American Airlines, Inc. v.
American International Vacations Corp. c/o Steve Chua
Claim Number: FA0809001223808
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 <aavacation.com>, registered with Godaddy.com,
Inc.
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.
The Honourable Neil Anthony Brown QC as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 9, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 11, 2008.
On September 9, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <aavacation.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 15, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 6, 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@aavacation.com by
e-mail.
A timely Response was received and determined to be complete on October 3, 2008.
A timely Additional Submission by Complainant was received on October
8, 2008, and was found to be in compliance with the National Arbitration
Forum’s Supplemental Rule 7.
A timely Additional Submission by Respondent was received on October
14, 2008, and was found to be in compliance with the National Arbitration
Forum’s Supplemental Rule 7.
On October 14, 2008 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name <aavacation.com> should be transferred to it because it can make out each of the three criteria prescribed under paragraph 4(a)(i)-(iii) of the Policy. Complainant maintains, first, that the domain name <aavacation.com> is confusingly similar to Complainant’s registered service mark for AA, registered with the United States Patent and Trademark Office (“USPTO”) and essentially identical or confusingly similar to an unregistered or common law trademark that it claims in AAVACATIONS. COM. Complainant contends that the former is so because the domain name consists of the registered service mark with the addition only of a generic word that describes the business of the Complainant and that the latter is so because the domain name simply omits the letter “s” of the common law trademark, thereby converting a plural into a singular noun, which does not diminish the virtual indenticality or confusing similarity otherwise present.
Complainant then argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not authorized by Complainant to use the AA or AAVACATIONS.COM marks, Respondent is not commonly known by the name “aavacation.com” and that it has not used the domain name in connection with a bona fide offering of goods or services, but rather has used it for the illegitimate purpose of linking it to a “ parked page” offering travel and vacation services in competition with Complainant.
Thirdly, Complainant contends that the disputed domain name was registered and is being used in bad faith, which has been proven because Respondent has engaged in
“typosquatting” in that he has misspelt the Complainant’s registered and unregistered trademarks to create the domain name.
The Complainant also contends that the Respondent
must have registered the domain name for the primary purpose of intentionally
attracting internet users by creating confusion with Complainant’s trademarks
as to whether the goods and services promoted on its website were affiliated
with Complainant within the meaning of paragraph 4(b)(iv)
of the Policy.
B. Respondent
Respondent first argues that the domain name is not identical or
confusingly similar to any registered trademark owned by Complainant and that
in particular Complainant does not have a registered trademark for
AAVACATIONS.COM.
Secondly, Respondent says that although Complainant has a registered
service mark for AA.COM, this was registered after the domain name and
therefore cannot be relied on.
Thirdly, Respondent argues that there are many other domain names
incorporating a double letter “a” before another word which do not necessarily
imply an association with Complainant and hence cannot give rise to any
confusion.
Respondent concedes that Complainant may have common law trademark
rights in AMERICAN AIRLINES VACATIONS, but not AAVACATIONS.COM, for
although Complainant has the domain name
<aavacations.com>, that does not give it any trademark rights in that
expression, which is only an address. Complainant’s business name is American Airlines
Vacations and only that expression could give rise to a common law trademark.
Even if there were a common law trademark on AAVACATIONS.COM, it is
said, there is no infringement of this mark, for the words American Airlines do
not appear on the Respondent’s website. In any event, any such common law
trademark would be restricted to
Respondent says that it has a right or
legitimate interest in the domain name because it has held the registration
since June 3, 1999 without any challenge and because the domain name reflects
the corporate name of Respondent. Moreover, it is making demonstrable
preparations to use the domain name to promote and sell vacation packages, as
it has done with its other website <www.1vacation.com>, although it has
taken longer than planned. The Respondent also says that it has been making a
legitimate noncommercial or fair use of the domain name, as it has not accepted
any compensation on referral fees or advertising from the disputed domain name
and “it is not Respondent’s intention to do so.”
