national arbitration forum

 

DECISION

 

American Airlines, Inc. v. BrandWorldWide

Claim Number: FA1012001361210

 

PARTIES

Complainant is American Airlines, Inc. (“Complainant”), represented by Rochelle Claerbaut of Rochelle Claerbaut, P.C., Illinois, USA.  Respondent is BrandWorldWide (“Respondent”), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americanmiles.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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2010; the National Arbitration Forum received payment on December 1, 2010.

 

On December 2, 2010, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <americanmiles.com> domain name is registered with Fabulous.Com Pty Ltd. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@americanmiles.com.  Also on December 7, 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 December 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <americanmiles.com> domain name is confusingly similar to Complainant’s AMERICAN AIRLINES mark.

 

2.      Respondent does not have any rights or legitimate interests in the <americanmiles.com> domain name.

 

3.      Respondent registered and used the <americanmiles.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, American Airlines, Inc., holds multiple trademark registrations for its AMERICAN AIRLINES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 514,294 issued August 23, 1949).  Complainant uses its AMERICAN AIRLINES mark in connection with air transportation services.

 

Respondent, BrandWorldWide, registered the disputed domain name on June 4, 2001.  The disputed domain name resolves to a website containing sponsored links and advertising for travel and flight services that are in direct competition with Complainant. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant claims rights in its AMERICAN AIRLINES mark by virtue of its registration of the mark with the USPTO (e.g., Reg. No. 514,294 issued August 23, 1949).  Previous panels have decided that registration of a mark with the USPTO is conclusive evidence of a complainant’s rights in that mark.  See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).  The Panel in this case finds accordingly.  Additionally, the Panel determines that Complainant need not have a trademark registration in the country where Respondent resides or operates in order to establish rights in the mark under Policy ¶ 4(a)(i).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Therefore, the Panel concludes that Complainant has rights in its AMERICAN AIRLINES mark pursuant to Policy ¶ 4(a)(i).

 

Complainant asserts that Respondent’s <americanmiles.com> domain name is confusingly similar to Complainant’s AMERICAN AIRLINES mark.  Respondent’s disputed domain name differs from Complainant’s mark only in the replacement of the term “airlines” with the term “miles,” which Complainant suggests is used frequently within Complainant’s industry in connection with frequent flyer loyalty programs.  Respondent’s disputed domain name also appends the generic top-level domain (“gTLD”) “.com.”  The Panel finds that these alterations, when taken together, render the disputed domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case to support its allegations that Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant has established a prima facie case, the burden shifts to Respondent who must then set forth evidence of its rights or legitimate interests in the disputed domain name.  See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).  Respondent failed to submit a Response to these proceedings, from which the Panel can infer that Respondent lacks rights and legitimate interests in the disputed domain name.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  Nevertheless, the Panel will examine the record in light of the factors contained in Policy ¶ 4(c) to make a complete determination as to whether or not Respondent possesses rights or legitimate interests in the disputed domain name.

 

Complainant asserts that there is no evidence that would suggest that Respondent has ever been commonly known by the disputed domain name.  Complainant also asserts that it 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.  The WHOIS information for the <americanmiles.com> domain name lists the registrant of the name as “BrandWorldWide.”  The Panel finds no other evidence in the record that would indicate that Respondent is commonly known by the disputed domain name.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). 

 

Complainant alleges that Respondent’s domain name resolves to a website containing sponsored links and advertising for travel and flight services that are in direct competition with Complainant.  Links on the resolving website include, “American Airlines Centre,” “Airline Flights,” and “Airline Travel Deals,” among others and Complainant alleges that when Internet users click on these links they are redirected to the websites of Complainant’s competitors including: Southwest Airlines, KLM, Expedia and Orbitz.  The Panel presumes that Respondent receives click-through fees based on the display of these links.  Therefore, the Panel supports a finding that Respondent’s disputed domain name is not being used 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 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 confusingly similar 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)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

Complainant asserts that Respondent’s resolving website displays the messages, “Buy This Domain” and “This Domain Is For Sale,” along with a price of $3,995.  When Internet users click on either of these messages, another screen appears where the user may buy the domain for the aforementioned price.  The Panel finds that Respondent’s offer to sell the disputed domain name, for what Complainant has described as an “exorbitant price,” is evidence that Respondent lacks rights and legitimate interests in the disputed domain name.  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

As established previously, Respondent’s resolving website contains links that offer the disputed domain name for sale in an amount presumed to be in excess of Respondent’s out-of-pocket registration costs.  The Panel finds that Respondent’s offer to sell the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).

 

Although Complainant does not argue it, the Panel here finds clear evidence of bad faith registration and use under Policy ¶ 4(b)(iii) on the part of Respondent.  Respondent’s disputed domain name resolves to a website that displays links that ultimately redirect Internet users to the websites of Complainant’s competitors in the airline industry.  The Panel finds that the evidence supports a finding that Respondent registered and is using the disputed domain name for the purpose of disrupting Complainant’s business and is thus bad faith under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).”).

 

Complainant argues that Respondent registered the disputed domain name for the primary purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s AMERICAN AIRLINES mark as to the source, sponsorship, affiliation or endorsement of Respondent’s disputed domain name, resolving website, or product or service advertised on Respondent’s website.  The Panel finds that the evidence on record supports Complainant’s argument and thus that Respondent has demonstrated bad faith pursuant to 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 Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  January 5, 2011

 

 

 

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