Complainants are American Express Marketing & Development Corp. and American Express Travel Related Services, Inc. of New York, New York, United States of America, represented by Debevoise & Plimpton, United States of America.
Respondent is Domains By Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States of America / Amy Saxon of Pacific Palisades, California, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2016. On July 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on July 4, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on July 8, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 13, 2016. On August 3, 2016, Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the due date for Response to August 6, 2016. The Response was filed with the Center on August 7, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 23, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainants own two United States trademark registrations for (i) the BLACK CARD mark, for credit and debit card services (U.S. Registration No. 3,613,898; registered April 28, 2009), and (ii) the stylized BLACK CARD mark, for promoting the sale of goods and services of others by awarding incentives to consumers for credit card use; providing concierge services for travelers, namely, making business meeting arrangements (U.S. Registration No. 4,545,558; registered June 10, 2014). With these registrations, Complainants own trademark rights with registration priority dating to the first application's filing date of September 20, 2005.
Complainants' Black Card charge card is not made of plastic like most credit and charge cards; instead, it is a metallic card made of titanium.
The Domain Name was registered on January 28, 2015. 5. Parties' Contentions A. Complainants
Complainants state that the association between American Express and its BLACK CARD marks began in the early 1980s as a result of an exclusive service offered to a number of high-net-worth customers: a black-colored card that did not function like a typical credit or charge card, but listed a series of special customer service telephone numbers for major cities around the world. Rumors circulated in the marketplace that American Express offered a secret and ultra-exclusive "Black Card." Beginning in 1998, Complainants capitalized on the mystique surrounding the rumored black card by developing a premium, high-fee, black-colored charge card for high-spending card members. During its development, the card was named the Centurion Card, but Complainants state that they knew, and expected, the public would call the card the "Black Card," not only because American Express cards are generally known by their color, but also because of the longstanding myth regarding a secret black-colored American Express card.
Complainants explain that the Centurion Card was launched in 1999 and from the start, consumers and industry users regularly referred to the Centurion Card by its more popular street name: the Black Card. Centurion membership is on an exclusive invitation-only basis and customers must meet strict eligibility criteria to qualify for the card. Complainants further explain that in order to preserve the goodwill surrounding the Centurion Card, and to enhance its mystique, Complainants have never placed paid advertisements for the card in newspapers, magazines, television or the Internet. Instead, as part of a deliberate strategy, Complainants rely on word of mouth, product placement in film and television, and celebrity buzz to spread awareness of the Black Card and its location at the apex of American Express' credit card hierarchy. Building on its roots as a card so exclusive as only to be rumored to exist, this strategy helps perpetuate an aura of exclusivity, curiosity, and elegance, which feeds into the Black Card mystique. Careful cultivation of this mystique and reputation is a priority of Complainants' Consumer Products & Services team, which oversees the Centurion Card. As a brand beacon product, the Centurion Card's reputation for luxury and the height of service creates a "brand halo" for all American Express products: It serves to symbolize American Express' reputation for exclusivity and success, even among American Express customers who do not meet its stringent qualifications.
In a recent United States litigation involving the rights to the BLACK CARD trademark, a United States District Court decision recognized the reputation enjoyed by the Centurion Card, along with the widespread popular reference to this card under the BLACK CARD mark:
From its launch in 1999, Amex's Centurion brand has achieved significant and enduring visibility in the media and popular culture. In those domains, Amex's premier product is referred to almost exclusively as its "black card." . . . In popular culture, Amex's "black card" has come to be associated with wealth, extravagant luxury, and the celebrity lifestyle, with references and appearances in song lyrics, movies, and television shows.
American Express Mktg. & Dev. Corp. v. Black Card LLC, 106 U.S.P.Q. 2d 1926, 1928 (S.D.N.Y. 2011).
Consistent with Complainants' strategy for making its Black Card distinctive in the marketplace, the charge card is not made of plastic; instead, Complainants believe their card was the first to be made of metal, and this remains a distinctive feature of the card. Complainants have provided evidence of numerous references in the media to the Black Card and that it is made of titanium.
