WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Airlines, Inc. v. Privacy Protection / Yabani Eze, Sugarcane Internet Nigeria Limited
Case No. D2021-2182
1. The Parties
The Complainant is American Airlines, Inc., United States of America (“United States” or “U.S.”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Privacy Protection, United States / Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <aavacatioms.com> (the “Disputed Domain Name”) is registered with Sav.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 17, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 24, 2021. 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
The Complainant is one of the largest air carriers in the world. Prior to COVID-19, the Complainant had more than 7,000 daily flights to over 350 destinations in fifty countries. The Compliant has been in operation for more than 90 years. The Complainant owns numerous trademark registrations for trademarks containing AA, AMERICAN and AMERICAN AIRLINES including for example a United States trademark registration for AA (U.S. Reg. No. 514,292) having a registration date of August 23, 1949, and United States trademark registration for AA (U.S. Reg. No. 2,356,861) having a registration date of June 13, 2000. The Complainant's AA trademarks are collectively referred to as the “AA trademark” in this decision.
The Complainant uses various websites to promote its business including one linked to the domain name <aavacations.com> which allows customers to book vacation packages of multiple types of reservations, including flights, hotels, and car rentals.
The Respondent did not file a Response. The Respondent has been a respondent in several prior UDRP disputes1.
The Disputed Domain Name was registered on January 14, 2021.
The Disputed Domain Name does not appear to resolve to an active website at the time of this decision. Filed evidence shows it previously redirected to a website with pay-per-click (“PPC”) links to third party websites.
The Respondent is also offering the Disputed Domain Name for sale for USD 250 in a listing at the domain name marketplace located at “www.afternic.com”.
5. Parties’ Contentions
The Complainant’s main submissions are as follows.
The Complainant is a well-known and large international air carrier that has been in operation for more than 90 years.
The Complainant owns registered trademarks for AA, AMERICAN AIRLINES and AMERICAN in the United States and other countries. These trademarks are valuable.
The Complainant uses AA prominently on its website, which in the last 6 months had over 26 million total visits.
The Disputed Domain Name incorporates the Complainant’s AA trademark in full, adding the wording “vacatioms” which is clearly a typographical variation of “vacations”. The fact that a domain name wholly incorporates the Complainant’s registered trademark is sufficient to establish identity or confusing similarity.
The Respondent’s addition of the wording “vacatioms” before the Complainant’s famous AA trademark does not distinguish the Disputed Domain Name from this trademark, but instead increases the likelihood of confusion.
Without the Complainant’s authorization or consent, the Respondent registered the Disputed Domain Name, which, as discussed above, misappropriates and is confusingly similar to the Complainant’s AA trademark. The Respondent is not commonly known by the Disputed Domain Name, has not used or prepared to use the Disputed Domain Name in connection with a bona fide offering of goods or services, and has not been authorized, licensed, or otherwise permitted by the Complainant to register or use the Disputed Domain Name.
The Respondent has never operated any legitimate business under the Disputed Domain Name, and is not making a protected noncommercial or fair use of the Disputed Domain Name. Instead, the Respondent is using the Disputed Domain Name to divert Internet traffic to a website that contains PPC advertising links. This does not demonstrate rights or legitimate interests.
The Respondent is offering the Disputed Domain Name for sale on a domain name marketplace for USD 250.
The Respondent’s use of the Disputed Domain Name, to confuse and deceive website visitors regarding an affiliation with the Complainant for commercial gain, cannot be called fair or legitimate.
Long after the Complainant established its rights in its well-known AA trademark, and with knowledge of those trademarks, the Respondent acquired the confusingly similar Disputed Domain Name to redirect Internet traffic to third party websites garnering affiliate advertising revenue for commercial gain.
Additionally there have been other UDRP decisions against the Respondent with similar factual circumstances. The Complainant says there have been at least 10 WIPO UDRP Panel decisions under the Policy against the Respondent Yabani Eze / Sugarcane Internet Nigeria Limited, which concern the Respondent registering and using domain names incorporating well-known and famous marks (e.g. IBM, Accenture, Geico, Campbell Soup, and Sodexo, among others; see e.g. CSC Brands LP v. Domain Admin, Privacy Protect, LLC / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2020-0991; and International Business Machines Corporation v. Privacy Protection, Privacy Protection / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2021-0727). The Panels in all those cases found the Respondent did not have rights or legitimate interests and registered and used those domain names in bad faith, resulting in transfers or cancellation of the involved domain names.
The Disputed Domain Name is listed for sale for USD 250, which is in excess of the Respondent’s investment in the Disputed Domain Name. The attempt to sell a domain name consisting of the famous AA trademark where the Respondent has knowledge of such trademark, in excess of the Respondent’s investment relative to the domain name, constitutes bad faith registration and use of the Disputed Domain Name.
Further the Complainant says the Disputed Domain Name has active Mail eXchanger (“MX”) records. Those active MX records indicate use for email, which evidences a likelihood of additional bad-faith use of the Disputed Domain Name to engage in fraudulent email or phishing communications.
The Complainant makes various other points which the Panel has not found it necessary to consider in any detail, given the Panel’s findings below.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“Privacy Protection, United States”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Yabani Eze, Sugarcane Internet Nigeria Limited, and references to the Respondent are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the AA trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a term (such as here “vacatioms” which is clearly a typographic variation of “vacations”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the AA trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the AA trademark. The Complainant has prior rights in the AA trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances the evidence as to the extent of the reputation the Complainant enjoys in the AA trademark, and the fact that the Disputed Domain Name was clearly a typographic variation of one of the Complainant's own domain names leads the Panel to conclude the registration and use were in bad faith.
The Panel concludes that the Respondent chose to register a name comprising the Complainant’s trademark combined with a typographic variation of the word “vacations” in order to link the Disputed Domain Name to a PPC website and attract traffic as a result of the likely confusion the Disputed Domain Name would cause.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel concludes that (iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s mark, and the Respondent derives commercial gain as a result. The website linked to the Disputed Domain Name comprises a series of PPC links to other third-party websites. The Panel infers that some consumers, once at this website will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant. The Respondent presumably earns “click through” linking revenue as a result. The Panel infers the website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
See also WIPO Overview 3.0 section 3.5: “Can third-party generated material ‘automatically’ appearing on the website associated with a domain name form a basis for finding bad faith?
Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”
The Panel also accepts the Complainant’s evidence that the Disputed Domain Name has active MX (mail exchange) records. Those active MX records indicate a possible use for email, which evidences a likelihood of additional bad-faith use of the Disputed Domain Name to engage in fraudulent email or phishing communications. See, e.g., Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472 (concluding that evidence of active MX records indicated that the disputed domain name may be used for fraudulent email communications); Ares Management LLC v. juandaohanjing, WIPO Case No.D2020-3254 (finding the respondent used the disputed domain name in bad faith based on evidence of active “MX records for the disputed domain name” which “indicate that the Respondent has connected the disputed domain name to email servers, which creates a grave risk that the Respondent may be using the disputed domain name for misrepresentations and/or phishing and spamming activities”.)
The Panel also accepts the Complainant’s evidence that the Respondent has engaged in a pattern of bad faith conduct in registering well known trademarks as domain names (see above). Numerous UDRP Panels have found that a pattern of registration of domain names of other well-known entities is evidence of bad faith registration and use of disputed domain names. See NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128; see also Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338.
Further the Panel notes that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Name <aavacatioms.com> be transferred to the Complainant.
Nick J. Gardner
Date: September 7, 2021