National Arbitration Forum

 

DECISION

 

American Airlines, Inc. v. Texas International Property Associates

Claim Number: FA0702000914854

 

PARTIES

Complainant is American Airlines, Inc. (“Complainant”), represented by Kristin Jordan Harkins, of Conley Rose, P.C., 5700 Granite Parkway, Suite 330, Plano, TX 75024.  Respondent is Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, PO Box 703431, Dallas, TX 75370.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <redeemaamiles.com>, registered with Compana, LLC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2007.

 

On February 21, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <redeemaamiles.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name.  Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 19, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@redeemaamiles.com by e-mail.

 

A timely Response was received and determined to be complete on March 19, 2007.

On March 24, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

Complainant filed an Additional Submission on March 26, 2007, which complied with Supplemental Rule 7.  Respondent also filed a timely Additional Submission on April 2, 2007, which complied with Supplemental Rule 7.

 

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 <redeemaamiles.com> domain name is confusingly similar to Complainant’s AA, BUYAAMILES, SHAREAAMILES, and REDEEMAAMILES marks.

 

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

 

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

 

B. Respondent makes the following assertions:

 

1.      Complainant did not have rights in REDEEMAAMILES at the time Respondent registered the <redeemaamiles.com> domain name.

 

2.      Respondent has legitimate rights in the <redeemaamiles.com> domain name.

 

3.      Respondent did not register and is not using the <redeemaamiles.com> domain name in bad faith.

 

C. In its Additional Submission, Complainant emphasizes its common law rights in the REDEEMAAMILES mark, refutes the notion that the mark is somehow generic, and provides evidence of Respondent’s travel-related website content.

 

D. In its Additional Submission, Respondent argued that Supplemental Rule 7, pertaining to Additional Submissions, is an improper modification to the Rules because it gives Complainant more than one “bite at the apple.”  Respondent also argued that Complainant’s evidence on its advertising expenditures is inadequate.

 

 

FINDINGS

Complainant has established rights in its AA mark through registration with the U.S. Patent and Trademark Office (“USPTO”), with use dating back to 1935.  Complainant has established rights in its SHAREAAMILES and BUYAAMILES marks through registration with the USPTO, with use dating back to 2001.  Complainant has a pending application with the USPTO for REDEEMAAMILES, with use dating back to September 1, 2004.  Respondent registered the <redeemaamiles.com> domain name in January of 2005.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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.

 

Procedural Matter

 

First, the Panel rejects Respondent’s argument that Supplemental Rule 7 is an improper modification of the Rules.  In this Panel’s view, it is the goal of the Policy to provide an expedient means of resolving domain name disputes while allowing a full rendering of relevant facts by both Parties.  That goal can be maintained through allowing Additional Submissions from both Parties within rather stringent time deadlines, rather than disallowing them altogether.  The Policy allows, as in this case, an equal opportunity to be heard by both Parties.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in its AA, SHAREAAMILES, and BUYAAMILES marks through registration with the USPTO.  Complainant is not required to possess a trademark registration in order to have rights in the REDEEMAAMILES mark under Policy ¶ 4(a)(i).  Complainant asserts common law rights in the REDEEMAAMILES mark through its continuous and extensive use of the mark since at least September 1, 2004, in connection with its frequent flyer program, and states that it has devoted considerable efforts to advertise and promote its services under this mark.   Complainant has also filed an application with the United States Patent and Trademark Office (“USPTO”) for the REDEEMAAMILES mark (Serial No. 78/902188 filed June 2, 2006).  The REDEEMAAMILES mark is a variation of its other marks incorporating its AA mark, which is the abbreviation for its long-established and well-known business name “American Airlines.”  The Panel finds that, due to the nature of Complainant’s business and mark, it is not necessary for Complainant to support its assertion that it has rights in the REDEEMAAMILES mark through submission of evidence that it expends significant resources on advertising its marks.

 

Complainant was using the mark REDEEMAAMILES commercially, and already had registrations of two other marks including the term “AAMILES,” prior to Respondent’s registration of the <redeemaamiles.com> domain name.  The Panel finds Complainant possesses sufficient common law rights in the REDEEMAAMILES mark to meet the burden set by Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).

 

Respondent’s <redeemaamiles.com> domain name is identical to Complainant’s REDEEMAAMILES.  The disputed domain name contains Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.”  The addition of a gTLD is not significant when examining whether a disputed domain name is identical or confusingly similar under Policy ¶ 4(a)(i) as a gTLD is a required part of all domain names.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).    

 

            The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).        

 

Rights or Legitimate Interests

 

Respondent is using the <redeemaamiles.com> domain name to operate a website that features hyperlinks to various third-party websites, some of which are in direct competition with Complainant as well as to Complainant’s own website, from which Respondent presumably receives click-through fees.  Such diversionary use for commercial gain 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 Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute 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)).

 

The Respondent is not commonly known by the <redeemaamiles.com> domain name under Policy ¶ 4(c)(ii) as Respondent’s WHOIS information lists Respondent as “Texas International Property Associates” and there is no other evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name.  Respondent is not authorized by Complainant to use its REDEEMAAMILES mark.  See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name).

 

Respondent’s notion that the <redeemaamiles.com> domain name is somehow generic is nonsense, as the name has no meaning save its association with Complainant.

 

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

 

Registration and Use in Bad Faith

 

Respondent is using the <redeemaamiles.com> domain name to operate a website featuring hyperlinks to various other websites.  These websites include both Complainant’s own website, as well as the websites of Complainant’s competitors.  Respondent presumably receives click-through fees for the operation of its website.  The <redeemaamiles.com> domain name is capable of creating a likelihood of confusion as to the source and affiliation of Complainant with the disputed domain name.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

Respondent’s registration of the disputed domain name to advertise the websites of Complainant’s competitors constitutes a disruption of Complainant’s business under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also 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).   

 

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

 

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

 

 

 

Sandra J. Franklin, Panelist
Dated: April 10, 2007

 

 

 

 

 

 

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