American Airlines, Inc. v. Zx Domains c/o Sezar Sak
Claim Number: FA0902001247065
Complainant is American Airlines, Inc. (“Complainant”), represented by Kristin
Jordan Harkins of Conley Rose, P.C., Texas, USA. Respondent is Zx Domains c/o Sezar Sak (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanairlinesvacation.com>, registered with Retail Domains Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 10, 2009; the National Arbitration Forum received a hard copy of the Complaint February 13, 2009.
On February 11, 2009, Retail Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <americanairlinesvacation.com> domain name is registered with Retail Domains Inc. and that Respondent is the current registrant of the name. Retail Domains Inc. verified that Respondent is bound by the Retail Domains Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 2009, 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 March 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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:
1. The domain name that Respondent registered, <americanairlinesvacation.com>, is confusingly similar to Complainant’s AMERICAN AIRLINES mark.
2. Respondent has no rights to or legitimate interests in the <americanairlinesvacation.com> domain name.
3. Respondent registered and used the <americanairlinesvacation.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Airlines, Inc., is one of the world’s largest airlines providing air transportation and related goods and services. Complainant has used its AMERICAN AIRLINES mark in connection with its goods and services continuously since April 1934. Complainant holds a registration of its AMERICAN AIRLINES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 514,294 issued August 23, 1949).
Respondent registered the <americanairlinesvacation.com> domain name May 16, 2008. The disputed domain name resolves to a website that contains numerous hyperlinks to various third-party websites, some of which are in direct competition with 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant established rights in the AMERICAN AIRLINES mark under Policy ¶ 4(a)(i) because it holds a registration of this mark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
domain name contains Complainant’s entire AMERICAN AIRLINES mark, adds the
generic and descriptive term “vacation,” and adds the generic top-level domain
(“gTLD”) “.com.” Accordingly, the Panel
finds that these additions to Complainant’s mark do not distinguish the
disputed domain name from Complainant’s mark for the purposes of confusing
similarity, and the Panel finds that the <americanairlinesvacation.com>
domain is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6,
2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity [sic] or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 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 Jerry
Damson, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the in the disputed domain name. The Panel finds that Complainant made a prima facie showing under Policy ¶ 4(a)(ii). 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.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s disputed <americanairlinesvacation.com> domain name resolves to a website that contains numerous hyperlinks to various third-party websites, some of which are in direct competition with Complainant. Accordingly, the Panel is permitted to make an inference that Respondent receives click-through fees for these hyperlinks. The Panel finds that this is a diversion of Internet users for Respondent’s commercial benefit, and is therefore not 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 ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Moreover, Respondent is listed in its WHOIS information as “Zx Domains c/o Sezar Sak,” which does indicate that it is commonly known by the <americanairlinesvacation.com> domain name. Respondent has not offered any evidence to suggest otherwise. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent uses its confusingly similar <americanairlinesvacation.com> domain
name to divert Internet users to Complainant’s competitors through hyperlinks that
are displayed on the resolving website.
The Panel finds that this diversion suggests that Respondent registered
the disputed domain with the intention of disrupting Complainant’s business and
is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See St.
Lawrence Univ. v. Nextnet Tech, FA
881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by
redirecting Internet users seeking information on Complainant’s educational
institution to competing websites, Respondent has engaged in bad faith
registration and use pursuant to Policy ¶
4(b)(iii).”); see also Am. Airlines, Inc. v.
Furthermore, Respondent is using the aforementioned
hyperlinks for profit by redirecting Internet users to Complainant’s
competitors. Accordingly, the Panel
finds that Respondent’s commercial benefit from this redirection constitutes
bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is
trading off of the goodwill surrounding Complainant’s mark. See Dell Inc. v. Innervision Web Solutions,
FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith
under Policy ¶ 4(b)(iv) where the respondent was using the
<dellcomputerssuck.com> domain name to divert Internet users to
respondent’s website offering competing computer products and services); see also
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanairlinesvacation.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 7, 2009.
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