ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION American Airlines, Inc. v. Domain Privacy, Domain Name Privacy Inc. Case No. D2024-3883 1. The Parties The Complainant is American Airlines, Inc., United States of America (“United States”), represented by Greenberg Traurig LLP, United States. The Respondent is Domain Privacy, Domain Name Privacy Inc., Cyprus. 2. The Domain Name and Registrar The disputed domain name
is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2024. On September 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2024, 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 (Contact Privacy, Inc. Customer 0172209824) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2024, 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 September 27, 2024. 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 September 30, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2024.
page 2 The Center appointed Willem J. H. Leppink as the sole panelist in this matter on October 24, 2024. 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 following facts are undisputed. The Complainant is one of the largest air carriers in the world. It was founded more than 90 years ago, and serves with its affiliates over 350 destinations over fifty countries with nearly 7,000 daily flights. For decades, it has used and continues to use its name American Airlines (abbreviated “AMERICAN”) and numerous trademarks and service marks including AA, AMERICAN, and AMERICAN AIRLINES, and others, both alone and in connection with other words and designs. The Complainant is the owner of numerous trademarks worldwide, such as but not limited to the following registrations for the AMERICAN AIRLINES mark: - The United States trademark registration AMERICAN AIRLINES (wordmark), with registration number 4939082, and with a registration date of April 19, 2016, for goods in classes 35, 37, 39, 41, and 43; - The European Union trademark registration AMERICAN AIRLINES (figurative) with registration number 000161976 and with a registration date of June 14, 1999, for goods in class 39; - The Canadian trademark registration AMERICAN AIRLINES (wordmark), with registration number TMA404993 and with a registration date of November 13, 1992, for goods in class 39. The abovementioned trademark registrations will hereinafter in singular also be referred to as “the AMERICAN AIRLINES mark”. The Complainant also registered the domain names and in 1998 which it has continuously used in commerce since that date. These domain names resolve to the Complainant’s official website (the “official website”) featuring general information about the Complainant and traveling, but also allows customers to book and manage travel reservations around the world. According to SimilarWeb.com the official website has been ranked number one website in the world in the category of Air Travel. The Complainant has a mobile application for its consumers to book and manage their travel reservations (the “application”). All mentioned trademark registrations predate the registration of the disputed domain name on August 25, 2024. The disputed domain name did and does currently not resolve to an active website, but to website that contains pay-per-click (“PPC”) or affiliate advertising links. The Complainant has also provided evidence showing that the Respondent has listed the disputed domain name for sale on a domain name aftermarket platform. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
page 3 Notably, the Complainant contends the following. The Complainant is considered internationally as a premier airline for business and leisure travelers. The Complainant has developed a global name-recognition and goodwill. The Complainant has continuously used the AMERICAN AIRLINES mark since at least 1992 and used its official website in commerce since 1998. The disputed domain name is confusingly similar to the AMERICAN AIRLINES mark. The disputed domain name incorporates the AMERICAN AIRLINES mark in its entirety, with the mere addition of the term “app” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of the descriptive term “app” does not make the disputed domain name any less confusingly similar to the AMERICAN AIRLINES mark. Instead, the addition of the descriptive term “app” increases the likelihood of confusion based on the direct association of that word with the application. The Respondent has no rights or legitimate interests in the disputed domain name. Notably, there is no evidence that the Respondent is commonly known by the disputed domain name. Also, the Complainant has not authorized, by license or otherwise the Respondent to register and/or use the disputed domain name. Further, the Respondent’s action in connection with the disputed domain name cannot be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The Respondent has engaged in bad faith. The Respondent acquired with knowledge of the AMERICAN AIRLINES mark the confusingly similar disputed domain name to attract and redirect Internet users to competitive websites garnering PPC or affiliate advertising revenue for the Respondent’s commercial gain. Moreover, the Respondent has listed the disputed domain name for sale for USD 2,888 on GoDaddy.com. The attempt to sell a domain name consisting of a well-known 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 domain name. Additionally, the disputed domain name has active mail exchange records which indicates use for email, which evidences a likelihood of additional bad faith use of the disputed domain name to engage in fraudulent email or phishing communications. Finally, the Respondent used a proxy service to register the disputed domain name. Use of a proxy service to shield its identity and elude enforcement efforts by the legitimate trademark owner demonstrates the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
page 4 The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “app” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. The disputed domain name is used to host a page comprising PPC links associated with the Complainant’s business. The Panel finds that the Respondent’s registration and commercial use of the disputed domain name in such a manner demonstrates registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy, because the Respondent is intentionally attempting to attract Internet users to the website to which the disputed domain name resolves for commercial gain. In the present case, the Panel notes that the Complainant and its activities are clearly known to the Respondent and the Respondent has sought to benefit himself with the Complainant’s success. The Panel finds that, certainly lacking any reply, any bona fide use of the disputed domain name is implausible under the circumstances for this proceedings.
page 5 Moreover, the attempt to sell a domain name consisting of a well-known trademark where the Respondent has knowledge of such trademark, likely in excess of the Respondent’s investment relative to the disputed domain name reinforces the Panel’s finding of bad faith registration and use of the disputed domain name. The Panel finds that the Complainant has established the third element 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 name be transferred to the Complainant. /Willem J. H. Leppink/ Willem J. H. Leppink Sole Panelist Date: October 30, 2024
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