WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Airlines, Inc. v. Registration Private, Domains By Proxy, LLC / Online Resource, Online Resource Management Ltd.
Case No. D2021-3234
1. The Parties
The Complainant is American Airlines, Inc., United States of America (the “United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Online Resource, Online Resource Management Ltd., Cayman Islands, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <prefundsaa.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 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 October 4, 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 October 4, 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 October 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on November 8, 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 a major airline based in the United States. Prior to the COVID-19 pandemic, the Complainant and its affiliates served over 350 destinations in over fifty countries, with nearly 7,000 daily flights.
The Complainant has used for decades its brands AMERICAN, AMERICAN AIRLINES, AA (an abbreviation of AMERICAN AIRLINES) and AA.COM, both alone and in connection with other words and designs.
The Complainant owns and operates the domain names <aa.com> and <americanairlines.com> (which redirects to Complainant’s website at “www.aa.com”), in addition to numerous other domains.
The Complainant also provides under the subdomain <prefunds.aa.com> a website at which customers can submit a request for refunds for cancelled flight reservations.
The Complainant owns numerous trademarks consisting of or including AA. In particular, the Complaint owns the following trademark registrations for AA:
- United States trademark registration number 514292, registered on August 23, 1949 in class 39;
- Cayman Islands trademark registration number 1473472, registered on November 30, 2001 (class(es) not mentioned in the submitted exhibits).
The disputed domain name was registered on January 4, 2016.
The disputed domain name resolves to a webpage offering sponsored click-through advertising links, some of which displaying the Complainant’s trademark AMERICAN ARILINES. Such links resolve to third-party websites promoting travel services of competitors of the Complainant.
The website to which the disputed domain name redirects features a banner that leads to the Afternic marketplace, where the disputed domain name is offered for sale for a price of USD 10,749.
The Respondent has set up email on the disputed domain name.
The Respondent had ten UDRP complaints filed against it, all of them resulting in a decision of transfer.
The Respondent did not respond to the Complainant’s cease and desist email sent on September 14, 2021.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its AA trademark, because it incorporates such mark entirely, and the addition of the term “prefunds” fails to avoid confusing similarity.
The Complainant further contends that the use of the disputed domain name to generate pay-per-click or affiliate advertising revenue for the Respondent does not demonstrate rights or legitimate interests and does not constitute a protected noncommercial or fair use of the disputed domain name. There is no evidence, according to the Complainant, that the Respondent has ever used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith on several grounds. The Complainant contends that that the Respondent registered the disputed domain name to intentionally attempt to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement. Also, the Complainant alleges that the Respondent registered the disputed domain name to resell it for a profit. The Respondent has set up email on the disputed domain name, which leads the Complainant to suspect that the Respondent is using or will use the disputed domain name to send phishing messages. Finally, the Complainant contends that the Respondent has engaged into a pattern of registering domain names that contains trademarks of third parties.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns various trademark registrations for the mark AA.
The disputed domain name reproduces the Complainant’s trademark in its entirety with no alteration and combines this trademark with the term “prefunds”.
UDRP panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the trademark AA is clearly recognizable in the disputed domain name. The mere addition of the term “prefunds” does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, may be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name.
The Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name. Instead, the Respondent used the disputed domain name in connection with a website containing pay-per-click links to third-party websites offering competing services. This type of use does not constitute bona fide offering of goods and services.
Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s silence corroborates such prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith.
Given the presence, on the website connected to the disputed domain name, of several references to the Complainant’s trademark AMERICAN AIRLINES, and the fact that the disputed domain name is almost identical to the subdomain <prefunds.aa.com> operated by the Complainant, the Panel considers that the Respondent could not ignore the existence of the Complainant and of its trademark at the time of the registration of the disputed domain name. As a consequence, the Panel finds it unlikely that the disputed domain name was chosen independently without reference to the Complainant’s trademark.
Furthermore, the presence of sponsored links to third party websites, offering competing services, on the page to which the disputed domain name resolves also supports a finding of use in bad faith. Indeed, the redirection to a webpage with sponsored links suggests an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark, by attempting to generate financial gains by means of “click through” revenues. Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776 and AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).
The Complainant has also demonstrated that the Respondent has been involved in ten UDRP procedures, in which panels ordered the transfer of the concerned domain names. The Respondent may accordingly be said to have engaged into a pattern of registering domain names reproducing trademarks of third parties, in order to prevent the owners of the trademarks to reflect them in a corresponding domain name. Such behavior amounts to registration and use in bad faith according to paragraph 4(b)(ii) of the Policy.
Finally, the Respondent is offering the disputed domain name for sale for an amount exceeding by far the out-of-pocket expenses related to registration and renewal. According to paragraph 4(b)(i) of the Policy, circumstances indicating that a respondent has registered a 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 documented out-of-pocket costs directly related to the domain name, shall constitute evidence of registration and use in bad faith. The Panel finds that the disputed domain name was registered and used in bad faith on this basis too.
Therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case
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, <prefundsaa.com> be transferred to the Complainant.
Anne-Virginie La Spada
Date: November 22, 2021