national arbitration forum

 

DECISION

 

American Airlines, Inc. v. Carlos Ascuncio

Claim Number: FA1012001361213

 

PARTIES

Complainant is American Airlines, Inc. (“Complainant”), represented by Rochelle Claerbaut of Rochelle Claerbaut, P.C., Illinois.  Respondent is Carlos Ascuncio (“Respondent”), Puerto Rico.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aamericanairlines.com>, registered with Dyandot, LLC.

 

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.

 

Judge Ralph Yachnin 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, Dyandot, LLC confirmed by e-mail to the National Arbitration Forum that the <aamericanairlines.com> domain name is registered with Dyandot, LLC and that Respondent is the current registrant of the name.  Dyandot, LLC has verified that Respondent is bound by the Dyandot, LLC 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@aamericanairlines.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 Judge Ralph Yachnin 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, without the benefit of any response from Respondent.

 

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

 

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

 

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

 

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

 

FINDINGS

Complainant, American Airlines, Inc., is a global air transportation company that has provided that services for over 75 years.  Complaint owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 514,294 issued August 23, 1949)  for its AMERICAN AIRLINES mark.  Complainant utilizes the mark to support and promote its air transportation business.

 

Respondent, Carlos Ascuncio, registered the disputed domain name on December 21, 2009.  The <aamericanairlines.com> domain name, registered by Respondent, resolves to a site that offers advertisements and sponsored links to other websites including those of Complainant’s competitors.   

 

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 contends that it has established rights in the AMERICAN AIRLINES mark via registration with a federal trademark authority.  Previous panels have found that registering a trademark with a federal trademark authority establishes rights in the mark.  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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).  Consequently, the Panel finds that Complainant has established rights in its AMERICAN AIRLINES mark under Policy ¶ 4(a)(i), based on Complainant’s trademark registration with the USPTO (e.g., Reg. No. 514,294 issued August 23, 1949). 

 

Complainant also contends that Respondent’s <aamericanairlines.com> domain name is confusingly similar to its own AMERICAN AIRLINES mark.  The disputed domain name incorporates the entire mark while removing a space, adding an “a,” and the generic top-level domain “.com.”  The Panel finds that Respondent has failed to differentiate its disputed domain name from Complainant’s mark by removing a space, adding a letter, and a gTLD.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); 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.”); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”)

 

The Panel finds that the requirements of Policy ¶ 4(a)(i) have been satisfied. 

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent.  Previous panels have found that the burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name after Complainant has met its prima facie burden.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  As Respondent failed to answer the initial Complaint, the Panel may assume that it does not have rights or legitimate interests in the disputed domain name.  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).  Nonetheless, without a Response the Panel will still fully examine the record to determine if Respondent retains any rights or legimitate interests in the disputed domain name.

 

Complainant contends that Respondent is not commonly know by the  <aamericanairlines.com> domain name.  Respondent has put forth no evidence to show that it is commonly known by the disputed domain name.  The WHOIS information identifies registrant as “Carlos Ascuncion,” which Complainant contends is not similar to the  <aamericanairlines.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name.  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Complainant also contends that Respondent is not engaging in any bona fide offering of goods or services or legitimate noncommercial fair use of the disputed domain name.  Respondent’s <aamericanairlines.com> domain name resolves to a site that offers advertisements and sponsored links to other websites including Complainant’s competitors.  Presumably, Respondent receives pay-per-click fees from these other services for posting them on its site.  The Panel finds that Respondent’s use of the disputed domain name to do this does not constitutes a bona fide offering of goods or services or legitimate noncommercial fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).

 

The Panel finds that the requirements of Policy ¶ 4 (a)(ii) have been met.  

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s <aamericanairlines.com> domain name disrupts Complainant’s business due to the fact that the domain name resolves to a site providing links to other third-party services including those in direct competition with Complainant.    The Panel finds that Respondent’s registration and use of the <aamericanairlines.com> domain name does disrupt Complainant’s business and, as a result, is evidence of bad faith registration and use under 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 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)).

 

Complainant further alleges that Respondent’s use of the <aamericanairlines.com> domain name for pecuniary benefit is evidence of its bad faith registration and use under Policy ¶ 4(b)(iv).  Respondent presumably collects click-through fees from the maintenance and operation of its confusingly similar domain name.  As a result, the Panel finds that Respondent’s registration and use of the <aamericanairlines.com> domain name is in bad faith under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); 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 finds that the requirements of Policy ¶ 4(a)(iii) have been met.

 

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 <aamericanairlines.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  December 30, 2010

 

 

 

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