National Arbitration Forum

 

DECISION

 

American Airlines, Inc. v. Proxied Domains - wlsa Client Account c/o Proxy Domain Manager

Claim Number: FA0902001248138

 

PARTIES

Complainant is American Airlines, Inc. (“Complainant”), represented by Kristin Jordan Harkins, of Conley Rose, P.C., Texas, USA.  Respondent is Proxied Domains - wlsa Client Account c/o Proxy Domain Manager (“Respondent”), represented by Maria Bergsten, of Renova, Ltd., Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <americanairlinevacation.com>, registered with Fabulous.com Pty Ltd.

 

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.

 

Roberto A. Bianchi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 19, 2009.

 

On February 18, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <americanairlinevacation.com> domain name is registered with Fabulous.com Pty Ltd. and that the 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 February 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 16, 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 postmaster@americanairlinevacation.com by e-mail.

 

A timely Response was received and determined to be complete on March 16, 2009.

 

On March 24, 2009, The Forum received an Additional Submission from Complainant.

 

On March 30, 2009, Respondent submitted a Reply to Complainant’s Supplemental Filing.

 

On March 25, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

In its Complaint, Complainant contends the following:

 

Complainant has legitimate rights to the marks AMERICAN AIRLINES® and AMERICANAIRLINES VACATIONS™. Complainant’s mark AMERICAN AIRLINES®, which Complainant has continuously used in connection with air transportation services since at least as early as April 1934, has acquired significant goodwill, widespread public recognition, and fame as a means by which Complainant and its various goods and services are known to the public and their source of origin are identified.  Moreover, Complainant has developed substantial common law rights in the service mark AMERICANAIRLINES VACATIONS™, which is prominently displayed on Complainant’s web site <aavacations.com> to advertise and promote Complainant’s services.  The disputed domain name <americanairlinevacation.com> is confusingly similar to Complainant’s registered AMERICAN AIRLINES® mark and to Complainant’s common law mark AMERICANAIRLINES VACATIONS™.

 

Respondent has no rights or legitimate interests in the disputed domain name. Upon information and belief, Respondent has not used and does not use the disputed domain name in connection with a bona fide offering of goods or services. The americanairlinevacation.com domain name resolves to a web site featuring category links such as “Cheap Airfare” and “Vacation Packages.”  Clicking on these links brings up a “Sponsored Results” listing of various commercial web sites from which Respondent presumably receives click-through fees.  These sites offer travel and vacation planning services in competition with Complainant, including the web site of a competitor airline company “United.com”.  No available evidence suggests that Respondent has ever been commonly known by the disputed domain name.  The domain name at issue is not the nickname of Respondent or in any other way identified with or related to a legitimate interest of Respondent. Complainant has not licensed or otherwise permitted Respondent to use any of Complainant’s marks or to apply for or use any domain name incorporating any of Complainant’s marks, including Complainant’s famous mark AMERICAN AIRLINES® and Complainant’s common law mark AMERICANAIRLINES VACATIONS^TM..

 

Respondent has registered and is using the disputed domain names in bad faith. Respondent is a “typo domain name pirate” or “typo squatter” because it registered and is using a domain name comprising a misspelled variation of the Complainant’s common law AMERICANAIRLINES VACATIONS™ mark.  Typosquatting is evidence of bad faith registration and use in violation of Policy ¶ 4(a)(iii).  The disputed domain name resolves to a web site featuring links to commercial travel and vacation planning web sites from which Respondent presumably receives click-through fees, including links to web sites of competitor airlines.  These factors support a conclusion that Respondent registered the domain name americanairlinevacation.com for the primary purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or of a product or service on Respondent’s web site in violation of ICANN Policy ¶ 4(b). 

 

 

B. Respondent

 

In its Reply, Respondent requests that the domain name in dispute be transferred to Complainant without further findings of fact or liability, including those related to the elements set forth in paragraph 4(a) of the UDRP Policy. Respondent adds that the stipulation of the Respondent to the transfer acts as an acceptance of the remedy demanded in the complaint. Respondent also argues that it did not registere the disputed domain name in bad faith, but with a purpose of using the domain name in Respondent’s direct navigation business model, since the domain name consists of generic or descriptive terms.

 

C. Additional Submissions

Complainant’s Additional Submission basically consists of a request that the Panel dismiss Respondent’s request for transfer based on unilateral consent, and instead order transfer of the domain name based on findings as to Policy ¶ 4(a) (identicality, lack of legitimate rights or interests and bad faith registration and use). Since many UDRP panels routinely grant transfer without making any further findings where a respondent unilaterally and unconditionally requests transfer of the domain name to the complainant, and because Complainant’s Additional Submission does not contain any new information or arguments that Complainant could not have anticipated, this Additional Submission appears to be superfluous and will not be considered by the Panel. Accordingly, the Panel need not consider Respondent’s reply thereto. See Elec. Commerce Media, Inc. v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 11, 2000) (the panel disregarded the additional submissions of both parties, stating: “Although Article 7 of The Forum’s Supplemental Rules purports to permit such supplemental filings, the Rule does not require a Panel to accept those materials. In fact, the Supplemental Rule could not require Panels to accept these supplemental filings because that would violate Uniform Rule 12 of the ICANN Policy, which vests the discretion to request and accept supplemental materials solely with the Panel. No provider’s Supplemental Rules can override the Policy or Uniform Rules and the discretion they vest in the Panels appointed thereunder. Because no new information or arguments were supplied within the supplemental filings, and because the Panel had no questions for the parties to address in supplemental materials, the Panel will not consider either Complainant’s reply or Respondent’s sur-reply.”). This Panel agrees with the Elec. Commerce Media panel that a provider’s supplemental rule cannot require panels to accept supplemental filings. This Panel believes that The Forum’s Supplemental Rule 8 should be read and construed as including only such additional submissions made under Supplemental Rule 7 and accepted for consideration by the panel.[1]

 

 

FINDINGS

In the present case there is basic coincidence between the remedy requested by Complainant and the unilateral consent to transfer stipulated by Respondent. Accordingly, transfer should be granted.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Where a respondent unilaterally and unconditionally consents to transfer the domain name in dispute, panels may also issue orders for transfer of disputed domain names without making findings as to Policy ¶ 4(a). In the present case, Respondent requests that the Administrative Panel approves the remedy requested by the Complainant, i.e., that the disputed domain names be transferred to Complainant. Does this request of Respondent amount to a unilateral consent to transfer? The Panel believes it does, because immediately after receiving notice of the complaint, Respondent offered Complainant to transfer the domain name without conditions and expeditiously, a fact that Complainant has not denied, although it has depicted Respondent’s request as a scheme to escape a decision based on a finding in respect of ¶ 4(a). Respondent’s stipulation for transfer in the present proceeding means a clear agreement to the remedy requested by Complainant – transfer. As to Respondent’s argument that it did not register the disputed domain name in bad faith, the Panel believes that it is subsidiary in nature to Respondent’s unilateral and unconditional consent to transfer, and does not contradict such stipulation. Thus, the instant case is similar to those cases where panels granted transfer based on respondent’s consent, such as in Williams-Sonoma, Inc. v. EZ-Port, D2000-0207 (WIPO May 5, 2000) (although in Williams-Sonoma the respondent had not submitted any response). This Panel, like the panel in Williams-Sonoma believes that “the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.” See also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

DECISION

Considering that Respondent has stated its unconditional consent to the remedy of transfer requested by Complainant, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the domain name <americanairlinevacation.com> be TRANSFERRED from Respondent to Complainant.

 

 

Roberto A. Bianchi, Panelist
Dated: April 8, 2009

 

 

 

 

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