1.1 The Complainant is American Airlines, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
1.2 The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Cyan Yo, Hong Kong, China. 2. The Domain Name and Registrar
2.1 The disputed domain name 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2021. On April 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 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. 3.2 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”). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2021. 3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 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 4.1 The Complainant is a well-known airline based in the United States. The airline has a 90-year history and it has used the “American Airlines” name in respect of its activities since April 1934. 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. 4.2 The Complainant also uses the term “Flagship” in respect of its business and first class services. 4.3 The Complainant is the owner of various registered trade marks around the world that comprise or incorporate the terms “American Airlines” or “Flagship”. They include: (i) United States registered trade mark No. 0514294 registered on August 23, 1949, for AMERICAN AIRLINES as letters in stylised form in class 39; (ii) United States registered trade mark No. 1845693 registered on July 19, 1994, for AMERICANAIRLINES as letters in stylised form in class 25; (iii) United States registered trade mark No. 5854303 registered on September 10, 2019, for FLAGSHIP as a standard character mark in classes 35, 39, 43, and 45; (iv) Chinese trade mark No. 16090858 registered on March 7, 2016, for AMERICAN AIRLINES as an English word mark in class 35; and (v) Chinese trade mark No. 28377408A registered on February 28, 2019, for FLAGSHIP as an English word mark in class 35. 4.4 The Complainant also uses the domain names 4.5 The Domain Name was registered on February 20, 2020. It was used in April 2021, to display what appeared to be pay-per-click links generated by the Registrar, some of which appeared to relate to airlines flights, but most of which appeared to be directed to various finance products and credit cards, including the “Citi Aadvantage Card”. 4.6 The Respondent would appear to be an individual located in Hong Kong, China. The Respondent has previously been involved in at least five cases under the Policy, which have been decided against the Respondent. These are: - Confederation Nationale du Credit Mutuel v. Super Privacy Service LTD c/o Dynadot / Cyan Yo,WIPO Case No. D2020-3043 ( 4.7 This is not the first time that the Domain Name has been the subject of proceedings under the UDRP. The Domain Name was included in a previous complaint about five domain names. The panel was unpersuaded that all five domain names were under common control, and in the case of the Domain Name, those proceedings were terminated “without prejudice”. Full details in this respect are set out in American Airlines, Inc. v. Super Privacy Service Ltd, c/o Dynadot LLC / Domain Admin, Netlas, Cyan Yo, James Dupont, Zhichao, and Milen Radumilo,WIPO Case No. D2021-0442. 5. Parties’ Contentions A. Complainant 5.1 The Complainant refers to its business and marks and how the Domain Name has recently been used. It contends that the Domain Name comprises its AMERICAN AIRLINES and FLAGSHIP registered trade marks combined with the generic Top-Level Domain (“gTLD”) “.com”, and that consequentially the Domain Name is confusingly similar to both marks. 5.2 The Complainant contends that the use made of the Domain Name, does not demonstrate rights or legitimate interests in the Domain Name and demonstrates registration and use in bad faith. In this respect it claims that in addition to the Respondent having prior actual knowledge of the Complainant’s marks, there was also constructive knowledge, relying upon United States case law and the decision in Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384. In this respect it relies upon the examples of circumstances indicating bad faith registration and use at paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. 5.3 The Complainant also alleges that the Respondent has used a privacy service in this case and this is also said to indicate bad faith. Finally, it contends that the Respondent’s past history of involvement in a number of UDRP cases provides additional evidence of bad faith and that the Respondent’s activities fall within the scope of paragraph 4(b)(ii) of the Policy. B. Respondent 5.4 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. 6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). 6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. 6.4 Although the Domain Name has previously been the subject of UDRP proceedings, the circumstances of the termination of those proceedings so far as the Domain Name is concerned, mean that the Panel can and should substantively decide this case. In this respect see section 4.18 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), and in particular the comments therein about cases previously decided (including termination orders) expressly on a “without prejudice” basis. A. Identical or Confusingly Similar 6.5 The Complainant has satisfied the Panel that it has registered trade marks that comprise or incorporate the words “American Airlines” and “Flagship”. In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable within the disputed domain name” (as to which see section 1.7 of the WIPO Overview 3.0). 6.6 The Panel accepts that the only sensible reading of the Domain Name is as the words “American Airlines Flagship” to which has been added the “.com” gTLD. Given this, both of the Complainant’s AMERICAN AIRLINES and FLAGSHIP marks are clearly recognisable in the Domain Name. The Complainant has, therefore, satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests 6.7 As is discussed in the context of bad faith, the Panel accepts that the Domain Name was registered and has subsequently been held with the intention of taking some form of unfair advantage of the Complainant’s marks. There are no rights or legitimate interests in holding a domain name for such a purpose. 6.8 Further, the Domain Name incorporates two trade marks of the Complainant in the form <[Trade Mark 1][Trade Mark 2].com>. As such, the Domain Name inherently and deliberately impersonates the Complainant, and it is difficult to conceive of any legitimate use other than by or with the authorisation of the Complainant (see sections 2.5.1 and 2.6.2 of the WIPO Overview 3.0). In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. 6.9 It follows that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith 6.10 Notwithstanding that “american”, “airlines”, and “flagship” are all ordinary English words, the Panel accepts that in combination they can only sensibly be understood as making a clear and deliberate reference to the Complainant and its marks. Therefore this is a case where the domain name does not just take the from <[Trade Mark].com> but <[Trade Mark 1][Trade Mark 2].com>, where both trade marks are those of the Complainant. 6.11 Accordingly the Domain Name inherently and deliberately impersonates the Complainant. That is sufficient for a finding of bad faith registration and use (see, for example, Johnson & Johnson v. Ebubekir Ozdogan,WIPO Case No. D2015-1031). 6.12 Why exactly the Respondent has registered such a domain name is unclear. The Complainant points to the pay-per-click links that appeared on the web page operating from the Domain Name and contends that these links fall within the scope of paragraph 4(b)(iv) of the Policy. The Panel agrees with that assessment, but whatever the exact reason why the Domain Name was registered and held, the Panel is satisfied that the Domain Name was registered and is being held to take unfair advantage of the reputation of the Complainant’s business and marks in some manner most likely for commercial gain. Again, that is sufficient for a finding of bad faith registration and use (see, for example, Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). 6.13 The Panel rejects the Complainant’s contentions based upon “constructive” knowledge of its trade marks. It is highly questionable whether this concept, which derives from United States law and was relied upon in some very early cases under the UDRP, is now of any utility in UDRP proceedings (see section 4.15 of the WIPO Overview 3.0). It also certainly does not apply where, as here, one of the Parties is not based in the United States (see section 3.2.2 of the WIPO Overview 3.0). However, this does not matter since that Panel has no difficulty in concluding from the form of the Domain Name alone, that the Respondent has actual knowledge of the Complainant’s business and its marks at the relevant date of registration. 6.14 Finally, the Panel also accepts that the previous activities of the Respondent provide an additional indication of bad faith in the present case. The UDRP cases that the Complainant identifies show that the Respondent has historically registered and held a number of domain names that incorporate the trade marks of others in bad faith. The Panel accepts that this is another example of that pattern of conduct. 6.15 The Panel, therefore, concludes that the Domain Name was registered and is being used in bad faith. The Complainant has therefore made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision 7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Matthew S. Harris
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Sole Panelist
Date: May 29, 2021
Full & Egal Universal Law Academy