American Airlines, Inc. v. Domain Active Pty. Ltd. c/o Domain Hostmaster
Claim Number: FA0809001223579
Complainant is American Airlines, Inc. (“Complainant”), represented by Kristin
Jordan Harkins, of Conley Rose, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aa-vacations.com>, registered with Fabulous.com Pty Ltd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 10, 2008.
On September 8, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <aa-vacations.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 September 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 1, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is one of the world’s largest airlines, marketing its air transportation and related services under the AA and AA.COM marks, among others.
Complainant registered the AA service mark with the United States Patent and Trademark Office (“USPTO”) on August 23, 1949 (Reg. No. 514, 292), and Complainant registered the AA.COM service mark with the USPTO on April 11, 2000 (Registry No. 2,339,639).
Complainant owns the domain name registration for <aa.com>, which incorporates the AA.COM mark in its entirety.
Complainant also owns the registration for the domain name <aavacations.com>.
Complainant has used the AA mark continuously in commerce since at least December, 1935, and it has used the AA.COM mark continuously in commerce since at least February, 1998.
Respondent registered the <aa-vacations.com> domain name on July 1, 2002.
Respondent is not commonly known by the <aa-vacations.com> domain name, nor has it ever been the owner or licensee of the AA.COM mark.
The disputed domain name resolves to a website that provides links to third-party sites offering travel and vacation planning services that compete with Complainant’s business.
Respondent benefits commercially from these third-party links through the receipt of “click-through” fees.
Respondent’s <aa-vacations.com> domain name is confusingly similar to Complainant’s AA.COM mark.
Respondent does not have any rights to or legitimate interests in the <aa-vacations.com> domain name.
Respondent registered and uses the <aa-vacations.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is 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."
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 a 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:
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 or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the AA.COM service mark sufficiently for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. 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.”
Complainant contends that Respondent’s <aa-vacations.com> domain name is confusingly similar to Complainant’s AA.COM mark. We agree. The <aa-vacations.com> domain name differs from Complainant’s mark in but two ways: (1) a hyphen has been added after the letters “AA”; and (2) the descriptive term “vacations” has been added after the hyphen. Neither the addition of a hyphen nor the addition of such a descriptive term sufficiently distinguish a domain name from an incorporated mark for purposes of Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003):
The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.
See also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Therefore, these changes do not eliminate the resulting likelihood of confusion, so that Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after a trademarked name were confusingly similar to that trademark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights to and legitimate interests in the <aa-vacations.com> domain name. Under Policy ¶ 4(a)(ii), after a complainant makes a prima facie showing under this heading, a respondent has the burden of showing evidence that it does have rights to or legitimate interests in the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). Respondent, for its part, has failed to respond to the Complaint. In such circumstances, we are permitted to conclude that Respondent has no rights to or interests in its domain name cognizable under the Policy. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). We will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights or interests under the criteria set out in Policy ¶ 4(c).
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <aa-vacations.com> domain name, nor has it ever been the owner or licensee of the AA.COM mark. We also note that Respondent has been identified in the pertinent WHOIS record as “Domain Active Pty. Ltd. c/o Domain Hostmaster.” We therefore conclude that Respondent is not commonly known by the <aa-vacations.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); 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").
We next observe that there is no dispute as to Complainant’s allegation to the effect that Respondent maintains a website at the <aa-vacations.com> domain name which features links to third-party websites offering services that compete with Complainant’s business. Complainant further contends, and Respondent does not deny, that Respondent benefits commercially from these links through the receipt of “click-through” fees. Such use of the <aa-vacations.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with the business of a complainant was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that a respondent’s use of a domain name to operate a pay-per-click search engine, in competition with the business of a complainant, was not a bona fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed domain name to divert Internet customers from Complainant’s website to Respondent’s website that resolves from the disputed domain name, through the confusion caused by the similarity between the AA.COM mark and the <aa-vacations.com> domain name. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
Complainant also contends that the click-through fees that
Respondent receives from the third-party advertisements allow Respondent to
gain commercially from its diversion of Internet users as alleged in the
Complaint. This behavior is an
intentional use of the disputed domain name for commercial gain through a
likelihood of confusion with Complainant’s mark, and, pursuant to Policy ¶ 4(b)(iv), it is evidence of Respondent’s registration and use of
its domain name in bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’” To the same effect, see also Bank
of Am. Corp. v.
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <aa-vacations.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 14, 2008
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