American Airlines, Inc. v.
DomainShack.com Webmaster Services c/o DNS Administrator
Claim Number: FA0702000914855
PARTIES
Complainant is American Airlines, Inc. (“Complainant”), represented by Kristin
Jordan Harkins, of Conley Rose, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <admiralclub.com>, registered with Enom, Inc.
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.
Alan L. Limbury 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 12, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <admiralclub.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. 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 19, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 12, 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@admiralclub.com by
e-mail.
A timely Response was received and determined to be complete on March 12, 2007.
Complainant filed a timely Additional Submission in accordance with The
Forum’s Supplementary Rule #7 on March 16. 2007.
On March 20, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is one of the world’s largest airlines. Since July 24, 1984
it has been the registrant of
Respondent has no rights or legitimate interests in the disputed domain
name, which was created on July 13, 2001 and which is nearly identical and
confusingly similar to Complainant’s ADMIRALS CLUB mark. Complainant has not
licensed or otherwise permitted Respondent to use its marks or to apply for or
use any domain name incorporating them. Respondent is not known by the disputed
domain name, which leads to web pages having links to commercial websites, some
of which offer competing air transportation services, from which Respondent is
presumably receiving referral fees. The first such web page offers the disputed
domain name for sale for $750. These circumstances demonstrate bad faith
registration and use. This is a case of typosquatting.
B. Respondent
Complainant’s ADMIRALS CLUB mark comprises two generic, dictionary
terms. The protection this affords is exceedingly thin and limited in scope.
Descriptive terms are legitimately subject to registration on a ‘first come,
first served’ basis.
Respondent was unaware of Complainant’s mark and its lounge when
registering the disputed domain name.
The word Admiral is commonly used in the aviation industry. ADMIRALS
CLUB is not a well known famous mark. Even if Complainant’s lounge services are
well known, Respondent is not violating the trademark.
Respondent draws attention to the disclaimers and to the scope of the
services covered by Complainant’s registrations and offered in its lounges,
which do not include flight training, and contends that the advertisements for
flight training services reached via the disputed domain name are a bona fide
offering of goods or services with no bad faith. This is not a case of
typosquatting since the domain name admiralclub.com is properly spelled. The
sale of domain names is permissible within the Policy. Respondent has never
contacted Complainant and selling the domain was not the objective when
purchasing the domain, nor is it the objective now.
Respondent seeks a finding of reverse domain name hijacking.
C. Additional Submissions
Complainant’s incontestable federal registration, its well-established
and longstanding rights and its widespread use of the ADMIRALS CLUB mark
entitle Complainant to strong trademark protection as well as the right to
prevent third parties registering the domain name <admiralclub.com> in an
effort to trade on and benefit from Complainant’s rights.
The word “ADMIRAL” is not commonly used in the aviation industry or for
goods and services related to the aviation industry.
Respondent fails to provide a complete description of its website
content. Respondent has removed the “Airline Tickets” icon that, on February 7,
2007, led to a list of commercial websites offering airline tickets and
competing air transportation services. The “Buy this domain” notification has
also been removed.
The distinction which Respondent seeks to draw between flight training
services and Complainant’s travel services is too narrow. If Respondent sought to register ADMIRAL CLUB
for flight training services, registration would almost certainly be refused on
the ground of likely confusion with Complainant’s ADMIRALS CLUB mark.
FINDINGS
Complainant has established each of the
elements entitling it to relief.
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 Complainant to 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.
Likewise, it is well established that the test of confusing similarity
under the Policy is confined to a comparison of the disputed domain name and
the trademark alone, independent of the other marketing and use factors, such
as the "Sleekcraft factors" – AMF
Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979),
usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. & British Am. Tobacco
(Brands), Inc. v. NABR, D2001-1480
(WIPO March 26, 2002); Britannia Bldg.
