American Airlines, Inc. v.
Claim Number: FA0809001223585
PARTIES
Complainant is American Airlines, Inc (“Complainant”), represented by Kristin Jordan Harkins, of Conley Rose, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aadvantageshoping.com>,
registered with Compana, LLC.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 8, 2008; the National Arbitration Forum received a
hard copy of the Complaint on September 10, 2008.
On September 9, 2008, Compana, LLC confirmed by e-mail to the National
Arbitration Forum that the <aadvantageshoping.com>
domain name is registered with Compana, LLC and that the Respondent is the
current registrant of the name. Compana,
LLC has verified that Respondent is bound by the Compana, LLC 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 September 11, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 1, 2008 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@aadvantageshoping.com by e-mail.
A timely Response was received and determined to be complete on October
1, 2008.
A timely Additional Submission was received from Complainant on October
6, 2008.
On October 15, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of the following U.S. Trademark registrations
that are relevant to the present administrative proceeding.
|
Trademark |
Reg.
No. |
Goods/Services |
First Use in Commerce |
|
AADVANTAGE |
2,187,483 |
Promoting the goods and services of
others by means of an incentive awards programs, whereby purchase points are
awarded for purchase made from vendor subscribers, which can then be redeemed
for merchandise and travel; providing air transportation services featuring a
program of bonus flights for frequent travelers. |
At least as early as April 20, 1981 |
|
AADVANTAGE (and Design) |
1,228,737 |
Providing a Program of Bonus Flights for
Frequent Travelers. |
At least as early as April 20, 1981 |
|
AADVANTAGE (and Design) |
2,006,172 |
Promoting travel services, credit card
use, long-distance service car rentals, and hotel accommodations through the
administration of award programs. |
At least as early as April 20, 1981 |
|
AADVANTAGE PLATINUM (and Design) |
1,788,496 |
Transportation of passengers by air;
namely, providing a program of bonus flights for frequent travelers. |
At least as early as June 15, 1992 |
|
AADVANTAGE DIAL-IN |
1,832,881 |
Providing travel, lodging and frequent
flyer account balance information via automated voice response. |
At least as early as Dec. 14, 1992 |
|
AADVANTAGE GOLD (and Design) |
2,001,368 |
Transportation of passengers by air,
namely providing a program of bonus flights for frequent travelers. |
At least as early as Nov. 12, 1982 |
|
AADVANTAGE EXECUTIVE PLATINUM |
2,247,386 |
Transportation of passengers by air,
namely, providing a program of bonus flights for frequent travelers. |
At least as early as Jan. 21, 1998 |
|
AADVANTAGE EXECUTIVE PLATINUM (and Design) |
2,444,458 |
Transportation of passengers by air,
namely, providing a program of bonus flights for frequent travelers. |
At least as early as Jan. 21, 1998 |
|
AADVANTAGE VACATION AWARDS |
2,419,098 |
Travel services, namely, custom vacation
redemption program using miles and/or cash for hotels, resorts, car rental,
theme park tickets, ski lifts tickets, or other travel related services. |
At least as early as June 1, 1999 |
|
AADVANTAGE VACATION AWARDS (and Design) |
2,413,986 |
Travel services, namely, custom vacation
redemption program using miles and/or cash for hotels, resorts, car rental,
theme park tickets, ski lifts tickets, or other travel related services. |
At least as early as June 1, 1999 |
|
AADVANTAGE GOLF |
2,577,106 |
Promoting the goods and services of
others through the administration of an incentive award loyalty program for
sports membership. |
At least as early as April 27, 1999 |
|
AADVANTAGE GOLF (and Design) |
2,577,072 |
Promoting the goods and services of
others through the administration of incentive award loyalty program for
sports membership. |
At least as early as April 27, 1999 |
This Complaint is based on
the following grounds:
A. Complainant’s Legitimate Rights to the Marks AADVANTAGE® and AAdvantage eShopping™
Complainant, American Airlines, Inc. is engaged in the business of air transportation and related services and is one of the world’s largest airlines. Complainant has acquired a nationwide reputation for quality goods and services, and has accumulated substantial public goodwill. In the course of its business, Complainant has acquired extensive rights in numerous trade names, trademarks and service marks. Complainant advertises, promotes and sells its goods and services directly to the ultimate consumer as well as through travel agencies and other third parties. The methods of advertising, promoting and sales are many, including on the Internet.
