WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

American Airlines, Inc. v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-3113

1. The Parties

The Complainant is American Airlines, Inc., United States of America, represented by Greenberg Traurig, LLP, United States of America.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Names and Registrars

The disputed domain names <aairpassaa.com> and <checkinaa.com> are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2021. On September 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 27, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 September 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on October 26, 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 for business and leisure travelers. Prior to the COVID-19 pandemic, the Complainant and its affiliates served over 350 destinations in over 50 countries, with nearly 7,000 daily flights.

Over the past several decades, the Complainant has used the trademarks AA, A AIRPASS, and AMERICAN AIRLINES, alone or in combinations with other words and designs, in connection with travel and transportation services, travel agency services, travel reservation services, travel rewards and loyalty programs, and numerous other goods and services.

The Complainant is the owner, amongst others, of trademark registrations for AA and A AIRPASS, including the following, as per trademark certificates submitted as annexes 9 to the Complaint:

- United States trademark registration No. 2356861 for AA (word mark), filed on November 4, 1998 and registered on June 13, 2000, in international class 28;

- United States trademark registration No. 1206527 for A AIRPASS (figurative mark), filed on October 26, 1981 and registered on August 24, 1982, in international class 39;

- United States trademark registration No. 514292 for AA (word mark), filed on July 27, 1948 and registered on August 23, 1949, in international class 39;

- United States trademark registration No. 4004914 for AA (figurative mark), filed on June 15, 2010 and registered on August 2, 2011, in international class 39;

- United States trademark registration No. 2313875 for AA (figurative mark), filed on November 5, 1998 and registered on February 1, 2000, in international class 28.

The Complainant is also the owner of the domain name <aa.com>, registered on January 2, 1998, and <americanairlines.com>, registered on April 17, 1998, the latter of which redirects to the website at “www.aa.com”, used by the Complainant to promote its products and services. According to the web analytics website SimilarWeb.com as of January 2021, the Complainant’s website has received over 26.19 million total visits in the previous six months and has been ranked the number one website in the world in the category of Air Travel.

The Complainant’s website contains several pages dedicated to its AIRPASS membership program at “https://airpass.aa.com”, which was originally introduced in 1981 and is an all-inclusive, prepaid membership that offers flexibility, VIP privileges and elite status.

The disputed domain names <aairpassaa.com> and <checkinaa.com>, both registered on June 15, 2021, point to random websites with pay-per-click advertising links, websites with popup links or online games resulting in deceptive offers to download malware.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s registered trademarks AA and A AIRPASS as they incorporate both trademarks in full, with the sole addition of the word “check in” (which would merely describe the Complainant’s airline flight services, including services involving checking in for airline flights) and the generic top-level domain (“gTLD”) “.com”.

With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that the Respondent has never been authorized, licensed or otherwise permitted by the Complainant to use its trademarks in any way or register the disputed domain names.

The Complainant contends that the Respondent is also not commonly known by the disputed domain names and has not used or prepared to use the disputed domain names in connection with a bona fide offering of goods or services, nor is it making non commercial or fair use of the disputed domain names, since the disputed domain names are being used to divert Internet traffic to various random websites with pay-per-click advertising links, websites with popup links or online games resulting in deceptive offers to download malware.

In particular, the Complainant highlights that, in addition to the redirection to malware offers, the disputed domain names redirect to pay-per-click or affiliate advertising web pages with links generating commercial gain for the Respondent, like in the case of <aairpassaa.com> which sometimes redirects to a pay-per-click website at “ww1.aairpassaa.com”, displaying links such as “Rewards Card”, and other links containing the Complainant’s trademark AA such as “AAdvantage”, which, when clicked, redirect to additional pay-per-click advertising websites displaying links stating, e.g., “Travel Freely” and “The Points Guy Rewards Cards”, which in turn, when clicked, redirect to travel rewards and credit card websites at “https://travelfreely.net” and “https://thepointsguy.com/credit-cards”, promoting services and products that are competitive with those offered by the Complainant. Similarly, the Complainant underlines that the disputed domain name <checkinaa.com> instead sometimes redirects to “http://ww1.checkinaa.com”, which displays links such as “Activate My Card”, which in turn, when clicked, redirect to additional pay-per-click advertising web pages displaying links such as “Visa Credit Cards”, leading to web pages offering competitive credit card products, such as “https://www.harcocu.org/Visa-Credit-Cards.aspx”.