Complainants state that an Internet user who enters the Domain Name into a browser looking for information on Complainants' Black Card instead arrives at Respondent's site, which displays and offers for sale the "Alchemy Black Card," a payment card that can be linked to users' pre-existing debit or credit card. Complainants assert that, on information and belief, the website is operated by T-Alchemy Holding, Inc., for which Respondent serves as Chief Executive Officer. The website describes T-Alchemy's product as "a luxury metal card that's designed for a community of people with style and taste."
Complainants further maintain that the trade dress Respondent has adopted for its card mimics the combination of several of the most prominent and distinctive features of the trade dress for Complainants' Black Card; including a black-colored card, a heavy metallic construction, pewter-tinted writing and garland border design, and the American Express' characteristic "Member Since" phrase, as follows:
Complainants have not licensed or authorized Respondent or T-Alchemy to use the registered BLACK CARD mark in connection with Respondent's business. Complainants' contend that Respondent markets her company's Black Card as a sign of exclusivity and success in a clear attempt to confuse consumers into thinking the Alchemy Black Card has a connection to Complainants and their Black Card. Throughout the website linked to the Domain Name, Respondent remarks on the status symbol the Alchemy Black Card represents: "It's a way to announce 'You've arrived'"; "announce your VIP status"; "Experience the feeling of presenting the luxury status symbol …." Respondent has also created a webpage hosted at the Domain Name entitled "What's Being Said" that includes several images of celebrities implied to be endorsing the Alchemy Black Card. However, the website includes no written endorsement from these celebrities, and indeed, several of the images do not include any mention of the Alchemy Black Card itself. This webpage seeks to mimic the kind of celebrity buzz that Complainants' use to enhance the fame of their BLACK CARD mark.
Respondent's website offers her company's card for sale for a "one time fee of $199.99 plus taxes where applicable." An investigator for Complainants attempted to purchase Respondent's "Alchemy Black Card," but received no response after completing the online application and submitting his own credit card information for payment of the fee. It appears that Respondent has now discontinued the Alchemy Black Card business, but as of the date of the Complaint, the Domain Name still resolves to an active website.
Complainants state that a message at the bottom of each page of Respondent's website makes the false statement that "Alchemy Black Card is a registered trademark" and further asserts that "Alchemy Black Card is patent pending." No such registration is on file with the United States Patent and Trademark Office, and Complainants have found no evidence of a pending patent application related to the Alchemy Black Card. Complainants claim that Respondent's statement is proof that she is attempting to use Complainants' BLACK CARD trademark as a mark for her company's goods and services.
On January 21, 2016, counsel for Complainants sent a letter to T-Alchemy along with another entity associated with the same founder that also publicly claimed an affiliation with Alchemy Black Card. The letter demanded that T-Alchemy cease and desist from its confusing and misleading use of the BLACK CARD mark. No response was received by counsel for Complainants. (i) Identical or confusingly similar
Complainants assert that Respondent registered the Domain Name without authorization no earlier than January 28, 2015, long after Complainants had established rights in the BLACK CARD mark in 1999, and well after receiving its trademark registrations in 2009 and 2014, with filing priority back to 2005.
Complainants state that the issue under this first factor of the Policy is not whether Internet users are actually confused as to the source of the website, but instead whether the mark in which Complainants have rights and the Domain Name, when directly compared, are confusingly similar for purposes of the Policy. Complainants contend that the Domain Name registered by Respondent is confusingly similar to Complainants' famous BLACK CARD trademark. The relevant comparison is between the BLACK CARD trademark and the second-level domain, "alchemyblackcard." Confusing similarity exists because the Domain Name incorporates the BLACK CARD trademark in its entirety and simply adds the additional term "alchemy." The combination of Complainants' mark, BLACK CARD, with an unrelated term, "alchemy," even if owned by an organization that is not a party to this proceeding, does not avoid a finding that the Domain Name, which here incorporates the entirety of Complainants' mark, is confusingly similar to Complainants' BLACK CARD mark. (ii) Rights or legitimate interests
Complainants contend that Respondent lacks any rights or legitimate interests with respect to the Domain Name. Complainants have not licensed or otherwise authorized Respondent (or T-Alchemy) to use their BLACK CARD trademark in connection with the Domain Name or in combination with the marketing of the Alchemy Black Card.