In the course of its business, Complainant administers a customer loyalty and travel awards program under the mark AADVANTAGE®, as used alone and with various designs, which Complainant has continuously used since at least as early as April 20, 1981.
The AADVANTAGE® customer loyalty program was the original travel awards program and today is the world’s largest such program. AADVANTAGE® program members earn frequent flyer miles when they fly on American Airlines or any of over 21 partner airlines, stay at any of over 35 partner hotels, or rent a car from any of the 7 major car rental agencies, all of which are AADVANTAGE® partners. Program members can also earn frequent flyer miles by making purchases or donations through various non-travel related companies that participate in American Airlines’ programs, including charities, credit and debit card companies, restaurants, financial services companies, phone and Internet companies, real estate and mortgage companies, and consumer retail companies.
Complainant has also adopted and
developed substantial rights and goodwill in an entire family of trademarks and
service marks that incorporate the term “AADVANTAGE”, including the marks
AADVANTAGE PLATINUM (and Design)®, AADVANTAGE DIAL-IN®, AADVANTAGE GOLD (and
Design)®, AADVANTAGE EXECUTIVE PLATINUM®, AADVANTAGE EXECUTIVE PLATINUM (and
Design)®, AADVANTAGE VACATION AWARDS, AADVANTAGE VACATION AWARDS (and Design)®,
AADVANTAGE GOLF® and AADVANTAGE GOLF (and Design)®. These marks are all used in commerce in
connection with the advertising and administration of various aspects of the
AADVANTAGE® customer loyalty program in the
Complainant
has devoted considerable efforts to advertise and promote its services offered
under its family of AADVANTAGE® marks and has developed widespread recognition
and fame in the marketplace for its customer loyalty program offered under the
mark AADVANTAGE®. Because A ADVANTAGE® is a well-known and famous mark by which Complainant
American Airlines, Inc. is identified, and also as a result of longstanding,
continuous use throughout the
Complainant has also extensively advertised and promoted its customer loyalty services offered under the mark AADVANTAGE® on the Internet. Complainant is the owner of the domain name AAdvantageeShopping.com, which contains the Complainant’s mark AADVANTAGE®.
Moreover, Complainant has developed substantial common law rights in the service mark AAdvantage eShopping™, which is prominently displayed on Complainant’s web site <AAdvantageeShopping.com> to advertise and promote Complainant’s online retail shopping mall services, administered as part of the AADVANTAGE® customer loyalty program. The AAdvantage eShopping™ mall allows AADVANTAGE® members to earn frequent flyer miles by shopping with over 200 brand-name retailers, earning miles for every dollar spent. These retailers sell merchandise in a variety of different categories, including apparel, baby and maternity, books and magazines, computers, department stores, electronics, flowers, gifts, gourmet and entertaining, health and beauty, home and garden, jewelry and watches, music and movies, office and school supplies, pets, photo, services, shoes and accessories, small business, sports and recreation, toys, and travel and leisure.
Complainant has enjoyed continuous and substantially exclusive use of the service mark AAdvantage eShopping™ since at least as early as January 2004. Through the <AAdvantageeShopping.com> web site, approximately $49,500,000 in annual sales were made during 2007 in connection with the AAdvantage eShopping™ mark, and these sales were associated with over 386,000 separate transactions. In addition, the <AAdvantageeShopping.com> web site is viewed by Internet users an average of approximately 9,000,000 times annually. As such, the AAdvantage eShopping™ mark has come to be accepted by the purchasing public as distinguishing Complainant’s online retail mall services, as provided in connection with the AADVANTAGE® customer loyalty program, from the goods and services of others.
Complainant’s presence on the Internet promotes Complainant’s AADVANTAGE® and AAdvantage eShopping™ services and identifies Complainant as the source of such services. Complainant has acquired and now enjoys substantial goodwill and a valuable reputation through its registered AADVANTAGE® mark, through its common law AAdvantage eShopping™ mark, and through its <AAdvantageeShopping.com> web site. The maintenance of high standards of quality and excellence for Complainant’s customer loyalty program services and associated online retail mall services has contributed to this valuable goodwill and reputation. The goodwill embodied in the Complainant’s AADVANTAGE® family of marks, and consequently Complainant’s valuable reputation and credibility in the airline industry, depend on the integrity of the marks as identifying Complainant as the sole source of its customer loyalty program services and not any other source.