The Respondent contends that it
registered the domain name in good faith with the intention of selling vacation
packages. It has not tried to sell the domain name, the domain name does not
resemble any of the Complainant’s registered trademarks, the Respondent has no
intention of disrupting its business, has no intention of attracting the Complainant’s
customers and its website does not display any of Complainant’s marks that
would confuse consumers.
C. Additional Submissions
Complainant
In its Additional Submission the Complainant:
(a)
re-iterates
its argument that the disputed domain name is confusingly similar to its
registered AA service mark;
(b)
re-affirms
that it has common law or unregistered trademark rights in AAVACATIONS.COM which come from its actual
use of that expression as a service mark in the course of its business since at
least October 1997;
(c)
argues
that it is not correct to say that AAVACATIONS.COM is merely a domain address
and not a trademark, as it is displayed on its website;
(d)
rejects
the Respondent’s argument that any common law trademark rights would extend
only as far as
(e)
argues
that as its AA mark and its common law
mark have been in use for many years,
its trademark rights existed before the disputed domain name was registered;
(f)
argues
that it is irrelevant if other parties have also registered domain names
incorporating the term “AA”;
(g)
argues
that the submissions of the Respondent have not shown that it has a right or
legitimate interest in the domain name; and
(h)
argues that even
if Respondent does not receive any compensation from the website where the
domain name is parked, that fact shows
passive holding of the domain name within the principle of Telstra Corporation Limited v. Nuclear
Marshmellows, WIPO Case No.D2000-0003 which constitutes bad faith.
Respondent
In its Additional Submission the Respondent:
(a)
submits
that there are many trademarks incorporating the letters AA and that
consequently the use of the letters ”aa” in the domain name does not
automatically imply association with the Complainant;
(b)
submits
that the use of the Complainant’s AA mark is outside the restricted terms on
which it was granted;
(c)
submits
that there has been no trademark infringement by the Respondent as AA is not
mentioned on the website of the disputed domain name;
(d)
re-iterates
its argument that the Complainant has not established common law trademark rights in AAVACATIONS.COM, which
is only a domain address;
(e)
adduces
additional evidence to show that it, the Respondent, is a bona fide travel agent, authorized to act as an agent of the
Complainant; and
(f) adduces
additional arguments to show that it is moving towards establishing a website
to conduct travel business and utilizing the disputed domain name.
FINDINGS
The Complainant is a
The Complainant has a series of trademarks and service marks registered
with USPTO for AA, AA with design and other expressions incorporating the
letters AA. Among those trademarks are the following:
(a)
Service
mark registered number 514, 292, registered with USPTO on August 23, 1949 for
AA and first used in commerce in December 1935 (“ the Complainant’s registered service mark AA”);
(b)
Service
mark registered number 514,293, registered with USPTO on August 23, 1949 for AA
with a graphic representation of an eagle and first used in commerce in August
1948;
(c)
Service mark registered number 2,339,639,
registered with USPTO on August 11, 2000 for AA.COM and first used in commerce
in February 1998.
The Complainant also has common law trademarks for AAVACATIONS.COM and
AAVACATIONS and acquired those trademarks in or about October 1997.
The Complainant registered the domain name <aavacations.com> on
October 14, 1997 and has used it for a website at <www.aavacations.com>,
where it promotes it services and offers flights bookings, the purchase of
vacations and other travel related services.
The Respondent is a travel agent who promotes and sells vacation
packages and related tourist services to customers on the internet and by other
means.
The Respondent registered the domain name <aavacation.com> on
June 3, 1999. It resolves to a “parked” website that carries promotions for
flight bookings, the purchase of vacations and other travel related services.
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.
The registered service mark
The Panel
finds that the disputed domain name is confusingly similar to the Complainant’s
registered service mark AA. That is so because the domain name incorporates the whole of the service
mark and has merely had added to it the word “vacation” and the gTLD suffix
“.com.”
