National Arbitration Forum

 

DECISION

 

American Airlines, Inc. v. Damir Kruzicevic

Claim Number: FA0706001015779

 

PARTIES

Complainant is American Airlines, Inc. (“Complainant”), represented by Kristin Jordan Harkins, of Conley Rose, P.C., 5700 Granite Parkway, Suite 330, Plano, TX 75024.  Respondent is Damir Kruzicevic (“Respondent”), represented by Howard M. Neu, of Law Office of Howard M. Neu, P.A.,1152 North University Drive, Pembroke Pines, FL 33024.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <<aatravel.com>>, registered with Fabulous.com Pty Ltd.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding:

Jeffrey M. Samuels;

Hon. Ralph Yachnin (Ret.); and

Hon. Tyrus R. Atkinson, Jr., Esq.;

Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2007.

 

On June 26, 2007, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <<aatravel.com>> domain name is registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 18, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@<aatravel.com> by e-mail.

 

A timely Response was received and determined to be complete on July 12, 2007.

 

On June 22, 2007, The Forum received an Additional Submission from Complainant which was determined to be complete in accordance to The Forum’s Supplemental Rule # 7. 

 

On July 20, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels,

Hon. Ralph Yachnin (Ret.), and Hon. Tyrus R. Atkinson, Jr., Esq. as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, American Airlines, Inc., has been engaged since 1935 in the business of air transportation and related services.  Today, it is one of the world’s largest airlines.

 

Complainant owns a number of U.S. trademark registrations for the mark AA, as used alone, and with related designs, as well as for the mark AA.COM.  See Exhibits 3A to 3E of the Affidavit of Donald E. Broadfield, Jr. attached as Annex 3 to the Complaint.  Complainant also owns other U.S. trademark registrations for marks that incorporate the term “AA,” including AA AMERICAN and DESIGN and AA ADVANTAGE.  Complainant also owns the domain name <aa.com>.

 

Complainant alleges that the disputed domain name <aatravel.com> is confusingly similar to its registered AA mark because the domain name incorporates Complainant’s mark in its entirety and merely adds a descriptive term “travel.”

 

Upon information and belief, Complainant further asserts that Respondent has not and does not use the disputed domain name in connection with a bona fide offering of goods or services.  According to Complainant, when an Internet user types in the disputed domain name <aatravel.com>, the user is immediately linked or redirected to another web site, <cheaprooms.com>.  The <cheaprooms.com> web site provides a search engine for Internet users to search for airline ticket schedules and prices, hotel availability and prices, and car rental availability and prices, and then make purchases online or by phone.  See Affidavit of Shannon W. Bates, para. 4, Annex 1 to Complaint.   When searching for airline tickets on <cheaprooms.com>, the Internet user is presented with flight options from Complainant along with Complainant’s competitors.  If the Internet user selects an outgoing and return flight and then books an airline ticket, a $10 non-refundable service fee is charged at the time of booking. Complainant maintains that by using the domain name <aatravel.com> to redirect Internet users to <cheaprooms.com> and then selling American Airlines tickets to some Internet users, Respondent is creating the impression that it is an authorized agent of Complainant when, in fact, no such relationship exists. 

 

With respect to the issue of “bad faith” registration and use, Complainant maintains that:

 

“[g]iven that the disputed domain name <aatravel.com> immediately diverts Internet users to the <cheaprooms.com> web site from which Respondent receives service fees, Respondent clearly registered the domain name … for the primary purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s  web site or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or of a product or service on Respondent’s web site in violation of ICANN Policy ¶4(b).”

 

B. Respondent

Respondent first alleges that the disputed domain name <aatravel.com> was registered on December 24, 1997, and purchased by Respondent on January 2003.  Respondent notes that while Complainant has registered various marks containing the letters “AA,” there is no registered mark owned by Complainant for AATRAVEL.  Further, Respondent adds, Complainant has no exclusive rights to the letters “AA.”  In support of such assertion, Respondent indicates that the USPTO lists 535 records of marks for the letters “AA,” most of which are not owned by Complainant.  See Exhibit B to Response.  According to Respondent, the term “AA,” as connected to travel, is mostly connected with automobile associations and itself stands for better than “A.”  Some examples of such use are <aatravel.co.nz>, <aatravel.ro>, <aatrvl.com>, and <aatravelguide.com>.   

 

Respondent maintains that he has a legitimate business use for <aatravel.com>. Although airline tickets may be purchased by accessing the site, Respondent indicates that his primary business is the sale of hotel rooms at a discount.  Respondent further notes that he has registered over 1600 domain names that are travel related, including <traveling.com>, <travelling.com>, <cheaphotels.com>, <budgettravel.com>, and <cheapvacations.com>.

 

Respondent argues that there is no evidence that persons have been diverted away from <aa.com> or that the subject web site creates the impression that Respondent is an authorized agent of Complainant.