B. Respondent’s
Illegitimate Activities Relating to the Disputed Domain Name
[a]. In
accordance with ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i):
The Disputed Domain Name is Confusingly Similar to the Marks in which Complainant has Rights:
The disputed domain name <aadvantageshoping.com> is confusingly similar to
Complainant’s registered AADVANTAGE® mark because the
domain name incorporates Complainant’s mark in its entirety, merely adding the
misspelled descriptive term “shoping” and the generic top-level domain (gTLD)
“.com”. Thus, the dominant portion of
the disputed domain name is identical to the Complainant’s mark AADVANTAGE®,
and adding a misspelled descriptive term fails to detract from the overall
commercial impression provided by the AADVANTAGE® mark. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that the addition of an ordinary
descriptive word did not detract from the overall commercial impression of the
dominant part of the domain name, which was the SONY mark). See
also Am. Airlines, Inc. v. Tex. Int’l Prop. Assocs., FA 914854
(Nat. Arb. Forum Apr. 10, 2007) (finding that the addition of a gTLD is not
significant when examining whether a disputed domain name is identical or
confusingly similar to Complainant's mark under Policy ¶4(a)(i)); Isleworth
Land Co. v. Lost in Space, SA, FA
117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i)
analysis.”).
The disputed domain name <aadvantageshoping.com> is also essentially identical and/or confusingly similar to Complainant’s common law mark AAdvantage eShopping™ because the domain name differs from Complainant’s mark only by misspelling the term “eShopping” and by adding the generic top-level domain “.com.” Thus, the dominant portion of the disputed domain name is essentially identical to the Complainant’s mark AAdvantage eShopping™, and misspelling the term “eShopping” fails to detract from the overall commercial impression provided by the AAdvantage eShopping™ mark. See Interflora, Inc. v. Whois Privacy Protection Serv., Inc., FA0609000796384 (Nat. Arb. Forum Nov. 1, 2006) (holding that creating a domain name that mimics a common typing or spelling error does not distinguish the domain name inteflora.com from Complainant’s mark INTERFLORA).
Respondent’s registration and use of the disputed domain name, which is confusingly similar to Complainant’s registered AADVANTAGE® mark, and also represents likely spelling and typographical errors of Complainant’s common law AAdvantage eShopping™ mark and web site <AAdvantageeShopping.com>, is misleading and causes confusion to consumers who are diverted away from Complainant’s web site AAdvantageeShopping.com where Internet users can earn AADVANTAGE® miles through Complainant’s customer loyalty program. Clearly, Respondent has registered a confusingly similar variation of the Complainant’s marks and domain name so that Internet users attempting to reach the Complainant’s web site at <AAdvantageeShopping.com> will be redirected to Respondent’s web site.
[b]. In
accordance with ICANN Rule 3(b)(ix)(2); ICANN Policy ¶¶4(a)(ii), 4(c):
The Respondent Has No Rights or Legitimate Interests in the
Disputed Domain Name:
Upon information and belief, Respondent has not and does not use the disputed domain name in connection with a bona fide offering of goods or services. When an Internet user types in <aadvantageshoping.com>, the disputed domain name resolves to a web site featuring category links displayed under the heading “Related Searches”, with the category “Shopping Advantage” presented first. Clicking on the “Shopping Advantage” category link brings the Internet user to a list of “Sponsored Results” with links to various commercial web sites, from which Respondent presumably receives click-through or referral fees. The “Sponsored Results” listing includes large-print headings above each commercial web site link, most of which include the word “Advantage” or “Shopping” or both. A link to Complainant’s web site <AAdvantageeShopping.com> is listed under the heading “Aadvantage eShopping Mall” and links to other retail shopping web sites that compete with Complainant’s retail mall services and that do not offer AADVANTAGE® miles are listed under such headings as “Shop Online, Earn Rewards” and “Shopping Advances.”