Soc’y v. Britannia Fraud Prevention,
D2001-0505 (WIPO July 12, 2001); Wal-Mart
Stores, Inc. v. MacLeod d/b/a For
The
Panel finds the disputed domain name admiralclub.com to be both virtually
identical and confusingly similar to Complainant’s ADMIRALS CLUB trademark. It
is unnecessary to consider Complainant’s mark
Complainant
has established this element of its case.
Although each of the two words comprising
Complainant’s ADMIRALS CLUB mark is a generic, dictionary word, and despite the
disclaimer of the exclusive right to use of the word CLUB, the mark ADMIRALS
CLUB, taken as a whole, is undoubtedly well-known and distinctive of
Complainant and its travel-related membership services. Under these circumstances the ‘first come,
first served’ principle is inapplicable.
Complainant has not granted Respondent
permission to use its mark nor to register the disputed domain name and
Respondent is not known by that domain name. These circumstances are
sufficient to constitute a prima facie
showing by Complainant of absence of rights or legitimate interest in the
disputed domain name on the part of Respondent.
The evidentiary burden therefore shifts to Respondent to show by
concrete evidence that it does have rights or legitimate interests in that
name. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO July 2, 2001); Cassava Enters. Ltd., Cassava Enters. (
Paragraph 4(c) of the Policy sets
out, without limitation, circumstances which, if proved, establish the
registrant’s rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances
specified in sub-paragraph 4(c)(i): “before any notice to you of the dispute, your use
of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services.” Respondent
relies on its website links to aviation training services as differentiating
the services with which it says the disputed domain name is associated from the
services offered by Complainant. However, Respondent fails to explain the links
to airline ticketing services that appeared before the filing of the Complaint.
Having regard to the confusing similarity between the disputed domain
name and Complainant’s well-known ADMIRALS CLUB mark, the Panel finds that
consumers would expect to find a web site operated by Complainant. Although some might leave once their initial
interest confusion was dispelled, Respondent does not deny receiving fees in
relation to those consumers who stayed to explore Respondent’s aviation-related
links, particularly the airline ticketing links displayed at the time of the
Complaint and which offered aviation services directly competitive with
Complainant’s services.
Respondent’s denial of knowledge of Complainant’s mark and its lounge at the time it registered the disputed domain name is inherently implausible, having regard to the extensive use of the mark and its well-known character. The assertion is unsworn and the Panel does not accept it. Rather, the Panel finds that Respondent was aware of the mark when registering the domain name and has been intentionally diverting to its web site traffic intended for Complainant. Use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. See Madonna Ciccone v. Parisi & “Madonna.com,” D2000-0847 (WIPO October 16, 2000).
Respondent has failed to demonstrate that it has rights or legitimate
interests in the disputed domain name and Complainant has established this
element of its case.
The mere offering of a domain name
for sale for more than the out-of pocket costs directly related to the domain
name does not constitute evidence of bad faith registration and use within Rule
4(b)(i): The World Phone Company (Pty)
Ltd v. Telaccount Inc.,
D2000-1163 (WIPO November 2, 2000).
Having regard to the fact that the domain name was first registered in
2001 and that there is no evidence before the Panel as to when Respondent
purchased it, nor whether Respondent was the initial registrant, the Panel is
not prepared to draw the inference that sale to Complainant or to a competitor
of Complainant was the primary purpose of registration by Respondent.
The Panel finds that Respondent has been using the disputed domain name
intentionally to attract, for commercial gain, Internet users to its web site
by creating a likelihood of confusion with Complainant’s ADMIRALS CLUB mark as
to the source, sponsorship, affiliation or endorsement of its web site and of
services on its web site. Under the Policy, ¶ 4(b), this is evidence of both
bad faith registration and bad faith use.
Complainant has established this element of its case.
Reverse domain name hijacking
Complainant having succeeded, there is no basis for any such finding.
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 <admiralclub.com> domain name be TRANSFERRED
from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 31, 2007
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