American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc.
Claim Number: FA1006001330044
Complainant is American Airlines (“Complainant”), represented by Nathan
J. Muyskens, of Shook Hardy & Bacon LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanway.com>, registered with Wild West Domains.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2010.
On June 16, 2010, Wild West Domains confirmed by e-mail to the National Arbitration Forum that the <americanway.com> domain name is registered with Wild West Domains and that the Respondent is the current registrant of the name. Wild West Domains has verified that Respondent is bound by the Wild West Domains 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 June 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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 firstname.lastname@example.org. Also on June 17, 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.
A timely Response was received and determined to be complete on July 7, 2010.
Complainant submitted an Additional Submission that was received and determined to be complete on July 12, 2010.
On July 14, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complaint owns numerous federal trademark registrations relevant to
this proceeding including but not limited to a registration for the mark
Respondent’s website, associated with the <americanway.com> domain name, includes links to travel-related websites and links to competitors of American Airlines, which are displayed after clicking on the “Airline” link, found on the <americanway.com> homepage. Respondent’s website includes a number of textual advertisements and corresponding links.
Respondent’s <americanway.com> is confusingly similar to the trademarks owned
by American Airlines. A consumer, potential consumer, or American Way® Magazine
reader may believe that American Airlines is associated with the <americanway.com> domain. The <americanway.com > domain name
only differs from American Airlines’ registered
Respondent has no rights or legitimate interests in the domain name that is the subject of this complaint. Respondent, Webtoast Internet Services, Inc., is neither commonly known by, nor licensed to register, the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent is using the <americanway.com> domain name to divert users to a website that displays links advertising third-party websites, some of which are in competition with American Airlines. Respondent appears to be using the disputed domain name to earn click-through fees, which is not a bona fide offering of goods or services, nor a legitimate, noncommercial, or fair use under UDRP Policy ¶ 4(c)(i) or
Respondent has registered and uses <americanway.com> in bad faith. Respondent’s use of the <americanway.com> domain name disrupts the business of American Airlines by offering links to various competitors. This type of disruption may be evidence of bad faith registration and use pursuant to UDRP Policy ¶4(b)(iii).
In addition, Respondent is using the <americanway.com> domain name to intentionally divert Internet users to the associated website, which displays third-party links to competing websites. It appears Respondent collects click-through fees from sponsors and attempts to profit by creating a likelihood of confusion between American Airlines’ marks and the disputed domain name. Respondent’s use of the disputed domain name is additional evidence of bad faith registration and use pursuant to UDRP Policy ¶4(b)(iv).
Respondent’s registration of a domain name that includes a second-level
domain that is identical to American Airlines’ famous registered
Respondent contends as follows:
Respondent’s web server was recently, very seriously, hacked. The keywords that Respondent used with the Google service were: American History, life, of, the American way, American national, American rights, association, history, society. This shows that that the website has nothing to do with American Airlines or its entities.
A number of authors, organizations, producers and companies use the phrase Americanway (ex. People for the American way (they say, "Standing up for ordinary Americans, that's the American way"), in the book "Protestant, Catholic, Jew" by Will Herberg, he states, "The American Way of life is individualistic, dynamic, pragmatic." (very Emersonian), even, Superman fights for "truth, justice and the American way." A Google search for "American way" specifically, the resulted in two million seven hundred seventy thousand (2,770,000) hits with the vast majority having no reference to American Airlines.
This is the second time that American Airlines has gone through this type of proceeding with Respondent, see FA0112000102954.
Respondent has used <americanway.com> since 1996. Respondent trademarked "The American Way" and still use it to promote videotapes of a series that Respondent directed and edited: "The
Respondent also used a sub-directory of <americanway.com> for the Works of Ralph Waldo Emerson,
Respondent’s use of the phrase “
Respondent has long, profound activity with <americanway.com>. Respondent looks forward to selling directly on DVD, The American Way of Training Hunters and Jumpers to a broader (new) audience and to work energetically in the American way.
B. Additional Submissions
Complainant contends in its Additional Submission as follows:
James Manley, claims to be the owner of the following “DEAD” United States Trademark registration that is relevant to this administrative proceeding: Trademark US Reg. No. Goods/Services / THE AMERICAN WAY1 1908214 - Prerecorded audio and videocassette tapes featuring instruction in horse training and riding. The Trademark Office records, however, show that the Registration was owned by The Pony Venture Project. The Registration was cancelled by the Trademark Office on July 20, 2002, as a result of the owner failing to submit a Declaration and supporting documentation evidencing that the mark was still in use.
A prior panel found <americanway.biz> is identical to American Airlines’
<americanway.com> and <americanway.biz>.