Clearly, the Respondent is using
the disputed domain name <aadvantageshoping.com>
as an opportunistic attempt to attract Internet users to Respondent’s web site
by creating a likelihood of confusion with Complainant. Respondent is profiting from Internet users
who unintentionally misspell Complainant’s common law mark AAdvantage eShopping™ when attempting to access
Complainant’s web site <AAdvantageeShopping.com>. Such Internet users may mistakenly believe
that all of the online retail shopping web sites listed on Respondent’s web
site are associated with Complainant’s AADVANTAGE® awards program due to the misleading headings above the web site
links. Respondent’s use of a domain name
that is confusingly similar to Complainant’s marks for the purpose of diverting
Internet users to Respondent’s site for its own commercial gain is neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use. Tahoe Joe’s, Inc. v. Manila
Indus., Inc., FA 721976 (Nat. Arb. Forum July 14, 2006); see
also Intrawest ULC v.
Nothing in the WHOIS domain name information, nor any other evidence, suggests that Respondent is now or has ever been commonly known by the disputed domain name. Moreover, the domain name at issue is not, nor could it be contended to be, the nickname of Respondent Texas International Property Associates – NA NA, or in any other way identified with or related to a legitimate interest of Respondent.
Complainant
has also not licensed or otherwise permitted Respondent to use any of Complainant’s
marks or to apply for or use any domain name incorporating any of Complainant’s
marks, including the marks AADVANTAGE® and AAdvantage eShopping™.
[c]. In
accordance with ICANN Rule 3(b)(ix)(3); ICANN Policy ¶¶4(a)(iii), 4(b):
Respondent Has Registered and Is Using the Disputed Domain
Names in Bad Faith:
Respondent
is a “typo domain name pirate” or “typo squatter” because it registered and is
using a domain name comprising a misspelled variation of the Complainant’s
domain name <AAdvantageeShopping.com> based on Complainant’s famous
AADVANTAGE® mark and Complainant’s common law mark AAdvantage eShopping™. Typosquatting is evidence of bad faith
registration and use in violation of Policy ¶4(a)(iii). See Ganz v.
The registration and use by
Respondent of the domain name at issue also clearly disrupts the Complainant’s
business by diverting Internet traffic away from Complainant’s web site <AAdvantageeShopping.com>. Such disruption is evidence of bad faith
registration and use in violation of Policy ¶4(b)(iii).
See Hospira, Inc. v.
Respondent
registered a domain name that is confusingly similar to Complainant’s mark
AADVANTAGE® and essentially identical to
Complainant’s mark AAdvantage eShopping™, and
the Respondent is not commonly known by the domain name. The disputed domain name resolves to a web
site featuring “Sponsored Listings” of various commercial web sites from which
Respondent presumably receives referral fees, and some of these links are
online retail shopping web sites listed under headings that imply an
affiliation with Complainant’s AADVANTAGE® customer loyalty program when no
such affiliation exists. These factors
support a conclusion that Respondent registered the domain name <aadvantageshoping.com> 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 marks as to the source,
sponsorship, affiliation or endorsement of Respondent’s web site or of a
product or service on Respondent’s web site. See Grounded Nomads, LLC d/b/a Vocation Vacations v.
Upon information and belief, Respondent registered the aadvantageshoping.com domain name with knowledge of Complainant’s rights in the AADVANTAGE® and the AAdvantage eShopping™ marks, as well as Complainant’s rights in the domain name <AAdvantageeShopping.com>. Respondent’s registration of a domain name that contains Complainant’s famous AADVANTAGE® mark, and misspells Complainant’s common law AAdvantage eShopping™ mark, with knowledge of Complainant’s rights in these marks, is evidence of bad faith registration and use in violation of ICANN Policy ¶4(a)(iii). See Mattel, Inc. v. Nexpert, Inc.; FA 245930 (Nat. Arb. Forum April 27, 2004)(finding bad faith registration and use of the domain name barbiekorea.com based on Nexpert’s actual knowledge of Mattel’s rights in the famous BARBIE mark); see also Endurance Specialty Holdings Ltd. v. Tex. Int’l Prop. Assocs. - NA NA, FA 1103617 (Nat. Arb. Forum Dec. 27, 2007) (finding bad faith registration and use where the disputed domain name was registered with at least constructive use of Complainant's common law mark, evidenced by Respondent's web site containing links to Complainant's web site).
Respondent
has registered numerous domain names and has been the subject of multiple ICANN
proceedings. In particular, Respondent
has engaged in a bad faith pattern of registering and using trademark-related
domain names, which evidences bad faith registration and use. See Xojet
Inc. v.
Respondent’s conduct, knowing full well that it has no right to use Complainant’s marks, demonstrates that it is knowingly, willfully and with a bad faith intent, trading on the value of, and interfering with, Complainant’s right to use its marks in commerce.
