American Airlines, Inc. v.
MegaWeb.com Inc.
Claim Number: FA1001001305263
PARTIES
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 <americanairways.com>, registered
with Tucows
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
on January 27, 2010. With its Complaint, Complainant also chose to
proceed entirely electronically under the new Rules for Uniform Domain Name
Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by
submitted an “opt-in” form available on the Forum’s website.
On January 28, 2010, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <americanairways.com> domain name is
registered with Tucows Inc. and that the
Respondent is the current registrant of the name. Tucows Inc.
has verified that Respondent is bound by the Tucows
Inc. 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 January 28, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of February 17, 2010 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@americanairways.com.
A timely Response was received and determined to be complete on February 16, 2010. Respondent chose to opt-in to the electronic
process with its submission and submitted its Response in electronic copy only.
An Additional Submission was received from Complainant on February 22, 2010 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On February 25, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator,
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
A. Complainant's Legitimate Rights to the Mark
AMERICAN AIRLINES®
Complainant, American
Airlines, Inc. is engaged in the business of air transportation and related
goods and services and is one of the world's largest airlines. Complainant has
acquired a nationwide reputation for quality goods and services, and has accumulated
substantial public goodwill. In the course of its business, Complainant
has acquired extensive rights in numerous trade names, trademarks and service
marks. Complainant advertises, promotes and sells its goods and services
directly to the ultimate consumer as well as through travel agencies and other
third parties. The methods of advertising, promoting and sales are many,
including on the Internet.
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.
Complainant has also adopted and developed substantial rights and goodwill in an entire family of trademarks and service marks that incorporate the term "AMERICAN AIRLINES", some identifying Complainant's air transportation services, and others identifying Complainant's related goods and services. The marks identifying Complainant's air transportation and related travel services include AMERICAN AIRLINES TRAVEL ACADEMY®, AMERICAN AIRLINES TRAVEL CENTER®, AMERICANAIRLINES TRAVEL CENTER (and Design)® and AMERICANAIRLINES INCENTIVE TRAVEL (and Design)®.
Complainant also offers related goods, such as clothing, toys, paper goods and writing instruments under the marks AMERICAN AIRLINES (Stylized)® and AMERICAN AIRLINES (and Design)®.
Complainant has expanded
its service offerings to include: publication of magazines provided under the
AMERICAN AIRLINES PUBLISHING (and Design)®, AMERICAN
AIRLINES PUBLISHING® and AMERICAN AIRLINES NEXOS® marks; financial services
provided under the AMERICAN AIRLINES FEDERAL CREDIT UNION® mark; and museum
services and related goods provided under various AMERICAN AIRLINES C.R. SMITH
MUSEUM (and Design)® marks and under the AA AMERICAN AIRLINES C.R. SMITH MUSEUM
(and Design)® mark.
Moreover, Complainant continues
to expand its widespread public recognition and fame through naming rights to
multiple sports and entertainment facilities, namely, an arena in Miami,
Florida offering entertainment services under the mark AMERICAN AIRLINES
ARENA®, a theatre in New York, New York offering entertainment services under
the mark AMERICANAIRLINES THEATRE®, and an arena in Dallas, Texas offering
promotional services under the marks AMERICAN AIRLINES CENTER® and AA AMERICAN
AIRLINES CENTER (and Design)®.
The entire family of
trademarks and service marks that incorporate the term "AMERICAN
AIRLINES" is used in commerce in connection with Complainant's goods and
services in the
Complainant has devoted considerable efforts to advertise and
promote its services under the mark AMERICAN AIRLINES® and has developed
widespread recognition and fame in the marketplace for the goods and services
offered under the mark AMERICAN AIRLINES®. Because AMERICAN AIRLINES® is a
well-known and famous mark by which Complainant American Airlines, Inc. is
identified, and also as a result of longstanding, continuous use throughout the
United States and the world since at least as early as April 1934, AMERICAN
AIRLINES® is accepted by the purchasing public as distinguishing Complainant's
goods and services from the goods and services of others. Complainant has also extensively advertised
and promoted its services offered under the mark AMERICAN AIRLINES® on the
Internet, including on the web site aa.com, to which Internet traffic is
redirected when an Internet user types in americanairlines.com. Both aa.com and americanairlines.com are
registered to Complainant.