It has
now been widely accepted that if a trade or service mark is used in a domain
name and all that is added is a generic or common descriptive word, especially
one that simply describes the known activity or business of the trademark
owner, the domain name is confusingly similar to the trademark: see See Oki Data
Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact
that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks”); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus paragraph 4(a)(i) of the Policy is satisfied.
That view
is particularly applicable in the present case as the Complainant’s AA and
other trademarks are so prominent and of such long standing, as also are the
Complainant itself and its logos and activities, that it must be widely
understood that the letters AA in combination with words associated with aircraft
flights and travel are more likely than not to be referring to the Complainant,
popularly known as American Airlines. Thus, when the letters “AA” are used in a
domain name followed by the word “vacation”, it would generally be assumed that
they are referring to a vacation available from the Complainant and hence that
such a domain name was in fact the domain name of the Complainant or was
promoting the services of the Complainant.
Accordingly,
the fact that the domain name incorporates the Complainant’s registered service
mark AA makes the domain name confusingly similar to the service mark and the
fact that it is followed by the word “vacation” reinforces the same notion.
In its
Additional Submission the Respondent argued that:
(a) there
are many trademarks incorporating the letters AA and that consequently the use
of the letters “aa” in the domain name does not automatically imply association
with the Complainant;
(b)
the use of the
Complainant’s AA mark is outside the restricted terms on which it was granted.
These arguments are supported by detailed research into the trademarks
and their provisions and the Panel has given careful consideration to all of
the material submitted by the Respondent.
The difficulty with these arguments is that the Panel is bound by the
Policy, which is precisely drawn. It requires a complainant to show that there
is “a trademark or service mark in which the Complainant has rights;…” which the Panel
has found the Complainant has succeeded in doing. The existence of other
trademarks and the provisions of the Complainant’s trademark are not relevant
to the strict comparison that must be made between the domain name and the
trademark to see if the former is identical or confusingly similar to the
latter.
The common law trademark
In view
of the finding just made on the Complainant’s registered service mark AA, it is
not strictly necessary to decide whether the Complainant also has an
unregistered or common law trademark and whether the domain name is identical
or confusingly similar to any such trademark. However, as the parties have
spent a considerable amount of time and effort on this issue, the Panel will
give its opinion.
First, it
should be said that unregistered trademark rights are sufficient to bring
proceedings under the UDRP. See
Lindsay, International Domain Name Law,
ICANN and the UDRP; Hart Publishing, 2007, pp.197 et seq, Cedar Trade Associates,
Inc. v. Gregg Ricks, NAF Case No. FA93633 (Feb. 23, 2000) and
But such an unregistered trademark
must, of course, be made out on the evidence. The Panel’s view is that the Complainant
has made out that case with respect to the common law trademark claimed by the
Complainant, namely AAVACATIONS.COM. The evidence is that the Complainant
registered the domain name <aavacations.com>
on October 14, 1997 and has used it for a website at <www.aavacations.com>,
where it promotes it services and offers flights bookings, the purchase of
vacations and other travel related services. The affidavit of Mr. Broadfield,
who is an attorney for the Complainant deposes to the
registration of the domain name <aavacations.com> and the continuous use
of the corresponding website from October 1997. He says that in the year 2007,
the Complainant’s website sold travel services worth $170, 000,000, that those
sales involved over 194,000 air travelers and that the site is viewed by
internet users over 42,000,000 times each year.
Even if it were only those persons who actually bought a vacation
through the website who could be said to associate the domain name
<aavacations.com> with the Complainant, it is apparent that a significant
section of the United States public make that association and its corollary is
that they do not associate the domain name with anyone else.
The expression is certainly distinctive, being an unusual combination of the letters AA and the word ‘vacations,’ which although a generic word, is given the distinctive meaning of vacations sold by American Airlines and thus a secondary meaning sufficient to establish a common law trademark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
The Respondent takes strong exception to this view and maintains that
<aavacations.com> cannot be a common law trademark, as it is only an
internet address. It is, of course, a domain name that is used as an address to
find a way to a website on the internet, but it is clearly more than that. The
pages of the corresponding website exhibited to Mr. Broadfield’s affidavit show
that it is used as a mark to identify the holiday packages and deals offered by
the Complainant. Moreover, if it were merely an address, there would hardly be
any point in using it on the website, as it is, for by the time users of the
website see it, they have arrived at the site.
