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Generic Top Level Domain Name (gTLD) Decisions |
American Express Company v. Corey Pierce
d/b/a 4eStrategy LLC
Claim Number: FA0307000166008
PARTIES
Complainant
is American Express Company, New
York, NY (“Complainant”) represented by Dianne
K. Cahill. Respondent is Corey Pierce d/b/a 4eStrategy LLC, Mission Viejo, CA
(“Respondent”) represented by Corey Pierce.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue, number eighteen in total and are <american-express-application.com>, <american-express-application.net>, <american-express-credit-card-applications.com>, <american-express-credit-card-applications.net>,
<apply-for-american-express.com>,
<apply-for-american-express.net>,
<american-express-cards.net>, <american-express-credit-cards.net>,
<american-express-corporate-card.com>,
<american-express-corporate-card.net>,
<american-express-blue-cards.com>,
<american-express-blue-cards.net>,
<american-express-gold-card.com>,
<american-express-gold-card.net>,
<american-express-platinum-card.com>,
<american-express-platinum-card.net>,
<american-express-credit-card-services.com>,
and <american-express-credit-card-services.net>,
(hereinafter the “domain names”) registered with Go Daddy Software, Inc..
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.
Clive
Elliott as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 1, 2003; the Forum received
a hard copy of the Complaint
on July 2, 2003.
On
July 2, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain names, namely <american-express-application.com>,
<american-express-application.net>,
<american-express-credit-card-applications.com>,
<american-express-credit-card-applications.net>,
<apply-for-american-express.com>,
<apply-for-american-express.net>,
<american-express-cards.net>, <american-express-credit-cards.net>,
<american-express-corporate-card.com>,
<american-express-corporate-card.net>,
<american-express-blue-cards.com>,
<american-express-blue-cards.net>,
<american-express-gold-card.com>,
<american-express-gold-card.net>,
<american-express-platinum-card.com>,
<american-express-platinum-card.net>,
<american-express-credit-card-services.com>,
and <american-express-credit-card-services.net>
are registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the domain names. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
July 8, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of July 28,
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@american-express-application.com, postmaster@american-express-application.net,
postmaster@american-express-credit-card-applications.com,
postmaster@american-express-credit-card-applications.net,
postmaster@apply-for-american-express.com, postmaster@apply-for-american-express.net,
postmaster@american-express-cards.net, postmaster@american-express-credit-cards.net,
postmaster@american-express-corporate-card.com,
postmaster@american-express-corporate-card.net,
postmaster@american-express-blue-cards.com, postmaster@american-express-blue-cards.net,
postmaster@american-express-gold-car.com, postmaster@american-express-gold-card.net,
postmaster@american-express-platinum-card.com,
postmaster@american-express-platinum-card.net,
postmaster@american-express-credit-card-services.com, and postmaster@american-express-credit-card-services.net
by e-mail.
A
timely Response was received and determined to be complete on July 25, 2003.
An
Additional Submission was timely received from Complainant and was determined
to be complete on July 30, 2003. The Additional Submission
is referred to below
and is taken into account in reaching a conclusion.
On August 5, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Clive Elliott
as Panelist.
On August 14, 2003 a decision was forwarded to the
Forum.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
bases this complaint on its company name American Express Company, its trade
name and its trademark registrations for
numerous AMERICAN EXPRESS marks.
Complainant
claims it has numerous granted and pending U.S. applications that contain
AMERICAN EXPRESS. Additionally, Complainant
claims it is the owner of over 400
other trademark registrations for its AMERICAN EXPRESS mark or marks that
contain AMERICAN EXPRESS
in over 100 other countries around the world.
Complainant
states that it uses its AMERICAN EXPRESS mark in connection with its web site
at <americanexpress.com>.
Complainant
contends that it has established rights in the AMERICAN EXPRESS mark through
registration with the U.S. Patent and Trademark
Office on October 2, 1962 (Reg.
No. 738,813) and through use of the mark in commerce since 1850. Respondent does not dispute this.