Complainant's presence on
the Internet promotes Complainant's AMERICAN AIRLINES® air transportation
services and related goods and services, and identifies Complainant as the
source of such goods and services. The maintenance of high standards of quality
and excellence for Complainant's air transportation and related goods and
services has contributed to this valuable goodwill and reputation. The goodwill
embodied in Complainant's family of marks, and consequently Complainant's
valuable reputation and credibility in the airline industry, depend on the
integrity of the marks as identifying Complainant as the sole source of its
goods and services, and not any other source.
B. Respondent's Illegitimate Activities Relating to the Disputed Domain
Name
[a]. In accordance with ICANN Rule
3(b)(ix)(I); ICANN Policy ¶4(a)(i): The Disputed Domain Name is Confusingly
Similar to the Family of Marks in which Complainant has Rights:
The disputed domain name
"americanairways.com" is confusingly similar to Complainant's
registered AMERICAN AIRLINES® mark because the domain name incorporates a
dominant portion of Complainant's mark and merely changes the term
"airlines" to the term "airways" and adds the top-level
domain ".com." Thus, the dominant portion of the disputed domain name
is similar to the Complainant's famous mark AMERICAN AIRLINES®, and the
replacement of a tern in a mark that shares a dominant element with that term,
and addition of a top level domain fails to detract from the overall commercial
impression provided by the AMERICAN AIRLINES® mark. See
IMT Services Corp. v.
Respondent's registration
and use of the disputed domain name, which is confusingly similar to the famous
mark owned by Complainant, is misleading and causes confusion to consumers who
are diverted away from Complainant's web site at aa.com where Internet users
can purchase air transportation and other services directly from Complainant.
[b]. In accordance with ICANN Rule 3(b)(ix)(2);
ICANN Policy ¶4(a)(ii), 4(c): The Respondent Has No Rights or Legitimate
Interests in the Disputed Domain Name:
Upon information and belief, Respondent has not and does not use
the disputed domain name in connection with a bona fide offering of
goods or services. When an Internet user
types in "americanairways.com", the disputed domain resolves to a web site featuring the headings
"American Airline Flights", "Book A
Flight", "American Airline Tickets" and "Cheapest Airplane
Tickets". Clicking on any of these category links brings up a
"Sponsored Links" list of various commercial web sites offering
travel and vacation planning services which compete with Complainant, and from
which Respondent presumably receives click-through fees. Alongside the
"Sponsored Links" are additional lists of category links under the
headings "Best Deals", ''Top Picks" and "Most
Popular." The category links include additional travel-related categories,
such as "Airlines", "Flight Prices" and "Low Cost
Airlines". Clicking on "Flight Prices" brings up another
"Sponsored Links" list of commercial web sites offering travel and
vacation planning services, and from which Respondent presumably receives
click-through fees, as well as additional category listings. Category links
similar to the headings at the top of the home page are also found at the
bottom of the home page.
The americanairways.com
home page also features lists of category links along the left side of the page
under the headings "Top Picks", "Most Popular", "Best
Deals" and "Hot Favorites", including the categories "Last
Minute Airfares", "Online Flight Bookings" and "Book a
Flight". Clicking on "Last Minute Airfares" brings up a
"Sponsored Links" list of various commercial web sites offering
travel and vacation planning services which compete with Complainant, and from
which Respondent presumably receives click-through fees, as well as additional
category listings.
The americanairways.com
home page also features lists of category links under travel-related photos,
including the categories "Vacation Packages", "International
Travel" and "Cheapest Airplane Tickets". Clicking on
"Vacation Packages" brings up a "Sponsored Links" list of
various commercial web sites offering travel and vacation planning services
which compete with Complainant, and from which Respondent presumably receives
click-through fees, as well as additional category listings.
The americanairways.com
web site also provides a search engine that allows Internet users to input a
search string to bring up relevant "Sponsored Links" of commercial
web sites. For example, when the search string "airline tickets" is
entered, the Internet user is presented with "Sponsored Links" of
commercial websites offering travel and vacation planning services in
competition with Complainant. Alongside the "Sponsored Links" are
additional lists of category links under the headings "Best Deals",
''Top Picks" and "Most Popular". The category links include
additional travel-related categories, such as "Cheap Air Line
Tickets", "Round Trip Airfares" and "Low Cost
Airlines". Clicking on "Cheap Airline Tickets" brings up another
"Sponsored Links" list of commercial web sites offering travel and
vacation planning services which compete with Complainant, and from which
Respondent presumably receives click-through fees, as well as additional
category listings.