B. Respondent
Had Complainant contacted Respondent prior to the institution of this
proceeding it could have saved itself the filing fee as well as the cost of
preparation of the Complaint. Respondent
herein agrees to the relief requested by the Complainant and will, upon order
of the Panel, do so. This is not an
admission to the three elements of 4(a) of the policy but rather an offer of
“unilateral consent to transfer” as prior Panels have deemed it.
In The Cartoon Network LP, LLLP
v. Mike Morgan, Case No. D2005-1132 (WIPO January 5, 2006), the Panel noted
that where the Respondent has made an offer to transfer there were numerous
ways the Panel could proceed:
(i)
to grant
the relief requested by the Complainant on the basis of the Respondent’s
consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland
(ii)
to find
that consent to transfer means that the three elements of paragraph 4(a) are
deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corp. v. Qosmedix Group, WIPO
Case No. D2003-0620; Desotec N.V. v.
Jacobi Carbons AB, WIPO Case No. D2000-1398); and
(iii)
to
proceed to consider whether on the evidence the three elements of paragraph
4(a) are satisfied because the Respondent’s offer to transfer is not an admission
of the Complainant’s right (Koninklijke
Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or
because there is some reason to doubt the genuineness of the Respondent’s
consent (Société Française du
Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Ltd. v. Grand Slam Co., WIPO Case No. D2003-0745).
The Panel, conscious of Rule 10(c)’s caution for “due expedition”
decided that the best and most expeditious course was that “a genuine
unilateral consent to transfer by the Respondent provides a basis for an
immediate order for transfer without consideration of the paragraph 4(a)
elements. Where the Complainant has sought transfer of a disputed domain name,
and the Respondent consents to transfer, then pursuant to paragraph 10 of the
Rules the Panel can proceed immediately to make an order for transfer. This is
clearly the most expeditious course.” (citing from Williams-Sonoma, Inc. v. EZ-Port, Case No. D2000-0207 WIPO May 5,
2000)
The Panel in Citigroup Inc. v.
Judicial economy dictates that the
Panel should simply proceed to its decision since there is no dispute between
the parties. Thus, this Panel disagrees
with the proposition that even though a respondent consents to transferring an
at-issue domain name, a substantive review may be required. See Graebel
Van Lines, Inc. v.
Judicial economy and the very purpose of the UDRP demands expeditious and economical resolution of UDRP disputes. A respondent that consents to requested relief avoids having to expend the time and resources necessary to respond. Furthermore, having consented to the relief requested, the respondent’s pleadings will normally not offer a substantive defense. Why should it? A panel’s focus on Policy 4(a) elements in a dispute where the respondent avoids a substantive response for reasons of economy may thus result in a bias toward the complainant’s position. Alternatively, requiring a respondent that consents to the requested relief to substantively respond to a complaint or face a decision and adverse findings based solely on the aversions of the complainant does not further the UDRP’s interest in providing an abbreviated economical procedure for resolving domain name disputes.
Importantly,
the singularly narrow task before this Panel is to determine whether or not the
requested relief should be granted, denied or dismissed.
The
remedies available to a complainant pursuant to any proceeding before an
Administrative Panel shall be limited to requiring the cancellation of [the]
domain name or the transfer of [the] domain name registration to the
complainant.
Policy 4(i).
A
panel’s only purpose in rendering substantive Paragraph 4(a) findings is
relegated to that end, and that end alone. What amounts to advisory opinions
are not authorized by the Policy, Rules, or otherwise. Therefore, when a respondent consents to a
complainant’s requested relief and that complainant has rights in the at-issue
domain name(s), then only under particular circumstance that call into question
the validity of the respondent’s consent, or for similar other good cause,
might a panel need to proceed to consider the merits of the complaint via
further analysis under Paragraph 4(a).
Such circumstances are not present in the instant dispute, and so the
requested relief must be granted.
If the Panel decides that analysis is required, Respondent respectfully
requests that Respondent be given the opportunity to prepare a more formal
response.
For the foregoing reasons, Respondent requests that the Panel order the
immediate transfer of the disputed domain name.
