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 Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 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 April 14, 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 April 19, 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 April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2021. The Center appointed John Swinson as the sole panelist in this matter on May 18, 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 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 Respondent did not file a Response, so little is known about the Respondent. The Respondent has been a respondent in prior UDRP disputes. The disputed domain name was registered on April 6, 2018. The disputed domain name redirected to a website with offers to download software which is malware or to a website with pay-per-click (PPC) links. Currently, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant made the following submissions in the Complainant: Identical or Confusingly Similar 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, Panama 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 “seat select” which describes the Complainant’s airline flight services. 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 “seat select” before the Complainant’s famous AA trademark does not distinguish the disputed domain name from this trademark, but instead increases the likelihood of confusion. Rights or Legitimate Interests 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 trademarks. 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 various websites, including (a) websites that contain PPC advertising links or that redirect to advertising for other websites, and (b) websites with deceptive offers to download malware. 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 999. 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. Registered and Used in Bad Faith Long after the Complainant established its rights in its well-known AA trademarks, and with knowledge of those trademarks, the Respondent acquired the confusingly similar disputed domain name to redirect Internet traffic to websites with deceptive offers to download malware and/or redirecting to other websites, presumably garnering affiliate advertising revenue for commercial gain. Additionally, the Respondent’s deceptive distribution of unsolicited software or malware products through the websites resolving or redirecting from the disputed domain name constitutes further evidence of the Respondent’s bad faith registration and use of the disputed domain name. There have been other UDRP decisions against the Respondent with similar factual circumstances. The disputed domain name is listed for sale for USD 999, which is far 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. In addition to the Respondent’s obvious actual and inferred knowledge of the Complainant’s AA trademark, the Respondent had constructive knowledge of the Complainant’s trademark because of the Complainant’s trademark registrations in the United States, and in Panama where the Respondent is purportedly located. The Respondent registered the disputed domain name to prevent the Complainant from using its trademark in a domain name. The Respondent has a pattern of conduct of registering domain names utilising well-known trademarks. There have been 169 UDRP panel decisions under the Policy against the Respondent, involving famous and well-known brands. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response. Paragraph 15(a) of the Rules directs the Panel to decide the 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. A. Identical or Confusingly Similar The Complainant has clearly proven ownership of long-standing registered trademarks for AA in the United States. The disputed domain name includes the Complainant’s trademark AA in its entirety, along with the words “seat select”. It is common to use the term “seat select” in relation to an airline, because selecting a seat is an important function in booking a flight or checking in to a flight. Here, “seat select” describes a feature of the Complainant’s services to travelers. Thus, the inclusion of “seat select” as part of the disputed domain name affirms the confusing similarity. The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s AA trademark, disregarding the Top-Level Domain “.com”. The Complainant succeeds on the first element of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. There is no evidence that the Respondent is commonly known by the disputed domain name. The Complainant states that the Respondent did not register the disputed domain name with the Complainant’s authorization or consent. The Respondent is making a commercial use of the disputed domain name by redirecting the disputed domain name to a website with PPC links or that distributes malware. This does not support a claim by the Respondent to rights or legitimate interests in the disputed domain name. In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds that the Complainant succeeds on the second element of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. The Complainant is very well-known including at the time the Respondent registered the disputed domain. The Respondent included the term “seat select” as part of the disputed domain name, which, as discussed above, refers to a characteristic of the Complainant’s services. In these circumstances, the Panel can reasonably infer that the Respondent knew of the Complainant’s AA trademark and registered the disputed domain name to take unfair advantage of the Complainant’s reputation in that trademark. The Respondent also has a history of registering domain names to target well-known trade marks (see Skyscanner Limited v. Registration Private, Domains By Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0018). There have been over 100 UDRP decisions adverse to the Respondent. There is no obvious reason for the Respondent to register the disputed domain name other than for the purpose of attempting to trade off the Complainant’s goodwill in the AA trademark. The disputed domain name used to resolve to a PPC website advertising services of competitors of the Complainant and to distribute malware. The Panel finds that this PPC website is a bad faith use of the disputed domain name. Owens Corning v. NA,WIPO Case No. D2007-1143; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396; and Avid Dating Life Inc. v. Calico Draconia,WIPO Case No. D2015-1324. Thus, the Panel concludes that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source of the website. Accordingly, the Complainant meets the requirements of paragraph 4(b)(iv) of the Policy. The Complainant succeeds on the third element of the Policy in relation to the disputed domain name. 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 name John Swinson
Sole Panelist
Date: May 25, 2021
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