 

Finally, Respondent contends that none of the circumstances set forth in paragraph 4(b) of the Policy with respect to “bad faith” registration and use is applicable in this case.   More specifically, Respondent asserts that he did not register the domain name in issue (1) for the purpose of selling it to Complainant; or (2) to prevent the Complainant from reflecting the AA mark in a corresponding domain name; or (3) for the purpose of disrupting the business of a competitor; or (4) to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site, by creating confusion using the Complainant’s AA mark.

 

C. Additional Submissions

In its “Additional Submission,” Complainant contends that it is not required that it establish that any persons have actually been diverted away from Complainant’s web site at <aa.com>.  Rather, it need only show that the disputed domain name is confusingly similar to Complainant’s mark.

 

Complainant also emphasizes that it is not claiming exclusive rights to the letters “AA” across all goods and services.  Instead, it is only asserting exclusive rights to the AA mark as used in connection with air transportation – a service in which Respondent engages on his web site via use of the <aatravel.com> domain name.

 

In response to Respondent’s evidence regarding third party use of domain names that include the term “AA” along with “travel,” Complainant indicates that such use by automobile associations may be legitimate if the associations are not advertising or selling air transportation services.

 

In response to Respondent’s assertion that any Internet user that types in <aatravel.com> is more likely to book a hotel room than a flight, Complainant argues that the “ICANN dispute rules do not contemplate an exception for de minimus use of a domain name that is confusingly similar to the registered trademark of another party, nor do these rules require a showing that the Respondent’s sales come primarily from competition with Complainant.”

 

Finally, Complainant points out that Respondent has been found[1] to have knowingly and in bad faith registered and used domain names incorporating the marks of airline and hotel companies to redirect to <cheaprooms.com>. 

 

FINDINGS

The Panel finds that: (1) the disputed domain name <aatravel.com> is confusingly similar to a mark, AA, in which Complainant has rights; (2) Respondent has no legitimate interests or rights in the domain name; and (3) the domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   The domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel finds that the disputed domain name <aatravel.com> is confusingly similar to Complainant’s AA marks.  As noted by Complainant, the domain name incorporates Complainant’s mark in its entirety and merely adds a descriptive term “travel.”  See Sony Kabushiki Kaisha v. India, Kill, D2000-1409 (WIPO Dec. 9, 2000) (finding that the addition of an ordinary descriptive term did not detract from the overall commercial impression of the dominant part of the domain name.)

 

The Panel further finds that Complainant, through its registrations for, and longstanding use of, the AA marks, has rights in such marks.  The fact that Complainant does not use the mark AATRAVEL or that third parties have registered marks that include the letters “aa” is irrelevant, at least with respect to this element of the Policy.  What is relevant under this element of the applicable Policy is that the challenged domain name be at least confusingly similar to a mark in which Complainant has rights.  This requirement clearly has been met in this case. 

 

Rights or Legitimate Interests

 

The Panel concludes that Complainant has established that Respondent has no rights or legitimate interests in the domain name.  There is no evidence that Respondent is commonly known by the domain name or is making a noncommercial or fair use of such name.

 

While Respondent contends that he is using the domain name in connection with a bona fide offering of goods or services, the Panel disagrees.  In Expedia, Inc. v. Compaid, FA520654 (Nat. Arab. Forum Aug. 30, 2005), the panel found that the respondent’s use of the expediate.com domain name to redirect Internet users to a web site featuring links to travel services that competed with complainant was not a bona fide offering of goods or services.  In Nike, Inc. v. Dias, FA135016 (Nat. Arb. Forum Jan. 7, 2002), the panel found no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its web site, which offered both the complainant’s products and those of the complainant’s competitors.

 

The facts of this case are analogous to those in Expedia and Nike.  There is no dispute that Respondent in this case is using the confusingly similar domain name <aatravel.com> in order to redirect indirect users to a web site, <cheaprooms.com>, for the purpose of selling airline and hotel tickets. This Panel agrees with the reasoning of the Expedia and Nike panels and, thus, rejects Respondent’s assertion of “bona fide” use.

 

Registration and Use in Bad Faith

 

The Panel finds that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.  The evidence indicates that Respondent uses the confusingly similar domain name <aatravel.com> in order to attract Internet users to its <cheaprooms.com> site, from which users may purchase hotel and airline tickets.  Given the confusingly similar nature of the <aatravel.com> domain name, the longstanding use of the AA mark by Complainant, and the fact that both parties are in the travel business, the Panel determines that Internet users are likely to be confused as to the source, sponsorship, affiliation, or endorsement of Respondent’s <aatravel.com> site or of the services offered at such site.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <<aatravel.com>> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey M. Samuels

Hon. Ralph Yachnin (Ret.)

 Hon. Tyrus R. Atkinson, Jr., Esq.

 Panelists

Dated:  July 30, 2007