American Airlines, Inc. v. James Banner / 99digitalservice
Claim Number: FA2008001910818
Complainant is American Airlines, Inc. (“Complainant”), represented by Marc Trachtenberg of Greenberg Traurig LLP, Illinois, USA. Respondent is James Banner / 99digitalservice (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <americanphonenumber.us>, <americanairlinescustomerservice.us>, <americancustomerservice.us>, and <americanreservations.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 31, 2020; the Forum received payment on August 31, 2020.
On September 1, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <americanphonenumber.us>, <americanairlinescustomerservice.us>, <americancustomerservice.us>, and <americanreservations.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 U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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 the attention of the following:
postmaster@americanphonenumber.us, postmaster@americanairlinescustomerservice.us, postmaster@americancustomerservice.us, and postmaster@americanreservations.us.
Also on September 3, 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 September 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). 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.
A. Complainant
Complainant is engaged in the business of offering air transport services for passengers and cargo worldwide.
Complainant holds a registration for the AMERICAN AIRLINES service mark, which is on file with the United States Patent and Trademark Office (“USPTO”)
as Registry No. 4,939,082, registered April 19, 2016.
Respondent registered the domain names identified below on the date indicated for each:
|
<americanphonenumber.us> |
October 3, 2019 |
|
<americanairlinescustomerservice.us> |
October 1, 2019 |
|
<americancustomerservice.us> |
October 3, 2019 |
|
<americanreservations.us> |
October 3, 2019 |
All of the domain names are confusingly similar to Complainant’s AMERICAN AIRLINES mark.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use the AMERICAN AIRLINES mark.
Respondent does not use the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain names to impersonate Complainant online in order to divert Internet traffic to four websites prominently displaying Complainant’s mark as well as Complainant’s copyrighted photographs of airplanes, and offering for sale competing air travel booking services for Respondent’s commercial gain.
Respondent has no rights to or legitimate interests in the domain names.
Respondent knew of Complainant’s rights in the AMERICAN AIRLINES mark when it registered the domain names.
Respondent used false WHOIS information to register the domain names.
Respondent registered or uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
Complainant has rights in the AMERICAN AIRLINES service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum August 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO [mark] registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ (a)(i)....
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <americanphonenumber.us>, <americanairlinescustomerservice.us>, <americancustomerservice.us> and <americanreservations.us> domain names are confusingly similar to Complainant’s AMERICAN AIRLINES mark. The domain names incorporate either the entirety of the mark in one case, or its dominant component in the others, with the deletion of the space between its terms in the one case and the addition of various generic terms in all of them which relate to an aspect of Complainant’s business, plus the country code Top-Level Domain (“ccTLD”) “.us.” These alterations of the mark, made in forming the domain names, do not save it from the realm of confusing similarity under the standards of the Policy.
On the point of Respondent’s addition to the domain names of generic terms relating to Complainant’s business, see, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
[I]t is a well-established principle that generic top-level domains [gTLD’s] are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
And, specifically as to Respondent’s inclusion of the dominant portion of Complainant’s AMERICAN AIRLINES service mark, together with generic terms relating to various aspects of Complainant’s business, in each of the domain names <americanphonenumber.us>, <americanreservations.us> and <americancustomerservice.us>, see, for example, Accor and D-EDGE v. WhoisGuard, Inc., et al., D2020-1870 (WIPO September 15, 2020):
This Panel must first determine whether the disputed domain name … is identical or confusingly similar to a trademark or service mark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates the dominant portion of Complainants’ registered trademark …, and merely adds a hyphen with the term “hotels”, which is likely to be perceived by consumers as referring to Complainants’ hospitality services,….
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the AMERICAN AIRLINES mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “James Banner / 99digitalservice,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent,
that Respondent is not making either a bona fide offering of goods or services via the disputed domain names or a legitimate noncommercial or fair use of them as provided in Policy ¶¶ 4(c)(ii) and (iv), respectively, in that Respondent uses the domain names to impersonate Complainant online in order to divert Internet traffic to four websites prominently displaying Complainant’s mark as well as Complainant’s copyrighted photographs of airplanes, and offering for sale competing air travel booking services for Respondent’s commercial gain. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iv) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017):
A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are satisfied by the evidence that Respondent has employed the disputed
<americanphonenumber.us>, <americanairlinescustomerservice.us>, <americancustomerservice.us> and <americanreservations.us> domain names, which we have found to be confusingly similar to Complainant’s AMERICAN AIRLINES service mark, to attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with them. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names. See, for example, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent used a disputed domain name to resolve to a website at which that respondent passed itself off as a UDRP complainant while offering for sale services in direct competition with the business of that complainant).
We are also persuaded by the evidence that Respondent knew of Complainant’s rights in the AMERICAN AIRLINES mark when it registered the four disputed domain names. This further illustrates Respondent’s bad faith in registering them. See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent had knew of a UDRP complainant's rights in a mark when registering a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <americanphonenumber.us>, <americanairlinescustomerservice.us>, <americancustomerservice.us>, and <americanreservations.us> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 1, 2020
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