The Panel has also used the Wayback Machine at <www.archive.org>
to see how the Complainant used the domain name <aavacations.com> before
this issue became a matter of controversy. That search shows that at least from
March 1, 2000 the Complainant was using the expression <aavacations.com>
as well as AAAmerican Airlines Vacations to identify its holiday packages and
was not using it solely as an internet address.
For all of these reasons, the Panel finds that the Complainant has had
an unregistered or common law trademark for AAVACATIONS.COM since October 1997.
The Respondent has argued that even if there were a common law trademark on
AAVACATIONS.COM, there is no infringement of this mark, for the words American
Airlines do not appear on the Respondent’s website. In any event, it also says,
any such common law trademark would be restricted to
The Panel does not accept those arguments. In determining whether a
domain name is identical or confusingly similar to a trademark, a comparison is
made between the two expressions and it is not permissible or consistent with
the Policy to look at extraneous matters such as the website, which are best
left for consideration under paragraph 4(a) (ii) and (iii) of the Policy. On
the second issue, common law trademarks are not limited by State boundaries and
the test of whether a party has made out a case for one will be determined by
reference to where it operates.
The Complainant has not submitted that it also has an unregistered
trademark for AAVACATIONS alone, without the suffix “.COM” but the Panel finds
that it probably does. The reason is that, looking at the history of the
Complainant’s website on the Wayback Machine, it can be seen that as early as May
3, 1999, which was only a month before the Respondent registered the disputed
domain name, the Complainant was using the expression AAVACATIONS alone, as in
the expression “AAVacations Now Offers Car
Only Bookings!”. The same expression is used on occasions in later years such
as in “AA Vacations Special Offer” on June 9, 2004.
The Panel therefore finds that the Complainant has and probably had
from May 1999 a common law trademark for AAVACATIONS.
The Panel therefore finds that the disputed domain name <aavacation.com> is virtually identical or at least confusingly similar to the Complainant’s unregistered trademarks AAVACATIONS.COM and AAVACATIONS. That is so because there is only a slight and insignificant spelling difference between the disputed domain name and the trademarks and it has long been held that such minor spelling differences do not dilute a finding of identicality or confusing similarity that is otherwise present. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).
The Complainant has thus
established the first of the three elements that it must prove.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect to the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
Complainant has submitted that Respondent has no rights or legitimate interests in the disputed domain name because Respondent was not authorized by Complainant to use the AA or AAVACATIONS.COM marks, Respondent is not commonly known by the name “aavacation.com” and it has not used the domain name in connection with a bona fide offering of goods or services, but rather it has used the domain name for the illegitimate purpose of linking it to a “parked page” offering travel and vacation services in competition with Complainant.
On the
basis of these submissions and the evidence is support of them, the Panel
concludes that Complainant has made out a prima
facie case against Respondent and the burden therefore shifts to Respondent
to provide evidence of its right or legitimate interests under paragraph 4(c)
of the Policy. See Cassava Enters. Ltd.,Cassava Enters. (
Respondent has devoted a lot of time and
effort to rebutting the prima facie
case and it rightly sees this as being an important area of the dispute. It has
advanced a detailed and sustained argument in support of its submission that it
has a right or legitimate interest in the domain name and the essence of that
argument is as follows.
