WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION American Express Marketing & Development Corp. v. Gabriyel Akbulut Case No. DME2010-0003 1. The Parties
Complainant is American Express Marketing & Development Corp. of New York, New York, United States of America, internally represented.
Respondent is Gabriyel Akbulut of Milford, New Jersey, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2010. On March 10, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 14, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”)(the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 7, 2010.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on April 14, 2010. 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
Complainant and its predecessors have been using the AMERICAN EXPRESS trademark since 1850 in connection with a variety of financial and travel-related services. Complainant and related companies hold numerous trademark and service mark registrations with the United States Patent and Trademark Office for the AMERICAN EXPRESS mark, including, for example, Reg. No. 1,024,840 issued November 11, 1975 and Reg. No. 1,032,516 issued February 3, 1976. Complainant also has a worldwide portfolio in excess of 1000 registrations that include the AMERICAN EXPRESS mark.
The domain name was registered on May 1, 2009. The webpage to which the disputed domain name routes displays sponsored link advertising.1 Respondent's webpage displays links to Complainant's website, and to websites of Complainant's competitors in the financial services and consumer credit sector. 5. Parties' Contentions A. Complainant
Complainant avers that it has over 92 million American Express cardholders worldwide. Complainant also states that in 2008, American Express grossed over $31 billion in revenues, with over $5 billion in expenditures for marketing, promotion, rewards, and cardmember services. Complainant further avers that its “” website receives an average of 60 million hits monthly.
In summary, Complainant's legal contentions are that:
(1) The disputed domain name is identical or confusingly similar to Complainant's AMERICAN EXPRESS mark; (2) Respondent does not have any rights or legitimate interests in the disputed domain name, and (3) Respondent registered and uses the disputed domain name in bad faith.
On the basis of these allegations, Complainant seeks transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel agrees that the disputed domain name is identical to the AMERICAN EXPRESS marks in which Complainant has rights.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant's marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-13l5.
The Panel concludes, therefore, that Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if Complainant makes out a prima facie case and Respondent enters no response. See id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainant contends that Respondent does not have legitimate interests because Respondent does not have registered trademark rights in the term “americanexpress,” and that Respondent is not commonly known by the disputed domain name. Complainant also avers that Complainant has not authorized Respondent to use its marks. In the absence of a response by Respondent, the Panel accepts these factual allegations as true.
Complainant also in essence alleges that Respondent is not making a legitimate noncommercial or fair use, since Respondent earns pay-per-click revenues from the advertising links that appear on Respondent's webpage.
The Panel agrees. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
The Panel finds that Complainant has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel's attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain name.
The Panel rules therefore that Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Given the fame of Complainant's AMERICAN EXPRESS marks, which were widely used for over a century and a half before the disputed domain name was registered, the Panel infers that Respondent had actual knowledge of Complainant's trademarks.
The Panel also infers that the disputed domain name was registered with the intention to attract Internet users to the website for commercial gain, by creating a likelihood of confusion with Complainant's marks. Under the circumstances, therefore, the Panel concludes there is no question that the disputed domain name was registered in bad faith. E.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co,WIPO Case No. D2000-0163; Akbank Turk A.S. v. Arif Bilgin, The Diamond Bar,WIPO Case No. DME2009-0009.
Respondent's website shows that the disputed domain name is used not only to promote Complainant's products, but also to promote the products of Complainant's competitors. The Panel concludes that this activity demonstrates bad faith use by Respondent. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., supra; Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; and Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088). The Panel further finds that Respondent's failure to reply to the Complaint is cumulative evidence of bad faith use.
Having found that the circumstances establish bad-faith registration and use, the Panel concludes that the requirements of Policy paragraph 4(a)(iii) are fulfilled. 7. Decision
For all 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 Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Dated: April 27, 2010
Full & Egal Universal Law Academy