Complainant
contends that the Respondent’s domain names are confusingly similar to
Complainant’s AMERICAN EXPRESS mark because the
domain names fully incorporate
the AMERICAN EXPRESS mark. See Oki
Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact
that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to
establish identity (sic) or confusing similarity for purposes of
the Policy despite the addition of other words to such marks”).
Complainant
asserts that the American Express Company began using the AMERICAN EXPRESS
trademark in 1850 and in that same year it
began use of AMERICAN EXPRESS as a
trade name. It contends that since that
time American Express has expanded its use of the AMERICAN EXPRESS mark and the
American Express name
to include a wide variety of financial services and
travel related services. American
Express uses its mark and name in connection with a wide variety of goods and
services including charge card, credit card,
smart card and stored value card
services, travel and travel-related services, banking, investment and insurance
services that are
used by millions worldwide. Again, Respondent does not
dispute this.
When
Complainant first became aware of Respondent’s registration of the domain
names, American Express’ counsel sent correspondence
to the Respondent, the
registrant listed on the registration, requesting transfer of the domain
names.
Respondent
replied to Complainant’s counsel stating that the Respondent had registered the domain names as a result of a Request for
Proposal (RFP) for obtaining small business owner applications for the
re-branded
American Express small business services division. Respondent went
on to say that “The simple solution to this is that American Express
pay for
our domain registration expenses, the domain name transfer costs, for our time,
and compensate us fairly . . . .”
Complainant
asserts that the RFP did not contain any instructions, express or implied, to
Respondent or any other party who submitted
RFP responses, to register the
domain names. It is asserted that the
domain names were registered by the Respondent, not at the request of American
Express nor any other entity
associated with American Express, but as a way to
try and get American Express business.
Complainant’s
counsel sent further correspondence to Respondent restating the Complainant’s
position and policy not to pay for the
transfer of a domain name incorporating
its AMERICAN EXPRESS trademark and asking that the domain names be transferred
to American
Express. Respondent
subsequently replied that “This is now a point of honor. . . . No we will not
transfer these domains without fair and reasonable
compensation.”
Complainant asserts that the Respondent’s
addition of non-distinctive, descriptive, generic words and/or another
trademark to the
mark AMERICAN EXPRESS results in domain names that are
confusingly similar to the Complainant’s AMERICAN EXPRESS mark and its domain
name <americanexpress.com>. It
thus contends that when consumers enter
any of the domain names and are not connected to the American Express Company
web site, they will be confused
as to (1) whether Respondent and/or its web
site is affiliated in some way with American Express and/or (2) whether the
domain names
and/or web sites are endorsed, authorized or sponsored by American
Express Company.
Complainant
notes that while the domain names have
been registered since December 2001 (and renewed in December 2002 for an
additional two-year term), they do not connect to active
web sites. It also notes that the domain names have not been used despite
having been registered for over a year.
It is contended that the absence of use of the domain names raises an
inference that there has been use (or more accurately, non-use)
of the domain
names in bad faith. See Morinaga & Co., Ltd. v. Jin Tong,
D2001-0622 (WIPO, June 28, 2001).
Complainant
asserts it appears that the only motivation for registering the domain names was to capitalize on the potential of
7.5 million average monthly visitors to the American Express web site who might
mistakenly enter
any one of the domain names as a web address.
B.
Respondent
Respondent
is a web site operator or is otherwise associated with such activity.
Respondent asserts
that he was given permission by Complainant to register the domain names. However, Respondent states that he does not
claim any rights or interests in the domain names beyond what was permitted by
Complainant. Therefore, Respondent
states he is willing to transfer the domain names on the condition that
Respondent pays for the transfer costs.
Respondent says the domain names were registered in
good faith and in direct response to a Request for Proposal from a partner of
and marketing
agent for the Complainant (Mr. Kyle Sherwin of Digitas) by an
e-mail dated November 20, 2001. Therefore, Respondent asserts that the
domain names were not registered or used in bad faith because the Respondent
was given permission
by the Complainant to register them. Complainant disputes
this.
Respondent
asserts that the domain names were registered for the sole purpose of promoting
the Complainant and has been used for no
other purpose. He notes that such can be seen by the fact
that search engines have indexed none of the domain names and there is no
record of any
web site having existed at any of the domain names.