Respondent says that it has a right or
legitimate interest in the domain name because it has held the registration
since June 3, 1999 without any challenge and because the domain name reflects
the corporate name of Respondent. Moreover, it is making demonstrable
preparations to use the domain name to promote and sell vacation packages, as
it has done with its other website <www.1vacation.com>, although it has
taken longer than planned. The Respondent also says that it has been making a
legitimate noncommercial or fair use of the domain name, as it has not accepted
any compensation on referral fees for advertising arising from the disputed
domain name and “ it is not Respondent’s intention to do so.” In its Additional
Submission, the Respondent put forward additional arguments to show that it is
moving towards establishing a website to conduct a travel business and
utilizing the disputed domain name and it adduced more material to make out
that case.
The Panel has given careful consideration to all of the material
advanced by the Respondent.
In substance, the Respondent seeks to bring itself under all three of
the provisions of paragraph 4(c) of the Policy and they must now be looked at
in turn.
“…demonstrable preparations to use the domain name … in connection with
a bona fide offering of goods or services;…”
The argument under paragraph 4(c) (i) of the Policy is that the Respondent intends to use the domain name “in the near future to promote and sell vacation packages” as it has done with another domain name <1vacation.com> since May 2, 1997 and that it will do this “ shortly,” but “[p]lanning and developing a website do take substantial time, not only technical aspects but also legal responsibility.” Moreover, “[t]he Respondent is a small company with very limited financial, technical and legal resources… [and] 9 years for the Respondent to develop a website is not unreasonably long. The Respondent does not intent to park the Disputed Domain Name indefinitely.”
Some UDRP panels tend to be generous in finding that a respondent has shown
“demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;…” and some panels have accepted a somewhat low threshold for what must be shown. Often there are competing factors that tilt the scales one way and then the other, as is seen from the differing opinions in the recent decision in We The People, L.L.C. v. WTP Group, LLC, FA0807001217134 ( Nat. Arb. Forum Sept.19, 2008). But what is clear from all of the decisions is that there must be preparations , they must be able to be demonstrated or pointed out and they must have taken place before the dispute arose, to prevent any recent inventions. Thus, the respondent in We The People, L.L.C. v. WTP Group, LLC, supra, was able to point to hiring a trade mark attorney and graphic designer and the printing of stationery. In the present case the Respondent is not able to point to any preparations at all and none can be shown, largely because it is apparent from the explanations given that none have been made.This is a very noticeable gap in the Respondent’s case, especially when it has had 9 years or so to do something, or anything, to show that it was intending to use the domain name for a bona fide offering of goods or services. In particular, if the website of <1vacation.com> was to be the model, the disputed domain name could have been linked to that website or the website could have been imported to the website for <aavacation.com>.
Accordingly, the Panel must find that there is no evidence of demonstrable preparations having been made and that the attempt to bring the Respondent within paragraph 4(c)(i) of the Policy must fail.
“… commonly known by the domain name…”,
Nor will the facts bring the case within paragraph 4(c)(ii) to show that the Respondent has been “… commonly known by the domain name…”. The limited evidence on this subject shows that the Respondent must have been known by its own name or possibly as <1vacation.com> and not as <aavacation.com>. Moreover, the domain name is clearly not an acronym, abbreviation or some other version of the full name of the Respondent, whose initials are not AA, but AIVC.
“making a legitimate noncommercial or fair use
of the domain name, …”
The attempt to bring the case within paragraph 4(c)(iii), i.e., to show that the
Respondent is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” raises what is probably the real issue in these proceedings. That is so because, at its base, is the contention of the Respondent that it registered the domain name in “good faith,” that it wanted a short name to represent its company name, American International Vacations Corporation and that as <vacation.com> and <avacation.com> were taken, it took the next available name, <aavacation.com> in good faith, as it was ‘short, simple and easy to remember’. The Respondent also submitted that as he is an Asian American, he would call the new website Asian American Vacation, the significance of this last point no doubt being that an abbreviated version of that name would be “aavacation.” By inference, therefore, the Respondent’s argument is that the name chosen was unconnected with any notion that “AA” in aviation and travel meant American Airlines and that the domain name was not chosen to invoke the name and services of American Airlines. The conclusion that is put by the Respondent is that its intention was not to divert consumers misleadingly or to tarnish the Complainant’s trademarks.