C. Additional Submissions
Complainant’s additionally responded:
REPLY TO FACTUAL AND LEGAL ALLEGATIONS MADE IN RESPONSE
In its
Response to the Complaint, the Respondent: (1) asserts that it would have transferred the domain name to the
Complainant without the need for an ICANN proceeding had the Complainant only
asked, and (2) agrees to the relief requested by the Complainant, urging the
Panel to order the immediate transfer of the domain name to the Complainant
without deciding the case on the merits.
Despite the Respondent’s attempts to portray itself as a helpful and cooperative party, ready and willing to efficiently resolve this matter, the Respondent is merely attempting to divert the Panel’s attention away from its clearly egregious behavior and avoid an adverse finding that reveals the Respondent’s illegitimate and bad faith use of the <aadvantageshoping.com> web site. The Complainant responds to each of the Respondent’s points, as follows:
A.
The Respondent Has Demonstrated an Unwillingness
to Transfer Domain Names Outside of ICANN Proceedings.
The
Respondent suggests that it would have transferred the domain name to the
Complainant had it merely asked, and the Complainant could have thereby avoided
the costs associated with preparing and filing a UDRP Complaint. This is absolutely untrue. As evidenced by prior Decisions, the
Respondent has demonstrated a pattern of unwillingness to cooperate with
trademark owners to transfer a domain name until after a UDRP Complaint is
filed. See Rockstar Games
v.
Therefore, while the Respondent represents that
it would have been willing to cooperate with the Complainant to transfer the
domain name, the Respondent’s conduct in prior proceedings evidences the exact
opposite. The Respondent has made a
lucrative business out of collecting click-through fees by trading on the
rights of trademark owners, and the Respondent has no incentive whatsoever to
transfer a domain name to its rightful owner unless it is ordered to do
so. The Respondent has established a
pattern of forcing trademark owners to file UDRP Complaints to obtain such
transfers, and once a UDRP Complaint is filed, the Respondent waits until the
last day of the response period before filing its Response agreeing to the
transfer. The longer it delays the
longer the Respondent can continue collecting click-through fees.
B.
The Respondent Concedes to Transfer of the
Domain Name to Avoid an Adverse Decision.
In its Response, the Respondent does not dispute any of the allegations presented in the Complaint and instead stipulates to the relief requested by the Complainant in the form of a “unilateral consent to transfer” without an admission to the three elements of ICANN Policy ¶4(a). The Respondent then goes on for nearly three pages urging the Panel to forego the traditional UDRP analysis and order immediate transfer of the domain name without a decision on the merits.
After holding the disputed domain name for nearly three (3) years, why is the Respondent so anxious to agree to the transfer, and why is the Respondent so insistent that the Panel forego a decision on the merits? The Respondent obviously recognizes that it cannot offer any plausible explanation for its selection of the disputed domain name or the web site content or otherwise defend against the allegations set out in the Complaint. As such, the Respondent’s ready willingness to transfer the domain name to the Complainant actually evidences that it has no rights or legitimate interests in the disputed domain name, and that it registered and is using the disputed domain name in bad faith. The Respondent employs the tactic of readily agreeing to transfer the domain name in an effort to avoid another adverse decision against it.
The Respondent is a notorious cyber squatter, and it should not be permitted to avoid a decision on the merits merely because it has agreed to transfer the disputed domain name. Based on the Complainant’s review of the NAF Decisions to date, Texas International Property Associates has been the Respondent in 105 Decisions since April 2007, 92 of which resulted in transfer of the domain name. Of those 92 transfer cases, the Respondent argued against transfer 47 times and agreed to transfer 45 times.
The
Respondent’s filing of a stipulation to transfer does not preclude the Panel
from ruling on the merits. Indeed, prior
panels have recognized that the “consent-to-transfer” tactic employed by the
Respondent is but one way cyber squatters avoid adverse findings against them,
and so these Panels have determined that it is appropriate to do the analysis
under the Policy. See Lomont Molding, Inc. v.
In accordance with the foregoing precedent, a decision on the merits is warranted in the present case to prevent the Respondent from avoiding the consequences associated with its egregious cyber squatting and typo squatting practices. Merely transferring the disputed domain name without finding that the Respondent has violated the three elements of ICANN Policy ¶4(a) would allow the Respondent to continue its infringing practices largely without consequence or penalty. Such a course of action is not only inconsistent with the Policy, but also works injustice on Complainants. Therefore, notwithstanding the Respondent’s stipulation to transfer the disputed domain name, the Complainant submits that it is entitled to a decision on the merits.
