Amexplatinumtravelservice.com + 5 more domains

The timeline behind amexplatinumtravelservice.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION American Express Marketing & Development Corp. v. Gold Coast Employee Relations c/o Michael Corrigan Claim Number: FA0603000662950 PARTIES Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill, of American Express Marketing & Development Corp., 200 Vesey Street (49-12), New York, NY 10285. Respondent is Gold Coast Employee Relations c/o Michael Corrigan (“Respondent”), represented by Michael Corrigan, of Gold Coast Employee Relations Pty Ltd., PO Box 814, Broadbeach 4218 Queensland, Australia. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info>, <centuriontravelservice.com> and <centuriontravelservice.info>, registered with Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain. PANEL The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Carol M. Stoner, Esq. sits as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 24, 2006. On March 28, 2006, Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain confirmed by e-mail to the National Arbitration Forum that the <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info>, <centuriontravelservice.com> and <centuriontravelservice.info> domain names are registered with Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain and that the Respondent is the current registrant of the name. Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain has verified that Respondent is bound by the Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain 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 March 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April19, 2006 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@amexplatinumtravelservice.com, postmaster@amexplatinumtravelservice.info, postmaster@amexcenturiontravelservice.com, postmaster@amexcenturiontravelservice.info, postmaster@centuriontravelservice.com and postmaster@centuriontravelservice.info by e-mail. A timely Response was received and determined to be complete on April 4, 2006. An Additional Submission from Complainant was received on April 10, 2006 and the National Arbitration Forum determined it to be timely and complete in accordance with Supplemental Rule 7. An Additional Submission from Respondent was received on April 10, 2006 and the National Arbitration Forum determined it to be timely and complete in accordance with Supplemental Rule 7. On April 17, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant makes the following allegations: 1. Respondent’s domain names are confusingly similar to Claimant’s marks; 2. Respondent does not have any rights nor legitimate interests in the <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info>, <centuriontravelservice.com> and <centuriontravelservice.info> domain names. 3. Respondent registered and used the <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info>, <centuriontravelservice.com> and <centuriontravelservice.info>domain names in bad faith. B. Respondent makes the following allegations: 1. Respondent denies that his domain names are confusingly similar to AMEX and CENTURION trademarks and corporate names; 2. Respondent alleges that he has rights and legitimate interests in all of the disputed domain names; and 3. Respondent denies that he registered or used any of the disputed domain names in bad faith. C. Additional Submissions Claimant disputes certain assertions made by Respondent in its response. Namely, that Claimant has not agreed to pay any monetary compensation to Respondent, not even in the form of a charitable donation; that the two remaining domains at issue incorporate Claimant’s registered Centurion mark and merely add two descriptive words that reflect the travel related services offered by Complainant in the United States and around the world under its CENTURION mark, American Express’s first use of CENTURION in the United States in connection with related services predates Respondent’s Delaware incorporation by over six years and American Express’ CENTURION mark was granted a United States trademark registration over four (4) years prior to Respondent’s corporate filing. Respondent is not commonly known by the disputed domain names, pursuant to policy Par. (4)c) (ii), as WHOIS records reflect that Respondent identifies itself as Gold Coast Employee Relations. Respondents’ arguments that “its marks and branding are distinctly different” are irrelevant, as is also, Respondents’ residential status and domicile. Finally, Complainant states in additional submission, that Respondents’ mere registration of the six domains at issue is evidence of Respondents intent to trade on the goodwill of Complainant, and also constitutes an inference that Respondent acted in bad faith and with actual knowledge of Complainant and its marks. The Panel finds Claimant’s assertions to be persuasive. Respondent filed a timely response to additional submission, wherein Respondent consented to the transfer of four domain names to American Express Co., but denied that they were registered in bad faith. Respondent laments that AMEX would not make a donation to charity for Respondent’s incurred expenses. Respondent continued to assert that <centuriontravelservice.com> and <centuriontravelservice.info>domain names are legitimate domains for existing businesses; that AMEX does not use the disputed Centurion mark as part of its business name; and that they are not trying to trade on the goodwill of AMEX. FINDINGS Complainant, American Express Company, is in the business of providing a wide variety of goods and services, including travel, rewards programs, charges cards, credit cards, smart card and stored value card services and banking cards. Complainant holds over 300 trademark registrations for AMEX in over 80 countries around the world, including Australia and the United Kingdom, and 75 trademark registrations for CENTURION in 48 countries around the world including Australia and the United Kingdom. American Express owns an Australian trademark registration for CENTURION TRAVEL SERVICE, under Registration No. 958,660 covering, “passenger travel services, namely, passenger tickets and tour arrangements, passenger transportation, tour and sightseeing reservation services, arranging for automobile rental and cruises.” American Express currently has millions of cardholders, worldwide and annually grosses billions in revenue. American Express extensively advertises its trademarks and service marks through television, radio and print advertising, through statement inserts, through brochures available at merchant sites and on the American Express website at <americanexpress.com>. American Express also spends billions annually in marketing, promotions, rewards and card member services worldwide. As such, the AMEX and CENTURION trademarks and names are famous and in wide use worldwide. Respondent registered the following domain names with Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain: <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info>, <centuriontravelservice.com> and <centuriontravelservice.info>. Currently, <centuriontravelservice.com> is the only domain name that connects to an active web site where visitors are provided with information about travel and travel-related service. 