American Airlines, Inc. v. Ali Aziz
Claim Number: FA1002001309748
Complainant is American Airlines, Inc. (“Complainant”), represented by Kristin
Jordan Harkins, of Conley Rose, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com>, registered with Dotregistrar.
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.
Honorable Paul A. Dorf (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 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 24, 2010, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com> domain names are registered with Dotregistrar and that Respondent is the current registrant of the names. Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@amricanairlines.com, postmaster@amerianairlines.com, and postmaster@americnairlines.com. Also on February 25, 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 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com> domain names are confusingly similar to Complainant’s AMERICAN AIRLINES mark.
2. Respondent does not have any rights or legitimate interests in the <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com> domain names.
3. Respondent registered and used the <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Airlines, is one of the world’s largest air transportation and freight service companies. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN AIRLINES mark (e.g., Reg. No. 514,294 issued August 23, 1949).
Respondent registered the <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com> domain names from January 10-11, 2002. Respondent’s disputed domain names resolve to a website that displays a commercial search engine and sponsored results page that displays third-party links to Complainant and competitors of Complainant in the air services and vacation planning industry.
Complainant offers evidence that Respondent has a history of registering domain names that infringe upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Cingular Wireless II, LLC v. Aziz, FA 892865 (Nat. Arb. Forum March 7, 2007); see also Travelocity.com LP v. Aziz, FA 1245560 (Nat. Arb. Forum March 16, 2009); see also Am. Airlines, Inc. v. Aziz, FA 1247063 (Nat. Arb. Forum March 30, 2009).
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 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 that 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 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.
Complainant owns multiple trademark registrations with the USPTO for its AMERICAN AIRLINES mark (e.g., Reg. No. 514,294 issued August 23, 1949). The Panel finds that Complainant has established rights in its AMERICAN AIRLINES mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. The Panel further finds that Complainant does not have to have a trademark registered in the country of Respondent’s residence under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com> domain names each contain common misspellings of Complainant’s AMERICAN AIRLINES mark. Each disputed domain name deletes a letter of the mark, deletes the space between the words of the mark and adds the generic top level domain (“gTLD”) “.com.” Complainant argues that simply removing the letters “e,” “c,” or “a” from the word “American” is not enough to distinguish the disputed domain names from its mark. The Panel finds that Respondent’s disputed domain names that delete one letter from Complainant’s mark, delete the space between the words of the mark, and add the gTLD “.com” are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show it does have rights or legitimate interests in the disputed domain names. 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 Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names. The Panel will, however, examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complainant contends that Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com> domain names resolve to the same website at <usseek.com>, which displays a commercial search engine and “sponsored listings” page. Respondent’s website features third-party links to Complainant’s competitors as well as links to Complainant’s official website without receiving authorization to do so from Complainant. The Panel finds that Respondent’s use of the disputed domain names to operate a commercial search engine that displays third-party links both to Complainant’s official website and to the websites of competitors to Complainant is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the 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 the complainant’s customers and presumably earning “click-through fees” in the process); see also Skyhawke Techs., 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).”).
Complainant further argues that Respondent is not commonly known by the disputed domain name, nor has Complainant granted Respondent permission to use its mark in any way. The WHOIS information lists “Ali Aziz” as the registrant of the disputed domain names, and Respondent does not offer evidence showing that it is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent is taking advantage of Internet users that are
attempting to reach Complainant’s website by capitalizing on the misspelling of
the Complainant’s AMERICAN AIRLINES mark.
The Panel finds that the Respondent’s engagement in the practice of
typosquatting is evidence that Respondent lacks rights and legitimate interests
in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been a respondent in previous UDRP proceedings where the disputed domain names were ordered to be transferred from Respondent to the respective complainants in those cases. See Cingular Wireless II, LLC v. Aziz, FA 892865 (Nat. Arb. Forum March 7, 2007); see also Travelocity.com LP v. Aziz, FA 1245560 (Nat. Arb. Forum March 16, 2009); see also Am. Airlines, Inc. v. Aziz, FA 1247063 (Nat. Arb. Forum March 30, 2009). The Panel finds that Respondent has engaged in a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) through repeated domain name registrations that infringe on the trademark rights of others including Complainant in this case. See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Calvin Klein, Inc. v. Spanno Indus., FA 95283 (Nat. Arb. Forum Aug. 21, 2000) (finding that the respondent has registered numerous domain names containing sexual references and domain names which are confusingly similar to third party trademarks; which points to a pattern of conduct on the part of the respondent, revealing that the respondent is registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names).
Complainant contends that Respondent is using the disputed domain names to divert Internet customers seeking Complainant’s website to a directory website and commercial search engine that displays third-party links to the Complainant and Complainant’s competitors. Complainant argues that this use results in a disruption of its airline and vacation planning business through the confusion caused by the similarity between the AMERICAN AIRLINES mark and the disputed domain names. The Panel finds that Respondent’s use of the disputed domain names does act as a disruption Complainant’s business, and is evidence of registration and use in bad faith pursuant to Policy 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent is using the <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com> domain names to divert Internet users to its associated website, which displays third-party links to competing websites as well as to Complainant’s official website. In cases such as this, the Panel presumes that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s AMERICAN AIRLINES mark and the confusingly similar disputed domain names. Therefore, the Panel finds that Respondent’s use of the disputed domain name is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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).
The Panel previously determined that Respondent has engaged in typosquatting. The act of typosquatting has been found by previous UDRP panels to constitute evidence itself of bad faith registration and use under Policy ¶ 4(a)(iii), and so this Panel finds. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amricanairlines.com>, <amerianairlines.com>, and <americnairlines.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 9, 2010
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