A gTLD, e.g., “.BIZ” for “.COM” does not
impact the confusion resulting from unauthorized use of a domain that
incorporates a mark. Here, Webtoast Internet Services Inc. completely
incorporated American Airlines’ registered mark in this mark was canceled on
July 20, 2002. Accordingly, the <americanway.com>
domain is identical and confusingly similar to American Airlines’ “
Webtoast Internet Services, Inc.
does not have rights or legitimate interests in the <americanway.com> domain. Neither Webtoast Internet Services,
Inc. nor James Manley is known as
The webpage that resolved at the at-issue domain name until the filing of the Complaint was an aggregation of links to competitors of American Airlines. After American Airlines initiated this proceeding, Webtoast Internet Services, Inc. changed the webpage to purportedly be a horse training webpage and included a new layout for the webpage listing various authors, including Ralph Waldo Emerson. The proper webpage for consideration, however, is the one existing at the time the Complaint was filed, not the altered webpage that was conveniently produced by Webtoast Internet Services, Inc. to mask its true use of the <americanway.com> domain.
The webpage originally accessed by the disputed domain name led internet users to believe that American Airlines was associated with the website. The webpage would also direct the users away from American Airlines to its competitors. Contrary to the allegations that are now made, the webpage that was originally associated with the
<americanway.com> domain had nothing to do with training
horses or American authors. Instead, the webpage was an aggregation of links,
including links to competitors of American Airlines and advertisements. For
instance, one link directed users to competing travel websites for booking
airline tickets on competing carriers and another link directed the users to
Skymall-a competing in-flight magazine. Webtoast Internet Services, Inc. does
not have a legitimate non-commercial or fair use. Rather, Webtoast Internet
Services, Inc. no doubt collected click fees or advertising fees by diverting
users searching for American Airlines’ famous “
Webtoast Internet Services, Inc.
has registered and uses the <americanway.com>
domain name in bad faith. Webtoast Internet Services, Inc. had some knowledge
of American Airlines’ rights in the “
As discussed above, the original webpage maintained by Webtoast Internet Services, Inc. diverted users to websites of competitors of American Airlines. There was nothing in the original webpage that discussed horses or American authors. Webtoast Internet Services, Inc. now alleges that it was hacked. Webtoast Internet Services, Inc., however, is curiously silent with respect to details of how the hack impacted the content of the webpage. No evidence exists to show that any hack altered the content of the webpage to include the aggregation of links that diverted users to competitors of American Airlines. Instead, all evidence suggests that Webtoast Internet Services, Inc. knowingly included links of competitors of American Airlines at the <americanway.com> website to divert users and to collect advertising or click fees. Moreover, Webtoast Internet Services, Inc. should be found to be guilty of cyberflying.
Finally, Webtoast Internet Services, Inc. has not certified that the statements made in the e-mail correspondence to the forum are accurate, that the correspondence is not being presented for any improper purpose, such as to harass, and that the assertions in the correspondence were warranted under these rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument. Accordingly, little if any weight should be given to the allegations in the correspondence received from Webtoast Internet Services, Inc.
Complainant owns a registered trademark for
Respondent has not demonstrated that it has
trademark rights in
Respondent is not known as
The current webpage at <americanway.com> is not the page that existed at the time the complaint was filed.
At the time the instant complaint was filed, the at-issue domain name referenced a website containing links to Complainant’s competitors.
Respondent was aware of Complainant’s
trademark rights in
Respondent knew or should have known that presenting certain content and links on a website containing and referenced by a domain name containing Complainant’s well know trademark, would offend Complainant’s trademark rights.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant’s registration of its
Respondent’s <americanway.com> domain name is identical to
In practice, the application of Policy 4(a)(ii) is a two‑tiered process. Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain name. The threshold for such showing is low. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Once Complainant establishes a prima facie case the burden effectively shifts to Respondent who must demonstrate that it nevertheless has rights and legitimate interests in the at-issue domain name.
that Respondent is neither commonly
known by the <americanway.com>
domain name nor licensed to use Complainant’s
Respondent impliedly asserts that it demonstrates rights and interest pursuant to Policy ¶4(c)(i). Respondent claims that it implemented a commercial website at <americanway.com> for the purposes of selling videos entitled “The American Way of Training Hunters and Jumpers.” A panel might be tempted to conclude that Respondent thereby makes a bona fide offering of goods or services and thus demonstrates its rights and interests in the at-issue domain name. Additionally, Respondent claims that a subdirectory of its website contained the works of Emerson and that the directory received numerous visitors, suggesting a non-commercial fair use of the at-issue domain name.
This panel’s proper focus is on the <americanway.com> website that was contemporary with the filing of the Complaint. That website does not show Respondent to be making a bona fide offering or goods or services or fair use of its domain name. The weight of the relevant evidence shows that at the time the Complaint was filed, Respondent’s website pertained to neither “hunters nor jumpers” nor to Emerson. Instead, Respondent’s <americanway.com> website, inter alia, contained links to Complainant’s competitors. Respondent does not deny Complainant’s assertions that it received indirect financial benefit through click-thru advertisement related to that site but obliquely attributes the website’s advertising links to hackers or to the search engine and web advertising company, Google.
