Americanexpressonlinecasino.net, Americanexpressonlinecasino.org

The timeline behind americanexpressonlinecasino.net

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. Fred Davis Claim Number: FA0810001227726 PARTIES Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K Cahill, of American Express Marketing & Develpment Corp., New York, USA. Respondent is Fred Davis (“Respondent”), London, Great Britain. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org>, registered with Godaddy.com, Inc. 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. Bruce E. Meyerson as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 6, 2008. On October 3, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 3, 2008 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@americanexpressonlinecasino.net and postmaster@americanexpressonlinecasino.org by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names are confusingly similar to Complainant’s AMERICAN EXPRESS mark. 2. Respondent does not have any rights or legitimate interests in the <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names. 3. Respondent registered and used the <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, American Express Marketing & Development Corp., through its predecessor companies, began using its AMERICAN EXPRESS mark in 1850 in conjunction with its financial services business and continues that use today. Complainant is now a multi-national company operating worldwide, and earned over $27 billion in revenue in 2007. Complainant holds hundreds of trademark registrations for its AMERICAN EXPRESS mark with numerous governmental authorities around the world, including with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 19,552). While Complainant did not provide registration dates for this trademark registration or the many others referenced in the Complaint and accompanying documents, these trademark registrations almost certainly predate Respondent’s registration of the <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names, which were registered on August 10, 2008, and absent any challenge from Respondent, the Panel so finds. Respondent is using the disputed domain names to resolve to a parked website promoting the credit card programs of Complainant’s competitors. 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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’s trademark registration for the AMERICAN EXPRESS mark with the UKIPO, as well as many other governmental authorities, adequately establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also National Westminster Bank plc v. Westbrom, FA 1008190 (Nat. Arb. Forum July 25, 2007) (“The Panel finds Complainant’s registration of its NATWEST mark with the UKIPO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”). Respondent’s <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names contain Complainant’s AMERICAN EXPRESS mark in its entirety and add the generic terms “online” and “casino” as well as the generic top-level domains (“gTLD”) “.net” and “.org.” The Panel finds that Complainant’s well-known AMERICAN EXPRESS mark remains the dominant portion of the disputed domain names, and the additions of the generic terms and gTLDs do not provide any distinction. Therefore, the Panel concludes that Respondent’s <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names are confusingly similar to Complainant’s AMERICAN EXPRESS mark pursuant to Policy ¶ 4(a)(i). See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has alleged that Respondent lacks rights and legitimate interests in the <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Although Respondent has not responded to the Complaint, the Panel nevertheless will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant contends that Respondent is not licensed or otherwise authorized to register domain names containing Complainant’s AMERICAN EXPRESS mark. The WHOIS information identifies Respondent as “Fred Davis,” which does not implicate any affiliation between Respondent and Complainant. Therefore, based on the evidence in the record, the Panel concludes that Respondent is not commonly known by the <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Respondent is using the <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names to display a parked website promoting the services of Complainant’s competitors. Respondent presumably earns click-through fees for each redirected Internet user. The Panel therefore concludes that Respondent’s use of the disputed domain names constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Lockheed Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat. Arb. Forum Jan. 23, 2008) (finding the respondent’s use of the disputed domain name to establish a parked page advertising services in competition with the complainant’s business, where respondent received click-through fees, did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also MEDIATIS S.A. v. Packalo S.A.RL. Cyberger & Stan Virgiliu, D2007-0312 (WIPO June 12, 2007) (“The website to which the domain name resolved, although active, only consisted in a parking page, hosted by Sedo and containing sponsored links to competitors of the Complainant. This use does not qualify as a bona fide offering of goods or services. Neither does it qualify as a non-commercial or fair use of the domain name.”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent’s website resolving from the disputed domain names promotes competing services that are likely to disrupt Complainant’s business by diverting customers to Complainant’s competitors. This evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors in the financial services industry); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel has established that Respondent’s <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names are confusingly similar to Complainant’s AMERICAN EXPRESS mark. The Panel also believes, as Complainant alleges, that Respondent is attempting to capitalize on this likelihood of confusion for Respondent’s own commercial gain. Respondent’s presumed accrual of click-through fees for each redirected Internet user demonstrates its attempt to profit off of the goodwill associated with Complainant’s AMERICAN EXPRESS mark. Therefore, the Panel concludes that Respondent’s registration and use of the <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website that resolved from the disputed domain name); see also Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). 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 <americanexpressonlinecasino.net> and <americanexpressonlinecasino.org> domain names be TRANSFERRED from Respondent to Complainant. Bruce E. Meyerson, Panelist Dated: November 14, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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