The UDRP process makes it difficult for a Panel to reach conclusions on factual issues such as this, in the absence of seeing the party giving the evidence and in the absence of cross-examination and other forensic tools. Panels must therefore do their best from the material available and decide what most probably happened.
That process involves rejecting the inherently improbable, supporting the more likely and closely scrutinizing the conduct of parties and the justification they give or do not give for their submissions.
Applying these tests, the Panel concludes that it cannot accept the argument advanced by the Respondent. The reasons why that is so are as follow:
(a) the composition of the domain name <aavacation.com> is not an acronym, abbreviation or any other version of the full name of the Respondent, whose name is American International Vacations Corp.; it simply cannot be that <aavacation.com> is an attempt to put into domain name form the name of the Respondent company;
(b)
if it genuinely were the intention to put together
a domain name that was a short and
simple version of the Respondent’s company name, the Respondent could
have chosen <aivacations.com>, which was not registered as a domain name
until September 26, 2002[1]
and was thus available on June 3, 1999
when the Respondent registered <aavacation.com>;
(c)
if it genuinely were the intention to
put together a domain name that was a short and
simple version of the Respondent’s company name, but using the singular instead of the plural of the
word “vacation”, the Respondent could have registered
<aivacation.com>, which was not registered until January 4, 2008 [2]
and was thus available on June 3, 1999
when the Respondent registered <aavacation.com>;
(d) the suggestion that the Respondent’s intention was to name the website Asian
American Vacation is in all probability a recent invention, as there is no evidence at all to show that this name has ever been previously considered as a name for the website;
(d) as the reasons given by the Respondent for choosing the domain name <aavacation.com> are so inherently improbable, the task of the Panel is to see if there is another reason that is more probable. When it is seen that the domain name takes the famous AA trademark and links it with one of the known activities of American Airlines, vacations, it is far more probable that the name was chosen to invoke the name and services of American Airlines
and to give the impression that it was a domain name of American Airlines associated with vacations. This was misleading as the Respondent knew that it was not associated with American Airlines and not authorised to use its trademarks in a domain name.
Regrettably for the Respondent, the Panel must find that the intention of the Respondent in registering the domain name was to divert consumers by misleadingly them in that way and in the hope that at least some of them would believe that if they bought vacations on the website they would be buying them from American Airlines or from other suppliers approved by American Airlines.
It may well be true, as the Respondent says, that it has not received money from the registrar as a result of this arrangement, but the Panel concludes that its intention has always been to benefit commercially, sooner or later, from the business it intended to conduct on the internet using the disputed domain name.
Having regard to all of the evidence and the submissions of both sides including their Additional Submissions, where the essential issue was argued out, the Panel finds that the Respondent has not made “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The matter therefore does not come within the provisions of paragraph 4(c)(iii) of the Policy.
The
only other ground on which the Respondent argues that it has a right or
legitimate interest in the domain name is that it has held the registration since June 3, 1999 without challenge. That, however, is not a ground unless it can
be shown or inferred that the Complainant knew of the registration and
acquiesced in it and its use and, on the evidence, there is no basis for
reaching that conclusion.
The Respondent has not submitted any further basis on which it says that it has a right or legitimate interest in the domain name and the Complainant has therefore made out the second of the three elements it must prove.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out‑of‑pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Complainant submits in essence that there is evidence of bad faith registration and use because the Respondent has used its trademark in the domain name and engaged in “typosquatting” and because the facts bring the case within paragraph 4(b)(iv) of the Policy.
The Respondent contends that it
registered the domain name in good faith with the intention to sell vacation
packages, that it has not tried to sell the domain name, it does not resemble
any of the Complainant’s registered trademarks, has no intention of disrupting
the Complainant’s business, has no intention to attract the Complainant’s
customers and its website does not display any of Complainant’s marks that
would confuse consumers. In its Additional Submission the Respondent argues and adduces evidence to show that it is a bona fide travel agent, authorized to
act as an agent of the Complainant and that its actions were therefore in good
faith.
