DECISION

American Express Company v. Mo Askari a/k/a USUK.org

Claim Number:  FA0304000155131

PARTIES

Complainant is American Express Company, New York, NY (“Complainant”) represented by Dianne K. Cahill, of American Express Company. Respondent is Mo Askari a/k/a USUK.org, Phoenix, AZ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <opensmallbusiness.com> and <opensmallbusiness.info>, registered with Innerwise, Inc. d/b/a Itsyourdomain.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 April 18, 2003; the Forum received a hard copy of the Complaint on April 18, 2003.

On May 2, 2003, Innerwise, Inc. d/b/a Itsyourdomain.Com confirmed by e-mail to the Forum that the domain names <opensmallbusiness.com> and <opensmallbusiness.info> are registered with Innerwise, Inc. d/b/a Itsyourdomain.Com and that Respondent is the current registrant of the names. Innerwise, Inc. d/b/a Itsyourdomain.Com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.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 May 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 22, 2003 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@opensmallbusiness.com and postmaster@opensmallbusiness.info 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 4, 2003, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <opensmallbusiness.com> and <opensmallbusiness.info> domain names are confusingly similar to Complainant’s OPEN SMALL BUSINESS family of marks.

2. Respondent does not have any rights or legitimate interests in the <opensmallbusiness.com> and <opensmallbusiness.info> domain names.

3. Respondent registered and used the <opensmallbusiness.com> and <opensmallbusiness.info> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, American Express Company, has several pending tradmark applications with the U.S. Patent and Trademark Office for its OPEN SMALL BUSINESS family of marks (egs., U.S. Ser. No. 78/081690 for the OPEN, SMALL BUSINESS NETWORK mark; U.S. Ser. No. 78/081,685 for the OPEN THE SMALL BUSINESS NETWORK mark; U.S. Ser. No. 78/081,193 for the OPEN NETWORK mark). Complainant has used these marks since March 1, 2002 in connection with its services for its American Express Cardmembers and clients to help manage, plan and grow their small businesses. Complainant advertises its OPEN SMALL BUSINESS family of marks and services through television, radio and print advertising, through statement inserts and at its <americanexpress.com> domain name. A portion of Complainant’s <americanexpress.com> domain name is dedicated to operating under the OPEN SMALL BUSINESS family of marks.

Respondent, Mo Askari a/k/a USUK.org, registered the <opensmallbusiness.com> and <opensmallbusiness.info> domain names on March 10, 2002 and March 24, 2002, respectively. Respondent, who is not licensed or authorized to use any of Complainant’s registered marks, registered the <opensmallbusiness.com> nine days after Complainant announced the launch of its services under the OPEN SMALL BUSINESS family of marks. Respondent has made no use of the disputed domain names since their registration over a year ago.

On April 24, 2002 Respondent sent an e-mail to Complainant in response to its cease and desist letter pertaining to the dispute domain names. In this correspondence, Respondent expressed a willingness to transfer the disputed domain names “without charge/fees” but wondered aloud what “goodwill Gestures” Complainant would be willing to make in exchange. 

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 applied for trademark registrations of the OPEN SMALL BUSINESS family of marks with the Principal Register of the U.S. Patent and Trademark Office and has demonstrated to the Panel that it has made widespread and continuous use of the marks in commerce that predate Respondent’s registration of the disputed domain names. In the absence of a Response, there is no challenge to Complainant's assertions as to ownership, use and reputation of its OPEN SMALL BUSINESS family of marks. Thus, the Panel finds that Complainant has established rights in its OPEN SMALL BUSINESS family of marks sufficient to grant standing to bring this claim under the UDRP. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it ‘has rights’ under the ICANN Policy).

Respondent’s <opensmallbusiness.com> and <opensmallbusiness.info> domain names are confusingly similar to Complainant’s OPEN SMALL BUSINESS family of marks. Respondent’s domain names simply omit the word “network” from Complainant’s OPEN, SMALL BUSINESS NETWORK mark, and are slight variants of the remainder of Complainant’s marks. These variations on Complainant’s marks are not sufficient to dispell the confusing similarity between Complainant’s marks and Respondent’s domain names. See Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

Accordingly, the Panel finds that the <opensmallbusiness.com> and <opensmallbusiness.info> domain names are confusingly similar to Complainant’s OPEN SMALL BUSINESS family of marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant is able to meet its burden of proving that Respondent lacks rights or legitimate interests in the disputed domain names by demonstrating that Respondent would not be able to rely upon the provisions contained in Policy ¶¶ 4(c)(i)-(iii) in responding to the Complaint. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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).

The Panel also chooses to consider Respondent’s failure to contest the Complaint as evidence that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Respondent does not make any use of the <opensmallbusiness.com> and <opensmallbusiness.info> domain names, and has not done so for over a year. As Respondent did not come forward with any demonstrable preparations to use the disputed domain name, the Panel concludes that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and that its inactivity is not a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii), rendering both of these provisions inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name),

The uncontested evidence submitted to the Panel indicates that Respondent, Mo Askari, is not “commonly known by” the name OPEN SMALL BUSINESS. Thus, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Lee 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <opensmallbusiness.com> and <opensmallbusiness.info> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <opensmallbusiness.com> and <opensmallbusiness.info> domain names in bad faith. Respondent has not used the disputed domain names for over a year, instead choosing to passively hold both of them. Furthermore, Respondent’s correspondence with Complainant reveal a thinly-veiled attempt to sell its two domain name registrations to Complainant. Complainant failed to follow through on Respondent’s offer, but the fact remains that Respondent registered the disputed domain names almost immediately after Complainant announced its new services under the OPEN SMALL BUSINESS family of marks. The Panel infers from these facts that Respondent was inspired to register the disputed domain names because of the value they would have for Complainant in the future, and concludes that under these circumstances Respondent’s passive holding of the disputed domain names evidence bad faith use and registration. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).

The Panel thus finds that Respondent registered and used the <opensmallbusiness.com> and <opensmallbusiness.info> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <opensmallbusiness.com> and <opensmallbusiness.info> domain names be TRANSFERRED from Respondent to Complainant.

John J. Upchurch , Panelist

Dated:  June 17, 2003

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