Respondent and T-Alchemy lack rights to or legitimate interests in the Domain Name under all three provisions of paragraph 4(c) of the Policy: (1) Respondent and T-Alchemy are not using the Domain Name in connection with a bona fide offering of goods or services; (2) neither Respondent nor T-Alchemy were commonly known by the Domain Name prior to registering the Domain Name; and (3) Respondent and T-Alchemy are not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers. Moreover, no legal or business relationship exists between Complainants and Respondent (or T-Alchemy) that would give rise to a license, permission or other right by which Respondent could own or use any domain name incorporating the BLACK CARD marks.
Although Respondent has used the Domain Name to offer the Alchemy Black Card, this is not a use "in connection with a bona fide offering of goods or services." Policy, paragraph 4(c)(i). An infringing use of a registered trademark cannot serve as a bona fide offering of goods under the Policy. Further, Respondent is offering her company's product in the same market where Complainants use their BLACK CARD mark. Respondent's product is a black, luxury metallic payment card, designed to be used as an alternative to the payment card issued with a customer's credit or debit account.
Complainants urge that the actions of Respondent in registering the Domain Name in 2015 to market a payment card that mimics many of the most distinctive features of Complainants' trade dress for their Black Card, well after Complainants made the BLACK CARD mark famous, provide strong evidence that Respondent was aware of the mark and cannot subsequently claim a bona fide use of the mark. When Respondent registered the Domain Name, Complainants had been marketing their famous BLACK CARD product for over 30 years. Additionally, given the widespread fame of Complainants' Black Card product and their ownership of registrations for the BLACK CARD mark, Complainants claim that Respondent must have been aware of Complainants' mark when she registered the Domain Name.
Complainants state that Respondent's only justification for use of the Domain Name is to trade off unlawfully on the value and goodwill of Complainants' BLACK CARD mark. There is no evidence Respondent or T-Alchemy was ever commonly known by the Domain Name prior to its registration. Merely using the "Alchemy Black Card" name on the website in question cannot serve as evidence that Respondent was commonly known by that name. Additionally, the information found on Respondent's business, T-Alchemy, suggests that it was incorporated in February 2015, shortly after the registration of the Domain Name. This undercuts any argument that this Respondent was commonly known under the Domain Name prior to its registration.
Complainants also state that the third ground for claiming a legitimate interest in the Domain Name in connection with a noncommercial use does not apply. Respondent is offering the Alchemy Black Card for $199.99 on the website, making a commercial use of the Domain Name. And given her offering of a payment card product that is purportedly designed to compete with Complainants' products, confusion is likely, with Respondent seeking to misleadingly direct consumers who may be looking for a way to acquire Complainants' famous BLACK CARD charge card. (iii) Registered and used in bad faith
Complainants contend that the Domain Name was registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Policy includes a non-exhaustive list of four circumstances evidencing a bad faith registration and use of a domain name, two of which serve as the basis for finding Respondent has acted in bad faith here:
- "You [domain name holder] have registered the domain name primarily for the purpose of disrupting the business of a competitor"; and
- "You [domain name holder] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
Respondent is competing against American Express and disrupting Complainants' business in offering the Alchemy Black Card. The primary purpose of Respondent's website is to sell a payment card product that can be linked to consumers' pre-existing debit or credit card, including those of Complainants' largest competitors, Visa, MasterCard, and Discover. Consumers who acquire Respondent's Black Card do not then need to obtain Complainants' Black Card in order to have a prestigious Black Card charge card to use in the marketplace. In this manner, Respondent is disrupting Complainants' business by offering a Black Card product that is intended to compete against Complainants' famous BLACK CARD mark and card. Additionally, the website currently hosted at the Domain Name clearly intends to attract consumers for commercial gain based on a false connection with Complainants' famous BLACK CARD. SeePolicy, paragraph 4(b)(iv). It is implausible that Respondent would have registered the Domain Name to market a payment card product that includes the words "black card" without any knowledge of Complainants' BLACK CARD mark and products.
Even if Respondent claims not to have been aware of Complainants' BLACK CARD product or trademark, Respondent cannot hide behind alleged ignorance given her obligations under the Policy (to determine whether the Domain Name registration infringes or violates someone else's rights) and the minimal effort needed to learn of the famous card that has been referenced in news articles and song lyrics for decades. Further, Respondent registered the Domain Name to market a black, metallic payment card with precisely the same qualities as Complainants' Centurion Card – a symbol of status and importance for those consumers who obtain it. Registering the Domain Name with knowledge of the famous BLACK CARD mark and using it to market the same kind of product is further evidence of Respondent's bad faith registration and use. B. Respondent
Respondent states that its "AlchemyBlack" membership looks to acquire and grow a community of people with good taste for the purpose of common marketing of luxury products. Respondent contends that there is no chance that any current or prospective member would be mistaken into joining AlchemyBlack instead of acquiring the American Express Centurion card.
