRESS mark through its registration of such mark with the USPTO and also through its other registrations worldwide.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent uses the at-issue domain name to address a login page.
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."
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.
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(f), 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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the AMERICAN EXPRESS mark with the USPTO is sufficient to demonstrate Complainant’s rights in such mark under the POLICY. It is irrelevant that Respond may operate outside of the trademark registrar’s jurisdiction. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The at-issue <americanexpess.com>domain name contains Complainant’s entire AMERICAN EXPRESS trademark without its space and less its “r”. The domain name concludes with a necessary top level domain name, here “.com”. These slight differences between Respondent’s domain name and Complainant’s AMERICAN EXPRESS mark are insufficient to differentiate one from the other for the purposes of the Policy. Therefore, the Panel finds that the <americanexpess.com>domain name is confusingly similar to Complainant’s AMERICAN EXPRESS trademark under Policy ¶ 4(a)(i). See Wells Fargo & Co. v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Nadeem Qadir” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <americanexpess.com>domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also, Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Although not explicitly set out in the Complaint, the circumstances at large indicate that Respondent has failed to make a bona fide offering of goods or services, or any non-commercial or fair use of the at-issue domain name. To wit, Respondent registered a domain name that is nearly identical to Complainant’s famous AMERICAN EXPRESS trademark. The fact of such registration, without more, demonstrates that Respondent must have registered the domain as part of a scheme to defraud consumers into believing its confusingly similar domain name is sponsored by Complainant when in fact it is not. Using the domain name in such manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s domain name was registered and used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and interests, Respondent’s purpose in registering the confusingly similar <americanexpess.com> domain name was undoubtedly to use the domain name in furtherance of a scheme to defraud internet users. The Panel cannot conceive of a good faith purpose to register a domain name which is nearly identical to Complainant’s famous mark and Respondent’s failure to respond to the Complaint is a tacit admission of Respondent’s bad faith intentions regarding <americanexpess.com>. Therefore, Respondent’s registration of Complainant’s famous trademark laden domain name, absent any evidence showing there to be some good faith intention on the part of the Respondent, demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Gilmour v. Cenicolla, D2000-1459 (WIPO Dec. 15, 2000) (finding bad faith registration of the <davidgilmour.com> domain name where the respondent knew of the complainant’s fame long before the registration of the domain name and registered the name in order to “trade off that reputation by creating a false association between that domain name and the Complainant’s trademark”).
Additionally, Respondent has engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the intentionally malformed string in a domain name. The conniving registrant wishes and hopes that internet users will inadvertently type the malformed trademark or read it and believe the domain name is legitimately associated with the target trademark, here American Express. Through the typosquatted domain name wayward internet users are directed to a web presence controlled by the confusingly similar domain name’s registrant, here Respondent. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally and as mentioned above, is it inconceivable that Respondent did not know of Complainant’s well known trademark at the time it registered the <americanexpess.com> domain name. Respondent’s prior knowledge of Complainant's trademark in itself indicates that Respondent registered and used the at-issue domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanexpess.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 8, 2016
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