DECISION

American Express Company v. Dmitri Melnikov

Claim Number:  FA0307000176534

PARTIES

Complainant is American Express Company, New York, NY (“Complainant”) represented by Dianne K. Cahill.  Respondent is Dmitri Melnikov, St. Petersburg, RUSSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <american4express.com>, registered with Computer Services Langenbach GmbH d/b/a Joker.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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 30, 2003; the Forum received a hard copy of the Complaint on July 31, 2003.

On July 31, 2003, Computer Services Langenbach GmbH d/b/a Joker.Com confirmed by e-mail to the Forum that the domain name <american4express.com> is registered with Computer Services Langenbach GmbH d/b/a Joker.Com and that Respondent is the current registrant of the name. Computer Services Langenbach GmbH d/b/a Joker.Com has verified that Respondent is bound by the Computer Services Langenbach GmbH d/b/a Joker.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 August 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 21, 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@american4express.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 September 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <american4express.com> domain name is confusingly similar to Complainant’s AMERICAN EXPRESS mark.

2. Respondent does not have any rights or legitimate interests in the <american4express.com> domain name.

3. Respondent registered and used the <american4express.com> domain name in bad faith.

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

FINDINGS

Complainant provides a wide variety of financial services and travel related services.  Complainant has over 57 million credit and charge cardholders worldwide.  Complainant asserts that it holds over 400 registrations in over 100 counties around the world for the AMERICAN EXPRESS mark or variations thereof.  Complainant further contends that it holds several registrations for the AMERICAN EXPRESS mark in Russia, Respondent’s country of residence, including Reg. Nos. 63824 and 96287 registered with the Russian Federation on September 28, 1978 and May 27, 1991 respectively.  Complainant listed the registration numbers and registration dates in the Complaint but did not provide copies of the registration documents. Complainant also contends that it has used the AMERICAN EXPRESS mark since 1850 but did not provide documentation to support this assertion. 

Complainant registered the <americanexpress.com> domain name and uses it in conjunction with Complainant’s business.  The <americanexpress.com> domain name receives an average of 11 million visitors per month.

Respondent registered the <american4express.com> domain name on May 31, 2003.  Complainant asserts that Respondent has used the disputed domain name in connection with an adult oriented website and has used the domain name for commercial gain by causing Internet user confusion. 

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

Due to Respondent’s failure to provide a Response to the Complaint the Panel may accept all reasonable allegations and inferences in the Complaint as true.  Therefore, even though Complainant has failed to provide copies of the registration documents for the AMERICAN EXPRESS mark and documentation showing that the mark has been used since 1850, the Panel concludes that Complainant has rights in the AMERICAN EXPRESS mark.  This conclusion is further supported by previous findings that the Complainant has rights in the AMERICAN EXPRESS mark.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to 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); see also Am. Express Co. v. Pierce, FA 166008 (Nat. Arb. Forum Aug. 14, 2003) (finding that Complainant had rights in the AMERICAN EXPRESS mark); see also Am. Express Co. v. Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (finding that Complainant had rights in the AMERICAN EXPRESS mark). 

Respondent’s <american4express.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name fully incorporates the AMERICAN EXPRESS mark and merely inserts the number “4” between the two words of the mark.  The disputed domain name may cause Internet user confusion as to (1) whether Respondent and/or its website is affiliated with Complainant and/or (2) whether the domain name and/or its website is endorsed, authorized or sponsored by Complainant.  See Am. Online, Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark).

The Panel concludes that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations in the Complaint, the Panel may presume that Respondent 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 Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

In addition, Respondent is not authorized or licensed to use or register domain names that incorporate the AMERICAN EXPRESS mark.  The WHOIS information for the <american4express.com> domain name lists Respondent, Dmitri Melnikov, as the registrant of the domain name but the information fails to establish Respondent as one commonly known by the disputed domain name or the AMERICAN EXPRESS mark.  Therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent, Inc. v. 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

It may be inferred that Respondent had actual or constructive knowledge of Complainant’s rights in the AMERICAN EXPRESS mark because Complainant’s mark is recognized worldwide, Complainant registered the mark with authorities in Respondent’s country of residence, and the disputed domain name fully incorporates the AMERICAN EXPRESS mark.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  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”); 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).

Due to Respondent’s failure to Respond to the allegations of the Complaint, the Panel accepts as true Complainant’s assertion that the disputed domain name has been used in connection with an adult oriented website.  Respondent’s use of the disputed domain name tarnishes Complainant’s AMERICAN EXPRESS mark because Internet users may mistakenly assume that the adult oriented website is affiliated, endorsed, or supported by Complainant.  Respondent’s use of the disputed domain name in connection with an adult oriented website is evidence of bad faith use pursuant to Policy ¶ 4(a)(iii).  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (holding that due to Respondent’s failure to Respond, it was appropriate to accept as true all allegations of the Complaint); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Wells Fargo & Co. v. Party Night Inc. a/k/a Peter Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).

 

The Panel concludes that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <american4express.com> domain name be TRANSFERRED from Respondent to Complainant. 

Judge Harold Kalina (Ret.), Panelist

Dated:  September 9, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/893.html