American Airlines, Inc. v. Hall Fame / Brunes Jeans
Claim Number: FA2006001901895
Complainant is American Airlines, Inc. (“Complainant”), represented by Marc Trachtenberg of Greenberg Traurig LLP, Illinois, USA. Respondent is Hall Fame / Brunes Jeans (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <americancustomercare.us> and <americanphonesnumber.us>, registered with Namecheap, Inc..
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2020; the Forum received payment on June 26, 2020.
On June 29, 2020 and June 30, 2020, Namecheap, Inc. confirmed by e-mail to the Forum that the <americancustomercare.us> and <americanphonesnumber.us> domain names are registered with Namecheap, Inc. and that Respondent is the current registrant of the names. Namecheap, Inc. has verified that Respondent is bound by the Namecheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@americancustomercare.us, postmaster@americanphonesnumber.us. Also on July 1, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the entities that control the disputed domain names are effectively the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the domain names were registered using the same registrar, incorporating the same mark in a similar manner, and resolving to virtually identical websites. Complainant also shows that the domain names are hosted at the same IP address. The Panel finds that Complainant has provided sufficient evidence to show that the disputed domain names are controlled by the same person or entity and will refer to them as one Respondent.
A. Complainant
1. Respondent’s <americancustomercare.us> and <americanphonesnumber.us> domain names are confusingly similar to Complainant’s AMERICAN mark.
2. Respondent does not have any rights or legitimate interests in the <americancustomercare.us> and <americanphonesnumber.us> domain names.
3. Respondent registered and uses the <americancustomercare.us> and <americanphonesnumber.us> domain names in bad faith.
B. Respondent failed to submit a response in this proceeding.
Complainant is the second largest air carrier in the world. Complainant holds a registration for the AMERICAN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,288,639, registered Sep. 19, 2017).
Respondent registered the <americancustomercare.us> and <americanphonesnumber.us> domain names on January 2, 2020 and December 16, 2019, respectively, and uses them to impersonate Complainant.
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."
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the AMERICAN mark for the purposes of Policy ¶ 4(a)(i) based on registration of the mark with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <americancustomercare.us> and <americanphonesnumber.us> domain names contain Complainant's AMERICAN mark, and merely add the generic terms "customer care" or "phones number" and the ".us" ccTLD. These changes do not distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Accordingly, the Panel finds that Respondent’s <americancustomercare.us> and <americanphonesnumber.us> domain names are confusingly similar to Complainant’s AMERICAN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <americancustomercare.us> and <americanphonesnumber.us> domain names, as Respondent is not commonly known by the domain names. Complainant has not authorized, licensed, or consented to Respondent's use of the AMERICAN mark. The WHOIS information for the <americancustomercare.us> domain name lists the registrant as "Hall Fame" and the <americanphonesnumber.us> domain name lists the registrant as “Brunes Jeans.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant contends that Respondent fails to use the <americancustomercare.us> and <americanphonesnumber.us> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent uses the disputed domain names to impersonate Complainant and defraud users. Passing off as a complainant in furtherance of a fraudulent scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides screenshots of the webpages resolving from the disputed domain names, which display Complainant's marks, logos and company information, and copyrighted photographs of Complainant's airplanes. Complainant contends that the domain names could be used to fraudulently charge users for services, steal their personal information, or defraud users into believing Respondent is associated with Complainant. The Panel agrees and finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶ 4(c)(ii) or Policy ¶ 4(c)(iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <americancustomercare.us> and <americanphonesnumber.us> domain names to impersonate Complainant. Passing off as a complainant demonstrates bad faith under Policy ¶¶ 4(b)(iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts); see also Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the mark when it registered the disputed domain names, given Respondent's use of the domain names to impersonate Complainant. The Panel agrees and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americancustomercare.us> and <americanphonesnumber.us> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 27, 2020
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