American Airlines, Inc. v. Pertshire a/k/a Pertshire Marketing
Claim Number: FA1001001305264
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 <americanaeroline.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2010; with its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On January 29, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <americanaeroline.com> domain name is registered with Fabulous.com Pty Ltd. and that 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 February 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@americanaeroline.com. Also on February 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americanaeroline.com> domain name is confusingly similar to Complainant’s AMERICAN AIRLINES mark.
2. Respondent does not have any rights or legitimate interests in the <americanaeroline.com> domain name.
3. Respondent registered and used the <americanaeroline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Airlines, Inc., is one of the world’s largest freight and commercial air-travel providers. Complainant owns numerous trademarks with the United States Patent and Trademark Officer (“USPTO”) for its AMERICAN AIRLINES mark (e.g., Reg. No. 514,294 issued on July 27, 1948).
Respondent registered the <americanaeroline.com> on October 3, 2005. Respondent’s disputed domain name resolves to
a website displaying third-party links to websites offering competing air
travel services of Complainant as well as a search engine option.
Complainant
offers evidence that Respondent has a history of registering domain names that
infringe upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainant’s. See USPS v. Pertshire Mktg., FA 0729872 (Nat. Arb. Forum Aug. 3,
2006); see also Yokohama Tire Corp. v.
Pertshire Mktg., FA 0739872 (Nat. Arb. Forum Aug. 18, 2006); see also Bank of America Corp. v. Pertshire
Mktg., FA .743461 (Nat. Arb. Forum Aug. 29, 2006).
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant alleges that the <americanaeroline.com> domain name is confusingly similar to its AMERICAN AIRLINES mark. Complainant contends that the disputed domain name is confusingly similar because it misspells the word “airline” by using the phonetically similar word of “aero,” leaves the “s” out of the word “airlines,” and adds the generic top level domain name (“gTLD”) “.com.” The Panel finds that Respondent’s <americanaeroline.com> domain name is not distinguishable from Complainant’s AMERICAN AIRLINES mark for the purposes of Policy ¶ 4(a)(i), simply because it misspells the word “airlines” and adds the gTLD “.com.” See Hotwire, Inc. v. Wilder, FA 741901 (Nat. Arb. Forum Aug. 7, 2006) (finding the <heatwire.com> domain name to be confusingly similar to the complainant’s HOTWIRE.COM mark, as the disputed domain name was pronounced similarly to the complainant’s mark and was also a misspelled variation of it); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s AMERICAN AIRLINES mark for purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent’s use of the disputed domain name demonstrates Respondent has no rights to or legitimate interests in the disputed domain name. Complainant is required to make a prima facie case in support of these allegations. After the Complainant has produced a prima facie case the burden shifts to the Respondent to show it has rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. The Panel will, however, examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complainant submits that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor a noncommercial or fair use. Complainant contends that Respondent’s use of the <americanaeroline.com> domain name to divert Internet users to its website that displays the links of Complainant’s competitors, likely for financial gain, is evidence that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name to divert Internet users seeking Complainant’s business to a website offering competitors services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant further contends that Respondent is not commonly known by the disputed domain name, and Complainant has not given Respondent permission to use its AMERICAN AIRLINES mark. The WHOIS information for the disputed domain name reveals the registrant to be “Pertshire Marketing,” and there is no further evidence on record showing that Respondent is commonly known by the <americanaeroline.com> domain name. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in other UDRP
proceedings, where the disputed domain names were ordered to be transferred
from Respondent to the respective complainant’s in those cases. See USPS v. Pertshire Mktg., FA 0729872 (Nat. Arb.
Forum Aug. 3, 2006); see also Yokohama
Tire Corp. v. Pertshire Mktg., FA 0739872 (Nat. Arb. Forum Aug. 18, 2006); see also Bank of America Corp. v. Pertshire
Mktg., FA .743461 (Nat. Arb. Forum Aug. 29, 2006). The Panel finds that Respondent has engaged in
a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See
Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a
pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii)
when the respondent previously registered domain names incorporating well-known
third party trademarks); see also Calvin Klein, Inc. v. Spanno Indus., FA
95283 (Nat. Arb. Forum Aug. 21, 2000) (finding that the respondent has
registered numerous domain names containing sexual references and domain names
which are confusingly similar to third party trademarks; which points to a
pattern of conduct on the part of the respondent, revealing that the respondent
is registering domain names in order to prevent trademark owners from
reflecting their marks in corresponding domain names).
Complainant further
argues that Respondent’s intentional diversion of Internet users to a website
that displays links to the competitor’s of Complainant constitutes disruption
of Complainant’s business. The Panel
finds that Respondent’s reliance on the confusing similarity between the
disputed domain name and Complainant’s AMERICAN AIRLINES mark to divert potential
clients of Complainant to its competitors constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See
Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1,
2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news
site. The Panel strongly finds that
appropriating Complainant’s mark to refer customers seeking Complainant to
Complainant’s competitors is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent’s <americanaeroline.com>
domain name intentionally diverts Internet users to its website, where Internet
users are able to use a search engine and click to third-party links to
Complainant’s competitors in the air travel industry. The Panel presumes that Respondent is
collecting click-through fees to sponsor the links of Complainant’s
competitors, and finds that this is further evidence of bad faith registration
and use under Policy ¶ 4(b)(iv). See T-Mobile
USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Univ. of
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanaeroline.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 16, 2010
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