American Airlines, Inc. v. Domain Admin a/k/a Taranga Services Pty Ltd
Claim Number: FA1002001306277
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 <americanairway.com>, registered with Moniker.
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 February 2, 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 February 5, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <americanairway.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 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@americanairway.com by e-mail. Also on February 17, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 16, 2010, 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 markets and provides air transportation services.
Complainant began offering these services in 1934, and has since continuously marketed its air transportation services under its AMERICAN AIRLINES trademark.
Complainant holds numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its AMERICAN AIRLINES mark (including Reg. No. 514,294, issued August 23, 1949).
Respondent is not commonly known by the <americanairway.com> domain name.
Respondent is not authorized to use Complainant’s AMERICAN AIRLINES trademark, and Respondent is not licensed to use the same mark or to sell Complainant’s air transportation services.
Respondent registered the disputed <americanairway.com> domain name on December 14, 2006.
Respondent’s <americanairway.com> domain name is confusingly similar to Complainant’s AMERICAN AIRLINES mark.
The disputed domain name resolves to a website containing a commercial search engine and hyperlinks resolving to the websites of Complainant’s business competitors in the air transportation industry.
Respondent profits from these hyperlinks through the receipt of click-through fees for each visit by an Internet user to one of those links.
Respondent does not have any rights to or legitimate interests in the domain name <americanairway.com>.
Respondent registered and uses the <americanairway.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 trademark in which Complainant has rights; and
(2) Respondent has no rights to 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.
It is well established that a complainant establishes rights in a mark under Policy ¶ 4(a)(i) when it shows that it holds a trademark registration with a national trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.” Complainant holds trademark registrations with the USPTO for its AMERICAN AIRLINES mark. Therefore, Complainant has established rights in its AMERICAN AIRLINES mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <americanairway.com>
domain name is confusingly similar to Complainant’s AMERICAN AIRLINES
mark. The disputed domain name removes
the space separating the terms of Complainant’s mark. The domain name further replaces the term
“airlines” with the similar term “airway” and adds the generic top level domain
(“gTLD”) “.com.” These differences fail
to distinguish the disputed domain name adequately from Complainant’s
mark. See Am. Eagle Outfitters, Inc. v. Admin, FA
473826 (Nat. Arb. Forum June 22, 2005) (finding the domain name <americaneaglestores.com>
to be confusingly similar to a complainant’s AMERICAN EAGLE OUTFITTERS mark); to the same effect, see also Modern Props, Inc. v. Wallis, FA 152458
(Nat. Arb. Forum June 2, 2003); further see
Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007)
(finding that “spaces are impermissible in forming a domain name,…[while]…a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required
in domain names. Therefore, the panel
finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); finally, see also Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Therefore, the Panel concludes that Respondent’s contested <americanairway.com> domain name is confusingly similar to Complainant’s AMERICAN AIRLINES trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <americanairway.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the contested domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant has made out a sufficient prima facie case. Owing to Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. However, we will examine the record before us, in light of the criteria set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <americanairway.com> domain name. Complainant further asserts, without contradiction from Respondent, that Respondent is not authorized to use Complainant’s AMERICAN AIRLINES mark and that Respondent is not licensed to use the mark or to sell Complainant’s air transportation services. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “Domain Admin a/k/a Taranga Services Pty. Ltd.”, which is not similar to the <americanairway.com> domain name. On this record we are constrained to conclude that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that a respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and where that respondent did not counter this contention of a complainant in its response to a complaint filed under the Policy).
We also note that Complainant claims that Respondent uses
the <americanairway.com> domain name to resolve to a website that
features a commercial search engine and a list of hyperlinks relating to
Complainant’s competitors in the air transportation business. Complainant further alleges that Respondent
profits from these hyperlinks through the receipt of click-through fees. Again, Respondent does not counter these
assertions. We conclude, therefore, that Respondent’s use of the <americanairway.com>
domain name as alleged is not 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 Persohn v. Lim, FA 874447 (Nat. Arb.
Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain
name in connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use by redirecting
Internet users to a commercial search engine website with links to multiple
websites that may be of interest to a complainant’s customers, and presumably receiving
“click-through fees” in the process); see
also Disney Enters., Inc. v.
Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the
operation of a pay-per-click website at a contested domain name was 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)).
The Panel therefore finds
that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s use of the <americanairway.com>
domain name is a part of a pattern
of bad faith use and registration of domains in that Respondent has been
a respondent in other UDRP proceedings in which disputed domain names were
transferred from it to the complainants in those cases. We agree.
See, for example, Capital One Fin.
Corp. v. Domain Admin a/k/a Taranga Servs. Pty. Ltd., FA 1285637 (Nat. Arb. Forum Nov.
2, 2009); see
also Eidos Interactive Ltd. v. Moniker
Privacy Servs. / Taranga Servs. Pty. Ltd., D2009-0124 (WIPO Mar. 31,
2009). The record amply supports a
conclusion that Respondent’s behavior in this regard constitutes a pattern of
bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Westcoast
Contempo Fashions Ltd. v.
We have already concluded that Respondent’s <americanairway.com> domain name resolves to a website containing hyperlinks associated with Complainant’s competitors in the air transportation industry. Internet users intending to purchase air transportation services from Complainant may instead be led to purchase competing air transportation services from one of Complainant’s competitors through Respondent’s use of the disputed domain name. Respondent’s use of the <americanairway.com> domain name in this manner disrupts Complainant’s air transportation business, which evidences bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii) where a respondent used the domain to operate a commercial search engine with links to a complainant’s business competitors); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of domain names pursuant to Policy ¶ 4(b)(iii) by using the disputed domains to operate a commercial search engine with links to the products of a complainant and to that complainant’s competitors).
Finally under this head of the Complaint, Complainant contends that Respondent receives click-through fees from the described hyperlinks. Thus it appears that Respondent is attempting to profits from the confusion likely held by Internet users as to Complainant’s possible sponsorship of or affiliation with the disputed domain name, resolving website and featured hyperlinks. Respondent’s use of the disputed domain name for that purpose is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith where that respondent presumably benefited commercially by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using a domain that was confusingly similar to a complainant’s mark to offer links to third-party websites featuring services similar to those offered by that complainant).
For all of 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 <americanairway.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 29, 2010
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