Respondent's use of a
domain name that is confusingly similar to Complainant's mark for the purpose
of diverting Internet users to Respondent's site for its own commercial gain is
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use. See Intrawest ULC v.
No available evidence
suggests that Respondent has ever been commonly known by the disputed domain
name. Complainant submits that 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 AMERICAN AIRLINES®.
[c]. In
accordance with ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii), 4(b):
Respondent Has
Registered and Is Using the Disputed Domain Names in Bad Faith:
Respondent registered a
domain name that is confusingly similar to Complainant's mark AMERICAN
AIRLINES®, and Respondent is not commonly known by the domain name. The
disputed domain name resolves to a web site featuring category links which
bring up "Sponsored Links" to various commercial web sites from which
Respondent presumably receives referral fees. Some of these web sites offer
travel and vacation related services in direct competition with Complainant,
which is evidence of bad faith. See The Wooden
Soldier Ltd. v. RareNames, WebReg, FA 778960 (Nat. Arb. Forum Oct.
11, 2006 (posting links to direct competitors of Complainant
is, in itself, evidence of bad faith). These factors support a
conclusion that Respondent registered the domain name americanairways.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 marks as to the
source, sponsorship, affiliation or endorsement of Respondent's web site or of
a product or service on Respondent's web site. See Grounded Nomads, LLC
d/b/a Vocation Vacations v.
Upon information and belief, given the nature of the content on the Respondent's web site, Respondent registered the americanairways.com domain name with knowledge of Complainant's rights in the famous AMERICAN AIRLINES® mark. Respondent's registration of a domain name that is confusingly similar to Complainant's famous mark AMERICAN AIRLINES®, with knowledge of Complainant's rights in the mark, is evidence of bad faith registration and use in violation of ICANN Policy ¶4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 0003000094313 (Nat. Arb. Forum April 17, 2000) (finding that actual or constructive knowledge of a commonly known mark at the time of registration evidences bad faith).
Respondent has registered
numerous other domain names that have been the subject of recent ICANN
proceedings. Specifically, two (2) National Arbitration Forum panels and two
(2) WIPO panels have previously held that the Respondent registered and used a
total of 28 domain names in bad faith, and therefore ordered transfer of the
domain names from the Respondent to the rightful trademark owners. See
Respondent's
conduct, knowing full well that it has no right to use Complainant's mark,
demonstrates that it is knowingly, willfully and with a bad faith intent,
trading on the value of, and interfering with, Complainant's right to use its
mark in commerce.
B. Respondent
1. americanAIRWAYS
is not the same or close to americanAIRLINES.
americanAirways is a descriptive name for the
complete air transportation system. The american airways do not belong to any one airline, american,
united, delta or any other one airline company.
There is a clear and distinct difference between airlines and airways.
Therefore, americanairways.com is not identical or confusingly similar
to americanairlines.
2. megaweb
has legitimate rights and interest in respect to americanairways.com. Megaweb is using the americanairways.com for
12 years, since 1998 online as a directory for all that is connected with the
airways in
This directory provides a needed and legitimate service for online
users to find information about all the services available in the american
airways market, including: travel insurance, airline deals, general travel information , weather, luggage, etc.
An online directory is a legitimate use of a domain name, as decided by
icann many times already.
3. The domain name was not
registered in bad faith.
american airlines/Nor anyone else had any trademark registration of
americanairways at the time we registered americanairways.com, nor where we
aware of anyone using that name in any shape or form.
icann decided many times in the past that if a domain name was registered
prior to a trademark registration, then the domain name owner did not register
the domain name in bad faith and has the full right to the domain name.
No one was using "american airways" in any shape anywhere at
that time/nor is using it up to now as far as publicly known, megaweb is the
only company/website using and known as americanairways.com
This domain name "americanairways.com was registered in good faith
and was intended to provide information services for the public about exactly
what the domain name says and means: american airways.
americanairways.com is a legitimate online service directory
operating in good faith.
