WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Airlines, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Hall Fame
Case No. D2020-1686
1. The Parties
Complainant is American Airlines, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Hall Fame, United States.
2. The Domain Names and Registrars
The disputed domain names <americanairlinescancellation.com>, <americanairlinesflightss.com>, and <americanairlinesreservationss.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 30, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 6, 2020.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on July 28, 2020.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on August 4, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is one of the largest airlines in the world, serving 350 airports with nearly 7,000 daily flights under the AMERICAN AIRLINES Mark (the “Mark” or the “AMERICAN AIRLINES Mark”).
Complainant is the proprietor of a number of trademark registrations in various jurisdictions, including the following:
- United States trademark registration no. 0514294 for AMERICAN AIRLINES (device mark), registered on August 23, 1949 for services in class 39, claiming a date of first use in commerce of April 1934;
- United States trademark registration no. 4939082 for AMERICAN AIRLINES (word mark) registered on April 19, 2016 for services in classes 35, 37, 39, 41, 43, claiming first use in commerce as early as 1934; and,
- Panama trademark registration no. 53214 for AMERICAN AIRLINES (word mark) registered for services in class 39 on May 27, 1991.
Complainant operates its primary business website at <americanairlines.com>, which it registered in 1998. Complainant has also registered numerous other domain names incorporating the Mark.
The disputed domain name <americanairlinescancellation.com> was registered on January 6, 2020; <americanairlinesflightss.com> on January 8, 2020; and, <americanairlinesreservationss.com> on January 10, 2020. The Complaint provided evidence that the disputed domain names resolve to websites offering airline services.
5. Parties’ Contentions
Complainant’s allegations may be summarized as follows.
Under the first element, Complainant states that it is the second largest air carrier in the world and enjoys a reputation in the United States and internationally as a premier airline for business and leisure travelers. During its more than 90-year history, Complainant has developed global name-recognition and goodwill and the AMERICAN AIRLINES Mark has become a household name. Complainant has registered its Mark in over 75 countries, including in Panama, where Respondent appears to be located. The disputed domain names incorporate the Mark in full, with the addition of the generic terms “cancellation”, “flightss”, and “reservationss.” The disputed domain names are therefore confusingly similar to Complainant’s Mark.
Under the second element, Complainant states that Respondent is not commonly known by the disputed domain names, has not used or prepared to use the disputed domain names in connection with a bona fide offering of goods or services, and has not been authorized, licensed, or otherwise permitted by Complainant to register and/or use the disputed domain names. Respondent is using the disputed domain names to divert Internet users to websites featuring Complainant’s famous AMERICAN AIRLINES Mark, copyrighted images of its aircraft, and offering competing services. By inviting website visitors to call a telephone number to make, change, or cancel American Airlines travel reservations, Respondent is impersonating Complainant and possibly defrauding consumers or stealing their personal data. Complainant has called this telephone number and the party responding has confirmed the caller has reached “American Airlines”. Finally, Respondent has established the domains with an MX record, indicating that Respondent intends to establish email addresses using the disputed domain names.
Under the third element, Complainant states that Respondent, in registering domain names incorporating the famous trademark of a well-known company, had actual and constructive notice of Complainant’s Mark, which is registered in the United States and Panama. Such cybersquatting is indicative of opportunistic bad faith. Respondent is using the disputed domain names in bad faith by impersonating Complainant. Respondent is redirecting Internet users to three websites that prominently display Complainant’s famous trademarks, which are likely used to charge consumers for services they will never receive, overcharge consumers for services they can receive on Complainant’s own websites, or to steal users’ personal or company information. Respondent, by registering and using multiple domain names, is engaging in a pattern of conduct. Finally, Respondent has concealed its identity by using a proxy service to elude enforcement.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Respondent has registered and is using the disputed domain names in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the AMERICAN AIRLINES Mark through registrations in several jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.
In comparing Complainant’s Mark with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar with the AMERICAN AIRLINES Mark. Each of the disputed domain names contain the Mark in its entirety. The addition of dictionary terms “cancellation,” “flights”, and “reservations” does not prevent a finding of confusing similarity with the AMERICAN AIRLINES Mark, which is clearly recognizable within the disputed domain names. Similarly, the addition of a double terminal “s” to “flights” and “reservations” does not prevent a finding of confusing similarity.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, Respondent’s 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; or
(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain names, Respondent had no rights or legitimate interests in those domain names. The nature of the disputed domain names, which contain Complainant’s long-established and distinctive Mark together with dictionary terms “cancellation,” “flightss”, and “reservationss” cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the AMERICAN AIRLINES Mark with the permission of Complainant.
There is no evidence of legitimate noncommercial or fair use of the disputed domain names, as the disputed domain names are used to invite Internet users to call a toll-free number to purchase airline tickets. The websites to which the disputed domain names resolve prominently feature Complainant’s Mark and logo and images of “American Airlines” aircraft. These websites include disclaimers located in the footer which do not, in the view of the Panel, dispel confusion regarding the source or sponsorship of the websites, particularly taking into account the fact that calling the telephone number featured on the websites connects the caller to a party identifying itself as “American Airlines”. See WIPO Overview 3.0, section 2.5.3.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain names.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names; or
(ii) that Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith registration under Policy, paragraph 4(b)(iv). Complainant’s rights in the AMERICAN AIRLINES Mark predate by decades the registration of the disputed domain names. The disputed domain names contain Complainant’s Mark in its entirety, with the addition of the dictionary terms “cancellation”, “flightss”, and “reservationss” which do not diminish the confusing similarity and indeed strengthen the association with Complainant, a major airline. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.
Having established that the disputed domain names were registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain names. The Panel finds that Respondent has demonstrated bad faith use in establishing and operating websites featuring Complainant’s Mark, logo, and images of its aircraft that offers for sale services that are identical to those offered by Complainant. The disclaimers are vague and inconspicuous. Finally, Respondent shielded its identity by using a privacy service when registering the disputed domain names.
Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <americanairlinescancellation.com>, <americanairlinesflightss.com>, and <americanairlinesreservationss.com>, be transferred to Complainant.
Date: August 18, 2020