Respondent argues that Complainants are being less than forthright in claiming that there is confusion in the marketplace based on AlchemyBlack offering a membership card, considering that AlchemyBlack does not in any way offer credit, is not a prepaid card or gift card, and does not provide any of the benefits or services offered by Complainants. Respondent further asserts that it strains the intellect to argue that the AlchemyBlack membership community could be mistaken for an American Express Centurion credit card customer, especially since the Centurion card is by invitation only. (i) Identical or confusingly similar
Respondent states that under the Policy, Complainants must establish that the Domain Name is identical or confusingly similar to its trademark. However, the Domain Name is , which if it included spaces would look like the "AlchemyBlack card." "AlchemyBlack" is not a trademark or service mark of Complainants. Even if Complainants hold the mark for "Black Card," the AlchemyBlack membership is never referred to as the "Black Card." The brand name is "AlchemyBlack" and the word "card" in the Domain Name is simply a description of the tangible item. As to "confusingly similar," Respondent urges that no one would be confused as between an AlchemyBlack membership and an American Express Centurion card. Respondent asserts that Complainants misleadingly use language like "unrelated term Alchemy" and "simply adds the additional term Alchemy." However, it cannot be ignored that the Domain Name begins with the word "alchemy." Alchemy is not simply an additional term, it is the paramount term. This is not a case where a domain name misappropriated a trademark by merely adding "the." (ii) Rights or legitimate interests
Respondent states that AlchemyBlack endeavors to find like-minded consumers of luxury goods for a community approach to marketing those luxury items. As the name is AlchemyBlack, the Domain Name is directly on point and for a legitimate purpose. Respondent contends that Respondent has a legitimate interest in AlchemyBlack products, and with the membership including a "card", the argument is false that there is no legitimate interest in the Domain Name. (iii) Registered and Used in Bad Faith
Respondent denies that the Domain Name was registered and used in bad faith. AlchemyBlack is a concept for a luxury community and there is no bad faith in the name AlchemyBlack or in the idea that it provides a membership card. It is important to note again that AlchemyBlack does not provide or issue any credit, does not create pre-paid debit or credit cards, or gift cards. There is no competition with Complainants.
Respondent claims the Domain Name was not registered or acquired for the purpose of selling, renting or otherwise transferring the name to Complainants, nor to a competitor of Complainants. The Domain Name was not registered in order to prevent Complainants from reflecting the mark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct. The Domain Name begins with the term "alchemy," which is the most important word in the Domain Name and the only word that is not a common description. There is no chance that Complainants would want the word "alchemy" as the first word in a domain name in conjunction with their Centurion card.
Despite Complainants claiming that the AlchemyBlack card competes with the Centurion Card, this claim is false. The AlchemyBlack membership does not offer any credit, nor a pre-paid credit or debit card, or a gift card. Complainants invite only those who they want to apply for the card. Complainants and Respondent are not competitors and the Domain Name was not registered by Respondent primarily to disrupt Complainants' business. In addition, the Domain Name was not registered by Respondent in an intentional attempt to attract for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. It seems the test is whether Respondent intentionally attracted business by creating a likelihood of confusion. There is no likelihood of confusion. No reasonable consumer could confuse the two companies, the two products, or that the Domain Name refers to American Express or the Centurion card. Before Respondent received any notice of the dispute, there is evidence of Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. 6. Discussion and Findings
To succeed in their claim, Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel must determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainants have rights. Complainants have demonstrated that they have well-known and long-standing trademark rights in their BLACK CARD marks.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name…."). As the panel explained in Red Bull GmbH v. Paul Battista,WIPO Case No. D2010-0353 (quoting SANOFI-AVENTIS v. Jason Trevenio,WIPO Case No. D2007-0648), "[c]onfusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: 'Is it likely that, because of the similarity between the domain name on the one hand and the Complainant's trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?'"