Respondent attempts to explain post-complaint website changes as some sort of restoration to the site’s complexion before a troublesome hacking incident, but the hacking incident is unsubstantiated. The effect of hacking on the website’s metamorphosis from one sponsoring “hunting and jumping” videos to one where there are links to Complainant’s competitors is not explained by Respondent and not shown to be benign.
Contrary to Complainant’s urging, the Panel
draws no adverse inference from the fact that Respondent made post‑complaint
changes to its website. While other panels
may have held that changing a website after being notified of a dispute cuts
against, or negates a finding of rights or interests in a disputed domain name
(see, MB Fin. Bank v. MB Bank,
FA 644517 (Nat. Arb. Forum April 4, 2006). See IslandAir, Inc. v. Flanders,
FA 96098 (NAF Feb. 8, 2001) see also Wal-Mart Stores, Inc. v. Walmarket
A respondent, by changing its website to
mitigate concerns levied by a complainant via either a cease and desist letter
or a UDRP complaint, arguably reduces further harm from such website to the consuming
public. Modifying such a website also may attenuate the harm to a complainant
whose trademark or commercial interests are allegedly compromised by the
website prior to remediation. So as not to discourage this positive behavior, the
fact of a website’s remediation should not create an evidentiary inference
adverse to the respondent. The Federal evidence rule and the rational for
excluding evidence of subsequent remedial measures is set out in the Federal
Rules of Evidence §407 and its accompanying Notes.
See USCS Fed. Rules
Evid R 407 and Notes. Rule 407 is applied in trademark litigation and
there is no reason why its rational should not be
consider and its principals applied to UDRP disputes where appropriate. See
generally, GMC v. Keystone Auto. Indus.,
2005 U.S. Dist. LEXIS 23168 (E.D.
Notwithstanding the foregoing, since Complainant’s prima facie case shows that Respondent lacks rights and interests in respect of the domain name, and since Complainant’s conclusion is not effectively challenged by the evidence of record or the arguments of Respondent, the Panel concludes that Respondent lacks rights and interests in respect of the domain name.
The parties’ involvement in a prior UDRP dispute regarding the trademark AMERICAN WAY and domain name <americanway.biz> put Respondent on notice that it should affirmatively avoid website content which might confuse Internet users into believing that Complainant sponsored Respondent’s website. American Airlines Inc. v. Webtoast Internet Services Inc. FA 102954 (Nat. Arb. Forum Feb. 24, 2002). Likewise, Respondent either was, or should have been, aware that presenting links to Complainant’s competitors on its <americanway.com> website is adverse to Complainant’s interests. Nevertheless, Respondent, who at all times appears to have controlled the DNS record for the disputed domain name (despite Respondent’s vague and somewhat dubious claims of “hacking”), either intended its website to contain links referencing Complainant’s competition, or at least unreasonably allowed such links when it could have and should have prevent or removed them.
This Panel does not urge that a respondent is
strictly accountable for the content of the website referenced by its disputed
domain name. There may be circumstances where, through inadvertence, accident,
or otherwise, a website’s offensive content should not be charged to the referencing
domain name’s owner. In such
circumstances the character of some or all of the content might be excused for
the purposes of Policy 4(a)(iii). But here Respondent undeniably knew of
Complainant’s rights in the
Respondent’s lack of concern for the rights of Complaint at that time it originally registered the disputed domain name is inferred from Respondent’s recent conduct. Furthermore, there is no evidence or even an allegation that at the time the disputed domain name was registered, that Respondent was not predisposed to act in the very manner it eventually did regarding its <americanway.com> website some years later.
Policy ¶4(b) states that indicia of a respondent’s bad faith is “without limitation.” Although not particularly enumerated in the Policy, the Panel finds that Respondent’s lack of candor in its Response is additional evidence of bad faith registration and use. Respondent claims to have trademarked THE AMERICAN WAY, but fails to reveal that the Trademark Office records show that the registration was owned by The Pony Venture Project. The Respondent also fails to note that the Registration was cancelled by the Trademark Office as a result of the owner failing to submit a declaration and supporting documentation evidencing that the alleged trademark was still in use. Additionally, Respondent does not supplement the record with an Additional Submission or otherwise explain or challenge Complainant’s evidence regarding THE AMERCIAN WAY. Respondent thereby tacitly admits to Complainant’s claims regarding THE AMERICAN WAY. Notably, by not disclosing the full state of affairs in light of the Trademark Office’s unchallenged records and Complainant’s Additional Submission, Respondent attempts to mislead the Panel, further evidencing bad faith.
Finally, Respondent’s concealment of material facts as discussed above impeaches Respondent’s other claims.
Given the forgoing, the Panel finds that Respondent registered and used <americanway.com> in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanway.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 27, 2010
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