DECISION

American Express Company v. Sunny Gaddh

Claim Number:  FA0410000339554

PARTIES

Complainant is American Express Company (“Complainant”), represented by Dianne K. Cahill, 200 Vesey Street, 49th Floor, New York, NY 10285.  Respondent is Sunny Gaddh (“Respondent”), 2220 N. Cypress Bend Drive, 107 Pompano Beach, FL 33069.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myamexcreditcard.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 October 7, 2004; the Forum received a hard copy of the Complaint on October 8, 2004.

On October 7, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <myamexcreditcard.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. 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 October 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 1, 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@myamexcreditcard.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 November 10, 2004, 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 <myamexcreditcard.com> domain name is confusingly similar to Complainant’s AMEX mark.

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

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

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

FINDINGS

Complainant began using the AMEX mark in commerce in 1969 in connection with a variety of financial services, including charge card, credit card, smart card and stored value card services, travel and travel-related services, rewards programs, and banking services.  Complainant currently has over 60 million cardholders worldwide.  In 2003, Complainant grossed over $25.9 billion in revenue and spent over $1.45 billion in advertising worldwide.

Complainant alleges rights in the AMEX mark as the result of its numerous registrations of the mark with various legitimate governmental authorities worldwide.  All told, Complainant maintains over 160 trademark registrations for the AMEX mark in 83 countries, including U.S. registration number 1,161,278 (issued July 14, 1981).

Respondent registered the disputed domain name <myamexcreditcard.com> on February 14, 2004.  The domain name simply points Internet users to Complainant’s website located at the domain name <americanexpress.com>.

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 established rights in the AMEX mark as the result of its numerous registrations of the mark with various legitimate governmental authorities worldwide.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

As a general proposition, a domain name that incorporates a third-party mark in a domain name and merely appends a term that describes the goods or services offered under the mark is confusingly similar to the mark pursuant to paragraph 4(a)(i) of the Policy.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); 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); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Yet, general propositions do not decide particular cases.  In the instant case, the domain name <myamexcreditcard.com> incorporates Complainant’s AMEX mark in its entirety.  The domain name has simply added the terms “my” and “credit card” to Complainant’s mark.  It is well established that when a domain name incorporates a third-party mark and merely adds the term “my” to the mark, such an addition fails to sufficiently distinguish the domain name from the mark pursuant to paragraph 4(a)(i) of the Policy.  See Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the domain name <myinfospace.com> is confusingly similar to Complainant’s INFOSPACE mark); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark . . .”).

Moreover, it has been found that when a domain name incorporates a third-party mark, which is used in connection with credit cards, and the domain name merely adds the term “credit card” to the mark, the domain name is confusingly similar to the mark pursuant to paragraph 4(a)(i) of the Policy.  In a prior decision under the Policy, a panel found that the domain name <creditcardamericanexpress.com> was confusingly similar to Complainant’s AMERICAN EXPRESS mark because the domain name merely added a term that described Complainant’s business and therefore was non-distinctive.  Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004).  In that same case, the panel found that the addition of such terms as “dining card,” “golf card,” and “green card” to Complainant’s AMEX mark in domain names did not sufficiently distinguish the domain names from Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.  Id. 

In this particular case, the Panel sees no ample reason to depart from the general rule and finds that the domain name <myamexcreditcard.com> is confusingly similar to Complainant’s AMEX mark.  The dominant portion of the disputed domain name is Complainant’s AMEX mark.  The term “my” simply describes the possessor of an AMEX credit card and the additional term “credit card” merely describes the goods or services offered by Complainant under its mark. 

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  Therefore, with regard to paragraph 4(a)(ii) of the Policy, the Panel accepts all reasonable allegations set forth in the Complaint as true unless clearly contradicted by the evidence. See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); 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).

Furthermore, Respondent’s failure to respond functions as an implicit admission that it lacks rights and legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.  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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Complainant asserts that Respondent is not commonly known by the domain name <myamexcreditcard.com> pursuant to paragraph 4(c)(ii) of the Policy.  Complainant points to the fact that Respondent identifies itself as “Sunny Gaddh” in the WHOIS registration information for the disputed domain name.  There is no other evidence that bears directly on whether Respondent is commonly known by the disputed domain name.  Therefore, the Panel accepts Complainant’s assertion as true and finds that Respondent is not commonly known by the domain name <myamexcreditcard.com> pursuant to paragraph 4(c)(ii) of the Policy.  See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be “Bruce Gibson,” the Panel infers that Respondent was not “commonly known by” any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

There has been no assertion by either party with regard to whether Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.  Respondent is using the domain name to resolve to Complainant’s website.  It is possible that Respondent’s endeavor to register a domain name confusingly similar to Complainant’s mark, and then connect the domain name to Complainant’s website, was goaded out of a magnificent philanthropical urge to aid a company with over $25.9 billion in gross revenue for 2003.  Yet, history and experience tames the inclination to believe such a scenario.  More likely is that Respondent’s registration of the domain name, which is confusingly similar to Complainant’s mark, and use of the domain name to link Internet users to Complainant’s website provides Respondent some sort of revenue through an affiliate program.  Yet, there is no evidence to support this conclusion.  Nevertheless, the Panel stakes its finding that Respondent is not using the domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy, on Respondent’s failure to come forward with information that is “uniquely within the knowledge and control of the respondent.”  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy, lists specific indicators of bad faith registration and use.  Yet, such indications are non-exclusive.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (the Policy “indicates that its listing of bad faith factors is without limitation”).

One such non-enumerated indicator of bad faith registration and use is when a domain name registrant registers a domain name that encompasses a famous third-party mark and would not have registered the domain name but for the fame associated with the mark.  See 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); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

In the instant case, Complainant has used the AMEX mark continuously in commerce since 1969.  Complainant maintains over 160 trademark registrations for the AMEX mark in 83 countries, and has now attained a credit card holder base of over 60 million worldwide.  As previously stated, Complainant grossed over $25.9 billion in revenue in 2003.  These facts establish that Complainant’s AMEX mark is active and vibrant in the commercial world.  A prior panel has referred the AMEX mark as being “famous.”  Am. Express Co. v. (This Domain is For Sale) Joshuathan Inv., Inc., FA 154647 (Nat. Arb. Forum June 3, 2003) (referring to “Complainant’s famous AMEX mark”).  The Panel infers from Respondent’s registration of a domain name that encompasses Complainant’s famous AMEX mark and Respondent’s use of the domain name to point to Complainant’s website located at the domain name <americanexpress.com>, that Respondent had actual knowledge of Complainant’s rights in the AMEX mark.  Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith because it disregarded Complainant’s rights in the famous AMEX mark and would not have registered the domain name but for the fame associated with Complainant’s mark.

Complainant has established Policy ¶ 4(a)(iii).

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 <myamexcreditcard.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  November 22, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1417.html