Respondent further replied:
On
October 6, 2008, the Respondent received an email from the Complainant
containing what is purported to be an Additional Submission in accordance with
the Uniform Domain Name Dispute Resolution Policy (the Policy), approved by the
Internet Corporation for Assigned Names and Numbers (ICANN) on October 24,
1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules),
approved by ICANN on October 24, 1999, and the NAF Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Respondent objects to such filing as will be
detailed below. The five (5) day
deadline for the Respondent to reply fell on October 11, 2008, a Saturday. Pursuant to NAF Supplemental Rule 1(g)(ii)
the date was extended to October 13, 2008.
As such this Objection & Reply is timely filed.
(UDRP Rules 12, NAF Supplemental
Rules ’s 7(a) and (b))
a. Such submission is
beyond the scope of the UDRP Rules
Prior to any discussion of the merits, if any, of Complainant’s
Additional Submission, Respondent vigorously objects to such a filing. Under Rule 12 of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”), it is quite clearly stated that
“In addition to the complaint and the response, the Panel may request, in its
sole discretion, further statements or documents from either of the
Parties.” Under the Forum’s Supplemental
Rules, Rule 7 (“Rule 7”) allows for the filing of such statements and documents
without a request from the Panel.
Respondent believes that Rule 7 is an improper modification of the
Rules. According to 1 of the Rules,
Supplemental Rules are defined as follows:
“Supplemental Rules shall not be inconsistent with the Policy or these
Rules and shall cover such topics as fees, word and page limits and guidelines,
the means for communicating with the Provider and the Panel, and the form of
cover sheets.” Clearly the Rules
anticipate that the Supplemental Rules of any Provider are housekeeping in
nature and are not meant to allow substantial modifications of the rights of
the parties under the Policy. WIPO
panelists, by way of example, generally hold to a “one filing rule” as observed
by one recent panel, “[t]he normal procedure under these proceedings, is that
Complainant is allowed to submit a Complaint, and Respondent is allowed to
submit a Response. Even though the Response in this case was filed late, this
should not alter the main principle of one shot each.” Internationale Spar
Centrale B.V. v. Scientific Process & Research, Inc., Case No. D2005-0603
(WIPO October 6, 2005). By allowing
such unsolicited material, the Forum allows Complainant to thwart the very
streamlined procedure of “one shot each” envisioned by the Policy.
(NAF Supplemental Rules’s 7(c) and (d))
Complainant’s additional submission in this proceeding is akin to the
child at a birthday party who has been given cake and vanilla ice cream and
looks up and says, “What, no chocolate?”
Having received the Respondent’s consent to transfer, Complainant has
decided to spend an additional $400.00 because, apparently, an expeditious
order transferring the domain is not enough.
While the Respondent does not begrudge the Forum any extra monies, it
does marvel at Complainant’s apparent need to waste the same.
Respondent
could have argued against the relief requested by Complainant but did not. Whether the Panel makes a finding under the
three (3) elements of the Policy or simply orders a transfer, the only relief
sought here is a transfer of the domain.
A full finding by the Panel requires time and thought as opposed to an
expeditious transfer which merely requires an order of transfer.
FINDINGS
Respondent consents to the transfer of the
domain name.
DISCUSSION
The Panel wants to thank the parties and their
representatives for a through discussion of the issues at hand. Although this case involved more than the
usual single exchange, it was helpful for the Panel.
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.
Respondent
claims consenting to a transfer does not mean Respondent admitted to the
elements that normally must underlie a UDRP proceeding. This Panel believes otherwise; consenting to
a transfer means the parties all agree the underlying elements must be prima
facie found. To hold otherwise would
mean the Panel could not examine its own jurisdiction and the parties could
fraudulently confer jurisdiction upon the Panel. This Panel is not convinced the parties’
power is so great. This Panel finds it
has the sufficient jurisdiction to transfer the domain name at issue, which
means the Panel believes the necessary elements to support the requested relief
are prima facie present.
The real
question is whether or not this Panel’s findings have any res judicata
effect on the parties. That interesting
question is beyond this Panel’s jurisdiction.
