American Airlines, Inc. v. Nika Kobakhidze
Claim Number: FA1506001626876
Complainant is American Airlines, Inc. (“Complainant”), represented by Andrew J. Avsec of Brinks Gilson & Lione, Illinois, USA. Respondent is Nika Kobakhidze (“Respondent”), Khashuri, Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanairlinesreservations.net>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2015; the Forum received payment on June 30, 2015.
On July 1, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <americanairlinesreservations.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2015 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@americanairlinesreservations.net. Also on July 6, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant contends as follows:
Complainant uses and has registered the AMERICAN AIRLINES mark with the United States Patent and Trademark Office (“USPTO”) in connection with its business in the airline industry (e.g., USPTO Registry No. 514,294, registered Aug. 23, 1949). Complainant has rights in the mark pursuant to its multiple trademark registrations of the mark with the USPTO.
Respondent’s <americanairlinesreservations.net> domain name is confusingly similar to the AMERICAN AIRLINES mark because the domain incorporates the mark entirely and adds the descriptive term “reservations” and the generic top-level domain “.net.”
Respondent has not demonstrated any rights or legitimate interests in the <americanairlinesreservations.net> domain name. First, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). More specifically, Complainant is not affiliated with, nor has it endorsed Respondent to register the AMERICAN AIRLINES mark in a domain name. Second, Respondent is not utilizing the disputed domain name in an endeavor to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) because it seeks to perpetrate a fraudulent travel booking website for commercial profit by passing itself off as Complainant. As it seeks profit, it also may not be considered that Respondent is operating with an interest to make a legitimate noncommercial or fair use of the <americanairlinesreservations.net> domain name per Policy ¶ 4(c)(iii).
Respondent has registered and used the <americanairlinesreservations.net> domain name in bad faith. First, Respondent has operated a website with travel booking services under Complainant’s mark to disrupt the business of Complainant under Policy ¶ 4(b)(iii). Second, as Respondent seeks to disrupt the business of Complainant, it also seeks to appropriate the wealth that would otherwise be intended for Complainant and its legitimate business to itself, thereby profiting from the Internet user confusion as per the language of Policy ¶ 4(b)(iv). Third, Respondent had actual or at least constructive knowledge of the AMERICAN AIRLINES mark when registering and subsequently using the disputed domain name. Fourth, Respondent has attempted to pass itself off as Complainant, which under a non-exclusivity analysis of bad faith should be considered a violation of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the <americanairlinesreservations.net> mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a commercial website which is designed to pass for one operated by Complainant.
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."
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.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the AMERICAN AIRLINES trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See 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.”); 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).
In forming the at-issue domain name Respondent adds the suggestive generic term “reservations” to Complainant’s AMERICAN AIRLINES trademark less its space and then appends the top-level domain name “.net” to the resulting string. These alterations to Complainant’s AMERICAN AIRLINES trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Moreover, the inclusion of the suggestive term “reservations” actually adds to the confusion. Therefore, the Panel finds that the <americanairlinesreservations.net> domain name is confusingly similar to Complainant’s AMERICAN AIRLINES mark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Nika Kobakhidze” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <americanairlinesreservations.net> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See 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 uses the domain name to address a website which is intended to deceive visitors into believing it is sponsored by Complainant when it is not. After passing itself off as Complainant, Respondent there trades on services which are in direct competition with those offered by Complainant. Using the domain name in this manner 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). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as alluded to above, Respondent operates a website with travel booking services that are within the scope of Complainant’s trademark. Using the domain name in this manner disrupts Complainant’s business and thereby demonstrates Respondent’s bad faith registration and use of the <americanairlinesreservations.net> domain name under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Second, Respondent uses the confusingly similar domain name to profit from Internet users’ confusion as to the source and sponsorship of the <americanairlinesreservations.net> website. This demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services indicated Policy ¶ 4(b)(iv) bad faith).
Third, Respondent registered the <americanairlinesreservations.net> domain name knowing that Complainant had trademark rights in the AMERICAN AIRLINES mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s wholesale inclusion of Complainant’s trademark in the at-issue domain name, and from Respondent’s demonstrated intent to pass itself off as Complainant to profit from the goodwill associated with the AMERICAN AIRLINES trademark. Given the forgoing, it is clear that Respondent registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <americanairlinesreservations.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, and as mentioned above, Respondent acts to pass itself off as Complainant. Indeed, Respondent’s <americanairlinesreservations.net> website goes so far as to misappropriate one or more of Complainant’s logos. Respondent’s intent to pass itself off as Complainant, in itself, indicates Respondent’s bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanairlinesreservations.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 30, 2015
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