Although the Respondent has relied on this series of specific defences,
it should be pointed out that if one ground of bad faith is made out, the Panel
must make a finding of bad faith.
It would be apparent from the preceding analysis of rights and
legitimate interests that the Panel is unable to accept the Respondent’s
explanation as to why it registered the disputed domain name, as that
explanation is inherently implausible and not supported by the facts.
Applying the same analysis to the present issue, the Panel finds that the Respondent registered and used the domain name in bad faith, both in the general sense of bad faith and that in particular the Respondent’s conduct brings the case squarely within paragraph 4(b) (iii) and (iv) of the Policy.
The Panel finds that the conduct of the Respondent in the registration of the domain name, using the name that it chose and allowing it to be used to divert business away from the Complainant, constitutes bad faith registration and use.
The Panel also finds on the above facts that the Respondent registered the
domain name, within the meaning of paragraph 4(b) (iii), primarily for the purpose of
disrupting the business of a competitor, namely the Complainant, by seeking to divert
potential business away from it.
The reasons why the Complainant’s case under paragraph 4 (b)(iv) of the Policy has been made out are as follows.
First, by registering a domain name incorporating the Complainant’s prominent registered service mark AA and adding to it one of the known activities of the Complainant, namely “vacations,” it is more probable than not that the Respondent’s intention was to create confusion with the service mark and also with the Complainant’s name and its domain name, which was already operating as a travel website when the Respondent registered the disputed domain name on June 3, 1999.
Secondly, the Respondent has undoubtedly been attempting to attract internet users to the website www.aavacation.com within the meaning of paragraph 4(b)(iv) of the Policy, for the domain name has been used and is currently being used for an active website. At the very least, the Respondent has been taking part in this activity by allowing its registrar to use the website as a ‘parked” website with sponsored listings, all of which relate to vacations.
Thirdly, the confusion likely to be
created is confusion about the affiliation of the vacations being promoted on
the Respondent’s website and the websites to which it is linked and as to
whether those vacations are the Complainant’s products or in some way
associated with it. That is so because the use of the
Complainant’s registered service mark AA in conjunction with the word “vacation”
must be taken as referring to the Complainant. In those circumstances, consumers who are using the disputed domain
name would have arrived at the website because they were seeking American
Airlines vacations. When the websites promote vacations, consumers are entitled
to believe that the products are genuine American Airlines vacations or
vacations affiliated or approved by it. There is, therefore, clear scope for
confusion as to whether the vacation services being promoted on the website and
the other links are associated with the Complainant’s
registered service mark AA and hence with the Complainant.
The Panel finds that, within the meaning of paragraph 4(b)(iv), these circumstances create confusion with the Complainant’s trademark as to the source, sponsorship, affiliation and endorsement of the Respondent’s s website and the products and services on them and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another.
The facts therefore constitute bad faith in registration and use within paragraph 4(b)(iv) of the Policy. That is a conclusion that has often been reached by UDRP Panels on analogous facts. See, e.g., Identigene, Inc. v. Genetest Laboratories WIPO Case No. D2000‑1100; MathForum.co v. Weiguang Huang, WIPO Case No. D2000‑0743 and IndyMac Bank v. F.S.B. v. Jim Kato, FA 190366 (Nat. Arb. Forum). In this regard, the comments of the panelist in Identigene, Inc. v. Genetest Laboratories, supra, are apposite:
“Complainant has alleged and the Panelist finds that Respondent’s use of the domain name at issue to resolve to a website where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv). InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000‑0076; America Online Inc .v. Cyber Network LLP, WIPO Case No. D2000‑0977.”
It is therefore not necessary to discuss other grounds on which it might be said that the Respondent registered and used the domain name in bad faith, although the Panel has had regard to all of the submissions and evidence.
Accordingly, the Complainant has made out the third of the three elements that it must establish.
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 <aavacation.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: October 27, 2008
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