Respondent has argued that the Domain Name is not confusingly similar to Complainants' BLACK CARD marks because Respondent's brand name is AlchemyBlack; the word "alchemy" is the most important term in the Domain Name while the word "card" is merely a descriptive term; and no one would be confused because Respondent's card is not a charge, debit or gift card and Respondent's company does not offer the services offered by Complainants.
Based on the evidence presented, however, the Panel determines that, on the balance of the probabilities, Internet users would likely be confused as to whether there is a connection between the Domain Name, on the one hand, and Complainants and their BLACK CARD marks, on the other hand. First, the Panel observes that if Respondent had registered a domain name comprised of only the terms in its purported brand name – "alchemy" plus "black" – there would be a different combination of elements to be considered under the analysis of confusing similarity. However, the Domain Name includes the term "alchemy" with Complainant's BLACK CARD mark. Second, Complainants have provided evidence to show that their BLACK CARD mark is well-known in the United States in the financial services field in relation to a premium and exclusive charge card. The Panel finds that given the strength of Complainants' BLACK CARD mark, and that the mark is included in its entirety in the Domain Name, it is likely that consumers would wonder whether the Domain Name is associated in some way with Complainants, their BLACK CARD marks, and the related financial products and services. See Chevron Corp. v. Young Wook Kim,WIPO Case No. D2001-1142 (confusing similarity between CHEVRON mark and the domain name no matter the addition of the famous TEXACO mark); Minnesota Mining and Manufacturing Company v. Belowcost,WIPO Case No. D2001- 0420 ("Where the trademarks of two separate companies are combined in a domain name, there is still a likelihood of confusion between either mark and the domain name.").
Accordingly, the Panel concludes that the Domain Name is confusingly similar to Complainants' BLACK CARD trademarks. Complainants have satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Panel concludes that Respondent has no rights or legitimate interests in the Domain Name. Complainants have confirmed that they did not license or otherwise permit Respondent to use their BLACK CARD trademarks or to register a domain name incorporating them. Complainants have also demonstrated that Respondent (and Respondent's company) is not commonly known by the Domain Name and has not been using it for noncommercial or fair use purposes.
Complainants have challenged that Respondent, by registering the Domain Name, is trying to exploit the value and goodwill of Complainants' BLACK CARD marks when offering Respondent's Alchemy Black Card; that due to the infringing use of Complainants' BLACK CARD marks, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services; that Respondent's company is offering a product in the same market where Complainants offer their BLACK CARD products – Respondent's company is offering a black, luxury metallic payment card designed to mimic distinctive features of Complainants' trade dress for their Black Card and to be used as an alternative to the payment card issued with a customer's credit or debit account; that Respondent has done this well after Complainants made the BLACK CARD mark and related products famous; and that this provides evidence that Respondent must have been aware of Complainants' marks when she registered the Domain Name. Further, Complainants have provided evidence that the statements at the bottom of the webpage linked to the Domain Name are false, in particular, that "Alchemy Black Card is a registered trademark" and that "The Alchemy Black Card is patent pending."
In her Response, Respondent does not attempt to deny that she was aware of Complainants, their BLACK CARD marks, and their related products and services. Nor has she responded to Complainants' allegations that (i) her company's metallic card, with a membership price of $199, imitates the trade dress of Complainants' well-known Black Card, and (ii) the statements at the bottom of the webpage linked to the Domain Name are false (i.e., "Alchemy Black Card is a registered trademark" and "The Alchemy Black Card is patent pending"). Instead, Respondent contends that her company has a legitimate interest in Alchemy Black products, using a membership approach that includes a card; that there is no confusion between her company's products and Complainants' Black Card and BLACK CARD marks; and that Alchemy Black does not provide or issue any credit services and does not create pre-paid debit or credit cards, or gift cards.
The Panel observes the following statements on the website linked to the Domain Name, indicating that Respondent is offering a "luxury metal" card that is intended to be linked to a "pre-existing debit or credit card," thereby replacing the debit or credit card while preserving all "points and benefits associated with your pre-existing debit/credit card," and creating a "luxury presentation."
"Once accepted as a member of AlchemyBlack, a customized luxury metal AlchemyBlack card will be created just for you. We will link your pre-existing debit or credit card to your new AlchemyBlack metal card, opening a world of luxury and status.