Respondent
claims to have agreed to waive claims against the Complainant for breach of the
NDA and for Complainant inducing Respondent
to disclose the nature of
Respondent’s alleged proprietary marketing techniques by Complainant verbally
acknowledging a $250,000
award to the Respondent. Again, Complainant disputes this.
C.
Additional Submissions
Complainant requests that
the answer filed by the Respondent on July 18, 2003 be denied acceptance.
This request is made to protect
proprietary information of the
American Express Company.
Respondent's answer refers
to a Request for Proposal (RFP) from Complainant. Complainant in turn
asserts a Non-Disclosure Agreement
(NDA), precludes public disclosure of the
contents of the RFP, given that before receiving the RFP from Complainant,
Respondent was
required to sign a NDA. Complainant's records confirm that
Respondent executed the required NDA before receiving the RFP from
Complainant.
Accordingly, Complainant
asserts that by attaching the RFP to its answer, Respondent is in violation of
the NDA. To protect its proprietary
information, Complainant requested
that Respondent's answer, including all exhibits attached thereto, be destroyed
upon receipt of
the same by the NAF, and that Respondent is required to
resubmit its answer without inclusion of Complainant's proprietary information.
There is no need to formally rule on this point. The Panelist has not seen the
RFP and does not regard it as necessary to do so in
order to rule on this
matter.
What is more relevant is that Complainant
contends in its Additional Submissions that if “The domain names were
registered for the
sole purpose of promoting Complainant and have been used for
no other purpose. . . ., Respondent would have transferred the domain
names
without condition when requested to do so by Complainant’s counsel." There
is merit in this point.
Complainant also notes that even if Respondent
had been selected as the vendor for the RFP, which he was not, Complainant would
not
permit registration of domain names by a third party that contain the
Complainant’s trademark, trade name and company name. It points out, that for entities that are part of Complainant’s
Affiliate Program, entities that have a business relationship with
Complainant,
are not permitted to use Complainant’s trademarks, trade name or company name
in the affiliate’s domain names.
Section 7.3 of the Affiliate Agreement reads in part:
“7.3
As a condition to your acceptance and participation in the Program, you
shall not undertake or engage in the following practices,
and any violation of
this Section shall be deemed a material breach of this Agreement: . . . (d) Use
"American Express"
or "Amex" as domain name, or portion
thereof, . . . or (f) During the term of or after the expiration or termination
of
this Agreement, use any mark, name or domain name of any type which is
confusingly similar to "American Express" or "Amex"
or
other American Express trademarks.”
FINDINGS
(1)
The domain names, namely <american-express-application.com>,
<american-express-application.net>,
<american-express-credit-card-applications.com>,
<american-express-credit-card-applications.net>,
<apply-for-american-express.com>,
<apply-for-american-express.net>,
<american-express-cards.net>, <american-express-credit-cards.net>,
<american-express-corporate-card.com>,
<american-express-corporate-card.net>,
<american-express-blue-cards.com>,
<american-express-blue-cards.net>,
<american-express-gold-card.com>,
<american-express-gold-card.net>,
<american-express-platinum-card.com>,
<american-express-platinum-card.net>,
<american-express-credit-card-services.com>,
and <american-express-credit-card-services.net>
are confusingly similar to the AMERICAN EXPRESS trademark and name.
(2) That the Respondent has no rights or
legitimate interests in respect of the domain names; and
(3)
The domain names were registered and are being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
Before
turning to the specific grounds, a matter of procedure needs to be dealt with.
It
is clear that there is a dispute between the parties as to whether Respondent
was given permission by Complainant to register the
domain names. Also, it appears that both parties have made
allegations of breach of contract.
Further, the record contains several e-mails between the two parties and
the Forum. Complainant has asserted
that Respondent has breached Complainant’s non-disclosure agreement because Respondent’s
response included
Complainant’s request for proposal (“RFP”). However, neither the non-disclosure
agreement nor the RFP form part of the formal record.
Based
on these allegations, the Panel may find that this dispute is outside the scope
of the UDRP. See Discover New England v.
Avanti Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the
dispute outside the scope of the UDRP because the dispute centered on the
interpretation
of contractual language and whether or not a breach occurred).