In order to avoid all doubt about this Panel’s jurisdiction and the prima
facie existence of the necessary elements to support a transfer order, the
Panel finds:
Complainant has established rights
in the AADVANTAGE mark for purposes of Policy ¶4(a)(i) through its trademark
registration with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s
<aadvantageshoping.com> domain name is confusingly similar to Complainant’s AADVANTAGE mark. The <aadvantageshoping.com> domain name differs from Complainant’s mark in three ways:
(1) “shoping,” a misspelling of the descriptive term “shopping” by just one
letter, has been added to the end of the mark; (2) Complainant’s mark contains
two “e”s - AAdvantage eShopping and (3) the generic top-level domain (gTLD) “.com” has
been added. The addition of a
descriptive term does not sufficiently distinguish a domain name from an
incorporated mark for the purposes of Policy ¶4(a)(i), nor does the misspelling
of a term in a domain name. See Brambles
Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000)
(finding that the domain name <bramblesequipment.com> is confusingly
similar because the combination of the two words "brambles" and
"equipment" in the domain name implies that there is an association
with the complainant’s business); see
also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov.
18, 2000) (finding that, by misspelling words and adding letters to words, a
respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to the complainant’s marks). Likewise, the addition of a gTLD fails to
sufficiently distinguish a domain name from the mark it incorporates, because
every domain name must include a top-level domain. See
Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb.
Forum Dec. 6, 2003) (“It has been established that the addition of a generic
top-level domain is irrelevant when considering whether a domain name is
identical or confusingly similar under the Policy.”). The lack of a space in the domain name does
not affect the analysis because spaces are not allowed in domain names. Therefore, the
Panel finds these changes do not minimize or eliminate the resulting likelihood
of confusion, and so Respondent’s disputed domain name is not sufficiently distinguished
from Complainant’s mark pursuant to Policy ¶4(a)(i). See
PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000)
(finding that “Respondent does not by adding the common descriptive or generic
terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different
marks in which it has rights or legitimate interests, nor does it alter the
underlying [PG&E] mark held by Complainant”); see also
Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”).
The Panel finds Policy ¶4(a)(i)
satisfied.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is not commonly known by
the <aadvantageshoping.com>
domain name nor has it ever been the owner or licensee of the AADVANTAGE
mark. Respondent has been identified as
“Texas International Property Associates – NA NA,” and nothing in the WHOIS
record for the disputed domain name lists Respondent as any variant on the
AADVANTAGE mark. Respondent also has
failed to show any evidence contrary to Complainant’s contentions. Respondent is not commonly known by the <aadvantageshoping.com> domain name pursuant to Policy ¶4(c)(ii). See
Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031
(Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly
known by <aolcamera.com> or <aolcameras.com> because the respondent
was doing business as “Sunset Camera” and “World Photo Video & Imaging
Corp.”); see
also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum
Feb. 20, 2003) (noting that “the disputed domain name does not even correctly
spell a cognizable phrase” in finding that the respondent was not “commonly
known by” the name “girls gon wild” or <girlsgonwild.com>).
Respondent maintains a website at the <aadvantageshoping.com> domain name that features links to third-party websites offering services that compete with Complainant’s business. Respondent commercially benefits from these links through the receipt of “click-through” fees. This use of the <aadvantageshoping.com> domain name is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
The Panel finds Policy ¶4(a)(ii)
satisfied.
This Panel finds Respondent diverts Internet customers from Complainant’s website to Respondent’s website that resolves from the disputed domain name, through the confusion caused by the similarity between the AADVANTAGE mark and the <aadvantageshoping.com> domain name. Respondent intentionally disrupts Complainant’s business by its diversionary tactics. The Panel finds the disruption of Complainant’s business is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Respondent
gains commercially from this diversion through the click-through fees
Respondent receives from the third-party websites. This is an intentional use of the disputed
domain name for commercial gain through a likelihood of confusion with
Complainant’s mark, and so, pursuant to Policy ¶4(b)(iv), the Panel finds this
use is also evidence of Respondent’s registration and use in bad faith. See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if the respondent profits from its diversionary use of the complainant's mark
when the domain name resolves to commercial websites and the respondent fails
to contest the complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to Policy ¶4(b)(iv));
see also Drs. Foster &
Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad
faith where the respondent directed Internet users seeking the complainant’s
site to its own website for commercial gain).
This Panel makes no findings about whether or not
Respondent has a pattern of cyber squatting because such a finding is not
necessary for the purposes of this decision.
The Panel finds Policy ¶4(a)(iii)
satisfied.
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 <aadvantageshoping.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dated: October 29, 2008
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