ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION American Airlines, Inc. v. Domain Privacy, Domain Name Privacy Inc Case No. DCO2024-0064 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 Communigal Communications Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2024. On September 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which partly differed from the named Respondent (REDACTED FOR PRIVACY / Domain Name Privacy Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 19, 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 23, 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 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2024.
page 2 The Center appointed Peter Burgstaller as the sole panelist in this matter on October 22, 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 Complainant is one of the leading global air carriers, headquartered in Fort Worth, Texas, United States. It owns or has rights in numerous trademark registrations containing the mark AMERICAN AIRLINES, inter alia: - European Union trademark registration for AMERICAN AIRLINES (word), Reg. No. 000153726, registered on March 29, 1999; - Chinese trademark registration for AMERICAN AIRLINES (word), Reg. No. 616440, October 30, 1992; - Japanese trademark registration for AMERICAN AIRLINES (word), Reg. No. 2107490, registered on January 23, 1989; - International Trademark Registration for AMERICAN AIRLINES (word), Registration. No. 1266184, registered on December 31, 2014 (Annex 9 to the Complaint). Furthermore, the Complainant owns the domain names and which redirects to where the Complainant’s highly frequented primary website is hosted (Annexes 6 and 7 to the Complaint). The Complainant has also a strong social media presence on the Internet (Annex 8 to the Complaint). The disputed domain name was registered on July 24, 2024. At the time of filing of the Complaint the disputed domain name was listed for sale (Annexes 4 and 11 to the Complaint), redirecting to an apparently unrelated site (Annex 10 to the Complaint), and had active Mail Exchange (“MX”) records (Annex 12 to the Complaint). 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. Notably, the Complainant contends that the AMERICAN AIRLINES trademark is a famous and well-known trademark. It is noted that the disputed domain name entirely incorporates such trademark. The disputed domain name is also identical to the Complainant’s domain name other than hyphen and the Top-Level-Domain (“TLD”), as well as the Complainant’s holding company name American Airlines Group, Inc. The Complainant submits that there is no legal relationship whatsoever between the Complainant and the Respondent and it has not authorized, licensed, or consented to the Respondent’s registration and use of domain names incorporating the Complainant’s marks, or any confusingly similar variation thereof. The disputed domain name is neither used in connection with a bona fide offering of goods or services nor constitutes a legitimate noncommercial or fair use; instead, the Respondent is using the disputed domain name to divert Internet traffic to various third-party websites to earn a commission through an affiliate advertising program. Further, the Respondent’s attempts to sell the disputed domain name well in excess of its out-of-pocket costs, while the Respondent was well aware that it contains the Complainant’s well-known trademark; this does not create rights and legitimate interests under the Policy.
page 3 The Complainant contends that the mere fact that the Respondent has registered the disputed domain name which incorporates the famous AMERICAN AIRLINES mark of the largest airline in the world is alone sufficient to give rise to an inference of bad faith; the registration of the disputed domain name cannot be a coincidence. Moreover, the mere reason of registering the disputed domain name by the Respondent is intentionally attempting to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Finally, the disputed domain name has active MX records, which indicate 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. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (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 with respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. 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. Based on the available record, the Panel finds the Complainant has shown rights in respect of the mark AMERICAN AIRLINES for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. In the present case, the disputed domain name is confusingly similar to the AMERICAN AIRLINES mark in which the Complainant has rights, since it incorporates the entirety of the mark AMERICAN AIRLINES and only adds a hyphen between the two words. It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere addition of other terms or characters does not prevent a finding of confusing similarity under the first element of the Policy. This is the case at present. WIPO Overview 3.0, section 1.8. Finally, it has also long been held that TLDs (in this case “.co”) are generally disregarded when evaluating the confusing similarity of a disputed domain name. WIPO Overview 3.0, section 1.11.1. Based on the available record, 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.
page 4 While 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. WIPO Overview 3.0, section 2.1. Having reviewed the 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, since it has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to use the AMERICAN AIRLINES trademark in any manner. Furthermore, the Respondent is not commonly known under the disputed domain name and the disputed domain name is not being used for a bona fide offering of goods or services; rather the disputed domain name is held by the Respondent to redirect Internet traffic to various third-party websites. Such use demonstrates neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. See Ross-Simons of Warwick, Inc. v. Admin Billing, WIPO Case No. D2004-0696; MySpace, Inc. v. Mari Gomez, WIPO Case No. D2007-1231. Finally, the nature of the disputed domain name, incorporating the entirety of the distinctive, well-known and famous mark AMERICAN AIRLINES, which renders the disputed domain name almost identical to the Complainant’s domain name , cannot be considered fair use as it creates a likelihood of confusion with the Complainant. The Respondent did not provide any evidence showing its rights or legitimate interests in the disputed domain name. Based on the available record, the Panel finds the second element of the Policy has been established C. Registered and Used in Bad Faith As stated in many past decisions rendered under the Policy, both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that: - the disputed domain name was registered by the Respondent in bad faith; and - the disputed domain name is being used by the Respondent in bad faith. (i) The Complainant has established rights in the registered trademark AMERICAN AIRLINES long before the registration of the disputed domain name. Furthermore, the trademark AMERICAN AIRLINES is distinctive, famous and extensively used on the Internet. Because of the distinctiveness and reputation of the AMERICAN AIRLINES mark, it is inconceivable for this Panel that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a distinctive trademark by an unaffiliated entity (as it is in the present case) can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Finally, a simple online search for AMERICAN AIRLINES would have shown the Complainant and its famous AMERICAN AIRLINES marks. WIPO Overview 3.0, section 3.2.3. Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.
page 5 (ii) The disputed domain name is also being used in bad faith. The nearly identical to the Complainant’s mark disputed domain name redirects to a third parties’ website and as such is likely to unduly profit from the value of the Complainant’s trademark. In addition, the high level of reputation of the Complainant’s trademark, as well as the composition (nearly identical to the Complainant’s mark) and for sale nature of the disputed domain name support the finding of bad faith under the Policy. Furthermore, this Panel concludes that the disputed domain name is being used in bad faith, putting emphasis on the following: - the disputed domain name has active MX records, as shown in the MX records lookup, which indicates a possible use for email services; - the disputed domain name is inherently misleading, and is thus suited to divert or mislead potential Internet users from the website they are trying to visit (the Complainant’s site) and giving the false impression that the Respondent may be in some way related with the Complainant, which is not the case; - the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, likely for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name. The evidence and documents produced and put forward by the Complainant together with the fact that the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain name further support the finding of bad faith. Based on the available record, 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. /Peter Burgstaller/ Peter Burgstaller Sole Panelist Date: October 31, 2024
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