Moreover, the Respondent appears to be offering on sale the disputed domain names on the domain name marketplace “www.Sedo.com” requiring a minimum offer of USD 899 each.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent acquired the disputed domain names to redirect Internet traffic to websites offering deceptive offers to download malware and/or redirect to other websites, presumably for commercial gain whilst causing disruption of the Complainant’s business and creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the websites at the disputed domain names.

The Complainant emphasizes that the Respondent’s deceptive distribution of unsolicited software or malware products through the websites resolving or redirecting from the disputed domain names and the active use of MX records, for distribution of emails, also both constitute further evidence of the Respondent’s bad faith registration and use of the disputed domain names.

The Complainant further states that, considering the disputed domain names, containing the Complainant’s famous trademarks, are listed for sale for at least 899 USD each, which is far in excess of the Respondent’s investment in the disputed domain names, and that the Respondent was clearly well aware of the Complainant’s trademarks and world renown, the Respondent has also undoubtedly acted in opportunistic bad faith when registering the disputed domain names.

Moreover, the Complainant contends that the Respondent’s use of a privacy service to register the disputed domain names to shield its actual identity and elude enforcement efforts by the legitimate trademark owner, further demonstrates the Respondent’s bad faith.

Lastly, the Complainant contends that, by registering two disputed domain names containing well-known trademarks in which the Respondent has no rights or legitimate interests, the Respondent has also engaged in a pattern of bad faith conduct.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademarks AA and A AIRPASS based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 9 to the Complaint.

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name to assess whether a trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview 3.0). Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of a term does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0).

Furthermore, as indicated in section 1.10 of the WIPO Overview 3.0, to the extent that design elements would be incapable of representation in domain names, they are largely disregarded for purposes of assessing identity or confusing similarity under the first requirement.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks since <aairpassaa.com> entirely reproduces the denominative element of the Complainant’s trademark A AIRPASS and the word mark AA, whilst <checkinaa.com> encompasses the Complainant’s trademark AA preceded by the words “check in”, which do not prevent a finding of confusing similarity. As stated in a number of prior decisions, the generic Top-Level Domain (gTLD) “.com” is generally disregarded when comparing the similarities between a domain name and a trademark, being a mere technical requirement for registration.

Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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 Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

In addition, there is no evidence that the Respondent, which has moreover hidden its identity in the WhoIs records via a privacy service, might be commonly known by the disputed domain names or by names corresponding to the disputed domain names. Moreover, there is no evidence that the Respondent might be the rightful owner of trademark registrations for the terms encompassed in the disputed domain names.

The Panel also finds that the Respondent’s use of the disputed domain names to redirect Internet users to various third-party commercial websites, including pay-per-click web pages with links also related to the Complainant’s business and websites promoting services unrelated to the Complainant and enabling to download malware, does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks.

Indeed, as stated in section 2.9 of the WIPO Overview 3.0, “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. Moreover, as indicated in section 2.13.1 of the WIPO Overview 3.0, “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain names according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 the holder’s documented out-of-pocket costs directly related to the domain names; or

(ii) the Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith at the time of the registration, the Panel finds that, in light of i) the prior registration and use of the Complainant’s trademarks AA and A AIRPASS in connection with the Complainant’s products and services, ii) the well-known character of the trademark AA in connection with the Complainant’s air travel services and iii) the confusing similarity of the disputed domain names with the Complainant’s trademarks (and with the Complainant’s website at “airpass.aa.com”), the Respondent very likely registered the disputed domain names having the Complainant’s trademarks in mind.

Moreover, in view of the notoriety of the Complainant’s trademark AA, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain names are so obviously connected with the Complainant that its very selection by the Respondent, who has no connection with the Complainant, suggests the disputed domain names were registered with a deliberate intent to create an impression of an association with the Complainant.

The Panel also finds that, in view of the redirection of the disputed domain names to random websites, including webpages with pay-per-click links, websites with popup links or online games resulting in deceptive offers to download malware, paragraph 4(b)(iv) of the Policy is applicable in this case, since the Respondent clearly intentionally attempted to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the websites, the webpages linked thereto and the products and services promoted therein.

The Panel also finds that i) the Respondent’s offer of the disputed domain names on sale via the domain name marketplace for an amount presumably over the out of pocket costs, ii) the use of a privacy service to conceal its identity in the WhoIs records and iii) its failure to submit a Response are additional circumstances evidencing the Respondent’s bad faith.

In view of the above, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain names in bad faith according to paragraph 4(a)(iii) of the Policy.

7. Decision

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 <aairpassaa.com> and <checkinaa.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: November 10, 2021