WIPO Arbitration and Mediation Center

Moreover, it is important to highlight that Complainant’s primary domain names <aa.com> and <americanairlines.com> and Complainant’s domain names for online payment <creditcards.aa.com> and <epays.aa.com> were all registered in 1998 and continuously used since that date. Meanwhile, the disputed domain names <creditcardsaa.com> and <epaysaa.com> were registered on August 16, 2021 – several years after the registration of Complainant’s domain names and cited trademarks.

5. Parties’ Contentions

A. Complainant

Complainant submits that it enjoys a worldwide reputation built around the trademarks AMERICAN AIRLINES and AA and that both disputed domain names <creditcardsaa.com> and <epaysaa.com> incorporate its trademark AA in full, with the sole difference of adding the generic top-level domains (“gTLD”) “.com” and generic words to the referred sign.

According to Complainant, the disputed domain name <creditcardsaa.com> adds the expression “credit cards” to the mark AA in a reference to Complainant’s co-branded credit cards products. Similarly, the disputed domain name <epaysaa.com> adds the word “epays” to the mark AA in an association to the means electronically pay (or e-pay) that Complainant offers to its customers.

In this regard, Complainant states that the disputed domain names <creditcardsaa.com> and <epaysaa.com> are identical to Complainant’s domain name <creditcards.aa.com> through which Complainant promotes its co-branded credit card products and <epays.aa.com> where Complainant’s employee access payroll information except that the disputed domain names do not have the “.” between the words “creditcards” or “epays” and the “aa”.

Therefore, Complainant sustains that the disputed domain names are confusingly similar to Complainant’s trademarks AA and Complainant’s domain names, so Respondent would be clearly intended to imitate Complainant’s business and take advantage of its well-known reputation, fulfilling paragraph 4(a)(i) of the Policy, and paragraph 3(b)(viii) and 3(b)(ix)(1) of the Rules.

Furthermore, Complainant notes that, as far as it is aware, Respondent does not have any rights or legitimate interests in respect of the trademark AA, is not widely known by the disputed domain names, nor is in any way associated with, or authorized by, Complainant in connection with its trademarks and services.

In this sense, Complainant affirms that Respondent was using the disputed domain names to divert Internet traffic to various websites, including websites containing pay-per-click advertising links. Thus, Respondent would be using the disputed domain names to generate advertising revenue through an undue association with Complainant’s business, which cannot constitute rights, legitimate interest, or use of the disputed domain names in connection with a bona fide offering of goods or services.

In addition, Complainant asserts that while elaborating the Complaint, the disputed domain names started to resolve to blank error web pages, which constitutes passive holding. According to Complainant, the passive holding of the disputed domain names would also indicate that there is no legitimate interest or rights from Respondent.

Therefore, paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would also be fulfilled.

At last, Complainant sustains that the disputed domain names <creditcardsaa.com> and <epaysaa.com> were registered and are being used in bad faith.

Complainant believes that Respondent registered the disputed domain names to intentionally attract Complainant’s costumers and misdirect them to pay-per-click advertising websites, presumably garnering affiliate advertising revenue for commercial gain, what would demonstrate Respondent’s bad faith.

Complainant claims that Respondent had constructive knowledge of Complainant’s trademarks AA given its registrations and well-known reputation. In the sense, Complainant affirms that if Respondent had conducted a trademark search before registering the disputed domain names, it would have noticed Complainant’s registration for the sign AA. Therefore, the principles of constructive notice should be applied to this case to recognize Respondent’s bad faith, as applied by the UDRP Panel in Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384.

Additionally, Complainant alleges that Respondent’s use of the disputed domain names to host inactive content such as an error page, passive holding the disputed domain names, is a further indication of Respondent’s bad faith use, as repeatedly recognized by previous UDRP Panels.

Complainant also alleges that the fact that Respondent used a privacy service to register the disputed domain names and shield its identity, eluding enforcement efforts by the legitimate trademark owner, would also demonstrate Respondent’s bad faith.

Furthermore, Complainant highlights that its counsel sent a cease-and-desist letter to Respondent advising him of Complainant’s trademark infringement claim based on the use of the disputed domain names. According to Complainant, the fact that Respondent never presented a formal reply to Complainant’s letter would indicate that it has registered and is using the disputed domain names in bad faith.

Complainant pleads that the disputed domain names have active mail exchange (“MX”) records, which indicates use for e-mail, evidencing a likelihood of additional bad faith use by Respondent, as acknowledged by the UDRP Panel in Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472.