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; 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 following marks by registering them with the United States Patent and Trademark Office (“USPTO”): AMEX (including Reg. No. 1,149,220 issued March 24, 1981 and Reg. No. 1,161,278 issued July 14, 1981) and CENTURION (Reg. No. 1,096,266 issued July 11, 1978 and Reg. No. 2,488,068 issued September 11, 2001). Complainant hasalso established rights to the CENTURION TRAVEL SERVICE mark by registering the mark in Australia (Reg. No. 958,660 issued June 23, 2003). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Respondent’s <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info>, <centuriontravelservice.com> and <centuriontravelservice.info> domain names are confusingly similar to Complainants' AMEX, CENTURION and CENTURION TRAVEL SERVICE marks pursuant to Policy ¶ 4(a)(i), because each domain name wholly incorporates one or two of the marks and merely adds the generic term “travel service” or “platinum” and the generic top-level domain “.com” or “.info.” The mere addition of generic terms and generic top-level domains to Complainant’s marks render Respondent's domain names confusingly similar to Complainants' marks. See Amer. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum Jun. 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404(Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights to and Legitimate Interests: Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub-paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). Respondent is not commonly known by the disputed domain names, because Respondent registered the domain names as “Gold Coast Employee Relations c/o Michael Corrigan,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to register or use domain names incorporating Complainant’s AMEX or CENTURION marks or any variation. As Respondent is not commonly known by the disputed domain names, the Panel finds that Respondent does not have rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a Respondent is commonly known by a domain name, the assertion must be rejected); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail" Respondent is using the <centuriontravelservice.com> domain name to operate a travel-related website in direct competition with Complainant. The Panel finds that Respondent is misdirecting Internet users to its own website for commercial gain, and holds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website). Respondent has not made any demonstrable preparations to use the <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info> and <centuriontravelservice.info> domain names,as evidenced by the fact that said domain names do not resolve to any content from the time that Respondent registered the domain names between September and November of 2005. The Panel finds that such non-use of the disputed domain names provides evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the Respondent fails to use disputed domain names in any way). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith: Respondent has registered and is using the <centuriontravelservice.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is diverting Internet users seeking Complainant’s travel-related services to its own websites offering competing travel services. Respondent is taking advantage of the confusing similarity between Complainant’s CENTURION TRAVEL SERVICE mark and the <centuriontravelservice.com> domain name in order to profit from the goodwill associated with the mark. The Panel therefore concludes that Respondent has registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com>domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). The Panel has adduced evidence that Respondent has registered and is using the <centuriontravelservice.com> domain name for the primary purpose of disrupting Complainant’s business. Because Respondent registered the domain name on January 13, 2005, well after Complainant registered the CENTURION mark with the USPTO in 1981 and the CENTURION TRAVEL SERVICE mark in Australia in 2003, and is using the disputed domain name to operate a travel website in direct competition with Complainant, the Panel rules that Respondent’s conduct provides evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the Complainant’s PENTHOUSE mark to host a pornographic web site); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). In addition, evidence shows that Respondent is passively holding the <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info> and <centuriontravelservice.info> domain names because they have never resolved to any content. Moreover, because Complainant’s AMEX and CENTURION marks are well-known, Respondent cannot make any use of the disputed domain names without creating consumer confusion. Given the fame of Complainant’s AMEX and CENTURION marks, Respondent’s registration of domain names confusingly similar to the marks, in and of itself, constitutes bad faith registration and use 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 the Respondent has not used the domain name because “[i]t 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 CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that given the long use and fame of the Complainant’s mark, the Respondent’s registration of the <twilight-zone.net> domain name and subsequent non-use of the disputed domain name is evidence of bad faith). The Panel finds 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 <amexplatinumtravelservice.com>, <amexplatinumtravelservice.info>, <amexcenturiontravelservice.com>, <amexcenturiontravelservice.info>, <centuriontravelservice.com> and <centuriontravelservice.info> domain names shall be TRANSFERRED from Respondent to Complainant. Carol M. Stoner, Esq., Panelist Dated: May 01, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.