Using the AlchemyBlack card gives you the VIP style, and preserves all your points and benefits associated with your pre-existing debit/credit card. You will continue to earn all your points and rewards and receive your monthly statement from your pre-exiting card. The AlchemyBlack card simply provides the luxury presentation afforded the tastemakers.
Experience the feeling of presenting the luxury status symbol that is the AlchemyBlack card at restaurants, clubs, boutiques, stores, and anywhere your pre-existing debit/credit card is accepted. Welcome to AlchemyBlack. You've Arrived."
The Panel determines, on the balance of the probabilities, that Respondent – through the use of a Domain Name that is confusingly similar to Complainants' BLACK CARD marks and the offering of a metallic card that imitates Complainants' Black Card and is intended to be used in the same industry where Complainants' offer their products and services – is attempting to trade off on the reputation and goodwill associated with Complainants' marks. The Domain Name, therefore, is not being used in connection with a bona fide offering of goods or services.
Accordingly, for all of these reasons, the Panel concludes that Respondent has no rights or legitimate interests in the Domain Name. Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Panel determines that the Domain Name has been registered and used in bad faith. In this case, where Complainants' BLACK CARD trademarks were well-known at the time the Domain Name was registered, and where there is evidence that Respondent has targeted Complainant's marks and imitated the trade dress of Complainants' Black Card, the Panel finds that Respondent registered the Domain Name in order to exploit Complainants' goodwill in its BLACK CARD marks. In so doing, she registered the Domain Name in bad faith. See Ferrari S.p.A. v. American Entertainment Group, Inc.,WIPO Case No. D2004-0673
("Complainant's trademark is well-known and Respondent undoubtedly knew about it when registering the contested domain name. Said domain name would most likely not have been registered if it were not for Complainant's trademarks."); Red Bull GmbH v. Paul Battista,WIPO Case No. D2010-0353; David Foox v. Kung Fox and Bill Hicks,WIPO Case No. D2008-0472.
Moreover, under paragraph 2 of the Policy, Respondent when registering the Domain Name had a responsibility to determine whether it infringed upon the rights of any third-party. Policy, paragraph 2 ("It is your [the domain-name holder's] responsibility to determine whether your domain name registration infringes or violates someone else's rights."); see also Law Society v. RareNames WebReg / Rarenames, Inc.,WIPO Case No. D2009-0720 ("Had the Respondent conducted even minimal Internet searches before registering the Disputed Domain Name, such searches would have alerted the Respondent to the Complainant's existing mark and the Respondent would have been aware of the likelihood of confusion between the Disputed Domain Name and the Complainant's THE LAW SOCIETY mark.").
With regard to use of the Domain Name, Respondent is using the Domain Name, which falsely conveys an association with Complainants, to lead Internet users to a website, where she markets a commercial product in the same industry where Complainants offer their Black Card. The inevitable consequence is that there will be confusion, as a substantial proportion of Internet users visiting the site will be doing so in the expectation of reaching a site of, or authorized by, Complainants. When they reach the site they may realize that they have been mistaken, but in any event the objective of bringing them there will have already been achieved. As discussed in the analysis in David Foox v. Kung Fox and Bill Hicks,WIPO Case No. D2008-0472, this amounts to impersonation of the mark owner with a view to expanding coverage of the respondent's views. Respondent is illegitimately identifying her company in a confusing manner and attracting visitors to her site by trading off on Complainants' goodwill in their BLACK CARD trademarks.
Thus, the Panel finds that in this case, by using the confusingly similar Domain Name, Respondent has intentionally attempted to disrupt Complainants' business and to attract Internet users to her company's website by creating a likelihood of confusion with Complainants' well-known BLACK CARD marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. This amounts to bad faith use within the broad ambit of the Policy.
If Respondent wishes to offer a card with membership features that convey an exclusive luxury presentation, she can do so in any number of ways without improperly taking advantage of Complainant's BLACK CARD trademarks. See David Foox v. Kung Fox and Bill Hicks,WIPO Case No. D2008-0472 (the manipulation of the complainant's name as a domain name is an abuse within the broad ambit of the Policy, where the intentions of respondent are to cause initial interest confusion with a view to expanding coverage of the respondent's views). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to Complainants.
Christopher S. Gibson
Sole Panelist
Date: September 7, 2016
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