Finally, Complainant affirms that the fact that Respondent registered two domain names (the disputed domain names <creditcardsaa.com> and <epaysaa.com>) that are identical to Complainant’s famous trademark AA and domain names <creditcards.aa.com> and <epays.aa.com> shows a “pattern of conduct”, which is further evidence of Respondent’s registration and use of the disputed domain names in bad faith.

Considering all the mentioned above, Complainant sustain that paragraph 4(a)(iii) and 4(b) of the Policy, and paragraph (b)(ix)(3) of the Rules would be fulfilled.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in a UDRP Complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(i) the disputed domain name is 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 name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the panel’s decision shall be based upon the Complaint.

A. Identical or Confusingly Similar

Complainant has duly proven that it owns long-standing trademark rights over the marks AA, AMERICAN, and AMERICAN AIRLINES which are registered in many jurisdictions, including in the USA where Respondent is based.

Complainant also demonstrated that the disputed domain names incorporate Complainant’s trademark AA in its entirety, along with the terms “credit cards” and “epays” and the generic TLD “.com”.

The Panel finds that the expressions “credit cards” and “epays” do not avoid a finding of confusing similarity with Complainant’s trademark. On the contrary, the use of such words in this case shows Respondent’s clear intent of causing confusion with Complainant’s well-known sign and domain names, since Complainant uses the exact expressions “credit cards” and “epays” along with its trademark in its official domain names.

In this point, the Panel refers to American Airlines, Inc. v. Domain Admin, Whois Privacy Corp. / Hildegard Gruener, and Ethan Rhodes, WIPO Case No. D2021-2106, where the UDRP Panel stated that the addition of – in that case – the words “cheap tickets”, “flight check in”, “com”, “flights”, “flight tracker”, “boarding pass”, “cargo schedules”, “flightinformation”, “flightschedule”, “flighttracker”, “flight tracker real time” and “ticket prices” or the omission of the final letter “s” from the word “airlines”, does not avoid a finding of confusing similarity as the AA or AMERICAN AIRLINES as the case may be remain recognizable within the Domain Names (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; mytheresa.com GmbH v. Domain Admin Private Registrations Aktien Gesellschaft, WIPO Overview 3.0, sections 1.8.).

Thus, the Panel accordingly concludes that the disputed domain names are confusingly similar to Complainant’s trademark, and so the requirement of the first element of paragraph 4(a) of the Policy is entirely satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain names.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.

Firstly, the Panel believes it is very unlikely that Respondent was not aware of Complainant’s rights to the trademarks at the time of registration of the disputed domain names <creditcardsaa.com> and <epaysaa.com>, especially when considering the following circumstances: (i) AA is a well-known trademark that enjoys great reputation worldwide (see American Airlines, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues et al., WIPO Case No. D2021-1093 and American Airlines, Inc. v. Ramadhir Singh, WhoisGuard Protected, WhoisGuard, Inc. et al., WIPO Case No. D2021-0294); (ii) Respondent reproduced two domain names used by Complainant’s when registering the disputed domain names, which cannot be a mere coincidence; and (iii) the disputed domain names were registered by Respondent on August 16, 2021, many years after the registration of Complainant’s famous trademarks and domain names listed in section 4 of this decision.

Furthermore, the fact that now the disputed domain names resolve to inactive websites does not preclude a finding of bad faith use under the doctrine of passive holding. Paragraph 4(b) of the Policy recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith.

As well stated by the UDRP Panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in order to identify in what circumstances of inaction – other than those identified in paragraphs 4(b)(i), (ii) and (iii) – can be constituted a domain name use in bad faith, some relevant factors related to Respondent’s behavior have to be considered by the panel.

In this case, the Panel concludes that Respondent’s passive holding of the disputed domain names amounts to acting in bad faith, considering that: (i) Complainant’s trademarks are distinctive and well-known; (ii) there is no evidence that could lead the Panel to think that the disputed domain name is being used legitimately and in good faith; (iii) Respondent did not reply to Complainant’s contentions in this proceeding; (iv) Respondent has sought to hide its identity by using a privacy service; and (v) Respondent did not reply to Complainant’s cease and desist letter addressing the allegation of trademark infringement.

In light of these particular circumstances, the Panel concludes that the disputed domain name was registered and is being used in bad faith under the Policy. As such, the Panel finds that Complainant has satisfied 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 <creditcardsaa.com> and <epaysaa.com> be transferred to American Airlines, Inc.

Gabriel Leonardos
Sole Panelist
Date: November 22, 2021