However,
in the present case Respondent has stated that he is willing to transfer the
domain names as long as he is not required to
pay for the transfer fees. A Panel may find that Respondent lacks
rights or legitimate interests in a disputed domain name because Respondent is
willing to transfer
them to Complainant.
See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001)
(Respondent’s willingness to transfer the domain name at issue indicates that
it has no
rights or legitimate interests in the domain name in question); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb.
Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at
issue to Complainant, as reflected
in its Response, is evidence that it has no
rights or legitimate interests in the domain name).
In
addition, a Panel may find that bad faith under Policy 4(a)(iii) has been
satisfied because Respondent is willing to transfer the
disputed domain
name. See Vertical Solutions Mgmt.,
Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(finding Respondent’s willingness to transfer and its failure to develop the
site are evidence
of its bad faith registration and use).
These
cases seem apposite in the present case and suggest that this is a proper case
for resolution through the mechanism of the UDRP.
Further, Complainant has
provided supporting information and contended that even if Respondent had been
selected as the vendor for
the RFP, Complainant would not have permitted
registration of domain names by a third party that contain the Complainant’s
trademark,
trade name and company name. Again, this militates against
Respondent’s argument. The Panel thus turns to the grounds.
Complainant
contends that it has established rights in the AMERICAN EXPRESS mark through
various registrations and through use of
the mark in commerce since 1850.
As
Complainant notes in its submission the AMERICAN EXPRESS mark has been
adjudicated a famous mark in court decisions, including,
American Express Company v. Lyons, d/b/a American Express et. al.,
193 USPQ 96 (E.D. CA 1976) and American
Express Co. v. South American Express Inc., 207 USPQ 893 (C.D. CA
1980). Moreover, the National
Arbitration Forum held in American
Express Company v. Strategic Concepts that “Complainant’s trademark is well
known in the U.S. and around the world.”
See American Express Company v.
Strategic Concepts, NAF 96378, February 15, 2001.
It further notes that several ICANN
decisions have held that the addition of a non-distinctive, descriptive or
generic term does not
change the overall impression of a mark. In fact, in American Express Company v. Stealth Commerce a NAF Panel held that
“the domain name . . . consists of the AMERICAN EXPRESS trademark with the term
“bank” appended at the end. “Bank” is a
generic term. As such, it does not
serve to distinguish the domain name from the AMERICAN EXPRESS mark. To the contrary, it only serves to heighten
the potentiality for confusion . . . .”
See American Express
Company v. Stealth Commerce, NAF No. 106119, May 8, 2002.
Complainant
contends that the domain names are confusingly similar to Complainant’s
AMERICAN EXPRESS mark because the domain names
fully incorporate the AMERICAN
EXPRESS mark. See Oki Data Americas, Inc.
v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name
wholly incorporates a Complainant’s registered mark is sufficient to
establish
identity (sic) or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”).
American Express uses its mark and name
in connection with a wide variety of goods and services including charge card,
credit card,
smart card and stored value card services, travel and travel-related
services, banking, investment and insurance services. The Respondent
has simply
appended to the AMERICAN EXPRESS mark words/terms describing these activities.
This does nothing to distinguish. The
domain names can only be seen as confusingly similar.
The
ground is made out.
Complainant
contends that Respondent lacks rights or legitimate interests in the domain
names because Respondent was not authorized
to use Complainant’s mark. See
K&N Eng’g, Inc. v. Weinberger, FA
114414 (Nat. Arb. Forum July 25, 2002) (holding that Respondent, who was not an
authorized distributor of Complainant’s products,
lacked rights or legitimate
interests in a domain name incorporating Complainant’s mark); see also Am. Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6,
2000) (finding no rights or legitimate interest in the misspelled domain name
<amaricanairlines.com> because
Respondent was not authorized to use Complainant's mark).
Furthermore,
Complainant asserts that Respondent has not used the domain names for over
eighteen (18) months. The Panel may
find that Respondent has passively held the domain names, and therefore
Respondent lacks rights or legitimate interests
in the domain names. See
Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no
rights or legitimate interests in the domain name where there is no proof that
Respondent
made preparations to use the domain name or one like it in
connection with a bona fide offering of goods and services before notice
of the
domain name dispute, the domain name did not resolve to a website, and
Respondent is not commonly known by the domain name);
see also Nike, Inc. v.
Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or
legitimate interests where Respondent made no use of the infringing domain
names).
As
noted above, Complainant has contended (and provided support for the
proposition) that even if Respondent had been selected as
the vendor for the
RFP, it would not have permitted registration of domain names by a third party
that contain Complainant’s trademark,
trade name and company name. That would
be consistent with good and usual corporate practice.
Respondent
does not challenge Complainant’s rights and interest in the domain names and
fails to adequately explain how registering
them and then renewing them or
allowing them to be renewed, contrary to earlier promises, is legitimate or
according to a right or
legitimate interest.
Accordingly, the ground is made out.
Complainant
asserts that the AMERICAN EXPRESS mark is known worldwide and that Respondent
registered the domain names in bad faith
because Respondent had constructive
knowledge of Complainant’s rights in the mark.
See Digi Int’l, Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (holding that “there is a legal presumption of bad faith, when Respondent
reasonably should
have been aware of Complainant’s trademarks, actually or
constructively”). Indeed, in the present case Respondent does not deny actual
knowledge of Complainant’s marks and could hardly do so. However, he asserts he
registered the domain names to protect that very
same interest.
In
addition, Complainant maintains that Respondent has not developed the disputed
domain names for over eighteen (18) months, which
constitutes passive
holding. Passive holding of a domain
name is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in
bad
faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that
Respondent’s failure to develop its website in a two year period raises the
inference
of registration in bad faith).
Furthermore,
Complainant claims that Respondent registered the domain names with the intent
to capitalize from the goodwill associated
with the AMERICAN EXPRESS mark. Complainant asserts that Respondent could not
possibly use the domain names in a manner that could avoid Internet confusion,
and therefore
Respondent has engaged in bad faith pursuant to Policy ¶
4(a)(iii). See Phat Fashions v. Kruger,
FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy
4(b)(iv) even though Respondent has not used the domain
name because “It makes
no sense whatever to wait until it actually ‘uses’ the name, when inevitably,
when there is such use, it will
create the confusion described in the Policy”);
see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000)
(finding bad faith where (1) Respondent failed to use the domain name and (2)
it is clear that Respondent
registered the domain name as an opportunistic
attempt to gain from the goodwill of Complainant).
Also,
Complainant contends that Respondent has requested compensation for the domain
names. Attempts to sell a domain name
that infringes on another’s trademark or service mark for valuable
consideration in excess of Respondent’s
documented out-of-pocket costs is
evidence of bad faith pursuant to Policy 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded,
are evidence of bad faith.
Respondent
was vague and enigmatic about what it would take to effect a transfer, stating
he was interested in “the domain name transfer
costs, for our time, and
compensate us fairly . . . .” whatever that means. However, it then became a “point of honor” and a “ fair and
reasonable compensation” was required. For eighteen domain names, all
incorporating the key words
AMERICAN EXPRESS, it is reasonable to infer that
Respondent was after a sum in excess of his out of pocket expenses and this was
the sole or a major driver of his actions.
His conduct bears the hallmarks of opportunism and lack of candor.
For this
reason and those reasons identified above it is found that this amounts to bad
faith conduct and accordingly that the ground
is made out.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the
domain names <american-express-application.com>,
<american-express-application.net>,
<american-express-credit-card-applications.com>,
<american-express-credit-card-applications.net>,
<apply-for-american-express.com>,
<apply-for-american-express.net>,
<american-express-cards.net>, <american-express-credit-cards.net>,
<american-express-corporate-card.com>,
<american-express-corporate-card.net>,
<american-express-blue-cards.com>,
<american-express-blue-cards.net>,
<american-express-gold-card.com>,
<american-express-gold-card.net>,
<american-express-platinum-card.com>,
<american-express-platinum-card.net>,
<american-express-credit-card-services.com>,
and <american-express-credit-card-services.net>
be TRANSFERRED from Respondent to
Complainant.
Clive Elliott, Panelist
Dated: August 14, 2003
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