4. This
complaint is a clear attempt by one travel company to
claim a right to a generic domain that it does not have any exclusive right to.
icann should find that this is a domain highjacking attempt and
american airlines has no right to this domain name more then any other airline,
travel service, directory, insurance company or anyone else aside from the
current domain name owner: megaweb.
FINDINGS
The Panel makes the following findings:
(1)
the
domain name registered by the Respondent is not identical
nor 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.
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.
Complainant has not satisfied Policy ¶4(a)(i)
because the disputed domain name is not confusingly similar to the mark. While
the word “airways” is a synonym for “airlines,” the two are not sufficiently
close to be confusingly similar to the average consumer.
Respondent contends the disputed domain name is
comprised of common and generic terms
and thus cannot be deemed confusingly similar to Complainant’s mark. However, this argument is not
applicable under Policy ¶4(a)(i).
The Panel finds
Policy ¶4(a)(i) NOT satisfied.
Complainant must first make a prima
facie case Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶4(a)(ii), and then the
burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first 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, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant alleges Respondent is not commonly known by the <americanairways.com> domain name. Complainant provides the WHOIS information for the disputed domain name which lists the domain name registrant as “MegaWeb.com Inc.,” which Complainant contends is not similar to the disputed domain name. Complainant emphasizes there is no evidence that suggests Respondent is commonly known by the disputed domain names and Complainant asserts Respondent is not authorized or licensed to use the AMERICAN AIRLINES mark. Respondent has not established it is commonly known by the disputed domain name and finds Respondent has not established rights or legitimate interests pursuant to Policy ¶4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant claims Respondent is using the <americanairways.com>
domain name to resolve to a website containing a search engine and hyperlinks
to Complainant’s competitors in the air transportation business… including
links to American Airlines products.
Complainant contends these hyperlinks are sponsored commercial links
from which Respondent receives a click-through fee and there is no evidence to
the contrary. The Panel finds Respondent
is not making a bona fide offering of goods or services
under Policy ¶4(c)(i) or a legitimate noncommercial or
fair use of the disputed domain name under Policy ¶4(c)(iii). See
ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007)
(rejecting the respondent’s contention of rights and legitimate interests in
the <bravoclub.com> domain name because the respondent was merely using
the domain name to operate a website containing links to various competing
commercial websites, which the panel did not find to be a use in connection
with 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)); see also Skyhawke
Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18,
2007) (“Respondent is using the <skycaddy.com>
domain name to display a list of hyperlinks, some of which advertise
Complainant and its competitors’ products.
The Panel finds that this use of the disputed domain name does not
constitute 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).”).
The Panel finds
Policy ¶4(a)(ii) satisfied.
Complainant alleges Respondent’s
use of the <americanairways.com> domain name is a part
of a pattern of bad faith use and registration.
Complainant claims Respondent has been a respondent in multiple UDRP
proceedings in which disputed domain names were transferred from Respondent to
the complainants in those cases. See
Respondent uses the <americanairways.com>
domain name to resolve to a website containing hyperlinks to Complainant’s
competitors in the air transportation industry.
Complainant alleges Internet users interested in using Complainant’s air
transportation services may use a competitor’s air transportation service
instead because of Respondent’s use of the confusingly similar disputed domain
name. Respondent’s use of the <americanairways.com>
domain name disrupts Complainant’s air transportation business. The Panel finds Respondent’s actions
constitute bad faith registration and use under Policy ¶4(b)(iii). See Am. Airlines, Inc. v.
Complainant claims Respondent receives click-through fees from the use of the aforementioned hyperlinks. Complainant argues Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and the resolving links to competing air transportation and travel services. Respondent has failed to deny these claims. The Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant contends Respondent could not
have registered and used the disputed domain name without actual or
constructive knowledge of Complainant and its rights in the AMERICAN AIRLINES
mark. While constructive notice has not
been generally held to suffice for a finding of bad faith registration and use,
this Panel finds Respondent registered and is using the disputed domain name in
bad faith under Policy ¶4(a)(iii) because of the
famous nature of Complainant’s marks. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006)
(stating that while mere constructive knowledge is insufficient to support a
finding of bad faith, where the circumstances indicate that the respondent had
actual knowledge of the complainant’s mark when it registered the domain name,
panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum
Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the
complainant’s YAHOO! mark at the time of registration).
The Panel finds Policy ¶4(a)(iii) satisfied.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Dated: April 13, 2010
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