American Airlines, Inc. v. ICS INC.
Claim Number: FA1304001495044
Complainant is American Airlines, Inc. (“Complainant”), represented by Laura A. Brock of Richard Law Group, Inc., Texas, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jetnet-aa.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 16, 2013; the National Arbitration Forum received payment on April 16, 2013.
On April 17, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM con-firmed by e-mail message addressed to the National Arbitration Forum that the <jetnet-aa.com> domain name is registered with PDR LTD. D/B/A PUBLIC-DOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2013 by which Re-spondent 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@jetnet-aa.com. Also on April 18, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Not-ices, as defined in Rule 1 and Rule 2. 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
Complainant has used the AA service mark in connection with the operation and marketing of its air transportation business for decades, and has registered the mark with the United States Patent & Trademark Office (“USPTO”), as Reg. No. 514,292, first registered August 23, 1949.
Complainant is also the common law holder of the JETNETAA trademark.
Complainant uses the JETNETAA mark in hosting its own internal employment database, which is accessible to tens of thousands of Complainant’s employees through the <jetnet.aa.com> sub-domain name.
The <jetnet-aa.com> domain name was registered on February 2, 2012.
Respondent’s <jetnet-aa.com> domain name is confusingly similar to both the JETNETAA and AA marks.
Respondent has never been commonly known as or referred to by either of Complainant’s AA or JETNETAA marks.
Respondent is not affiliated with Complainant, and Respondent is not licensed or otherwise authorized to use Complainant’s JETNETAA mark in any way.
Respondent has set up the <jetnet-aa.com> domain name’s websites to rotate between websites, so that at times the domain name resolves to a website that hosts various third-party hyperlinks, some of which promote the business of Complainant’s direct competitors.
At other times, the <jetnet-aa.com> domain name simply redirects Internet users to Complainant’s own <aa.com> domain name.
The domain name appears also to resolve to the <monster.com> domain name, presumably so that Respondent may receive referral fees for sending Complain-ant’s employees or job seekers to this website.
Respondent has no rights to or legitimate interests in the disputed domain.
Respondent has offered the domain name for sale at a price of $ 4,170 USD, which is well in excess of reasonable domain name registration expenses.
Respondent’s use of the domain name confuses Internet users and disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the AA and JETNETAA marks when it registered the disputed domain name.
Respondent both registered and uses the contested domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to trademarks in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the AA mark for purposes of Policy ¶ 4(a)(I) by virtue of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in the mark arise from its registration in a country (here the United States) other than that in which Re-spondent resides or does business (here the Cayman Islands). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Respondent does not challenge the assertion that Complainant also has com-mon law rights in the JETNETAA trademark, which it uses to host an internal employee database via the <jetnet.aa.com> sub-domain name. This is sufficient to establish Complainant’s rights in the JETNETAA mark under Policy ¶ 4(a)(I). See American Airlines, Inc. v. yayah kandiyah, FA 1488351 (Nat. Arb Forum
April 8, 2013).
Turning to the central question posed by Policy ¶ 4(a)(I), we conclude from a review of the record that Respondent’s <jetnet-aa.com> domain name is con-fusingly similar to Complainant’s JETNETAA mark. The domain name contains the entire mark, with the addition only of a hyphen and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not avoid a finding of identity or confusing similarity under the standards of the Policy. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that the addition of a hyphen and a top-level domain to the mark of another in creating a domain name is irrelevant for purposes of the Policy). See also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000):
[T]he use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.
Further see Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007):
The Panel also finds that Respondent’s … domain name is identical to Complainant’s … mark since addition of a generic top-level do-main (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has never been commonly known as or referred to by either of Complainant’s marks, that Respondent is not affiliated with Complainant, and that Respondent is not licensed or otherwise authorized to use Complainant’s marks in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “ICS, INC.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been com-monly known as the <jetnet-aa.com> domain name so as to have demonstrated that it has rights to or legitimate interests in that domain name within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in it as described in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that the <jetnet-aa.com> domain name resolves to websites in turn to various websites. One of those sites hosts various third-party hyperlinks that promote the sites of Complainant’s direct competitors. This is neither a bona fide offering of goods and services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because a “[r]e-spondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and ser-vices in direct competition with those offered under [the complainant’s] mark,” the respondent was not using disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
It is undisputed that, at other times, the <jetnet-aa.com> domain name redirects Internet users to Complainant’s own <aa.com> domain name. This too is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010):
The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .).
And, at still other times, Complainant contends, again without objection from Respondent, that the domain name resolves to the website of <monster.com>, where Internet users may search for employment, and that Respondent pre-sumably receives referral fees for sending Complainant’s employees and job seekers to this website. As with the other uses made of the contested domain name, this use is neither a bona fide offering of goods or services nor a legit-imate noncommercial or fair use. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a UDRP complainant, was not a bona fide offering of goods or services).
Finally, Complainant alleges that Respondent has offered the domain name for sale at a price of $ 4,170 USD, which is well in excess of reasonable domain name registration expenses. It is well established that this may be taken as evidence that Respondent has no rights to or legitimate interests in the domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that a respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided evidence that Respondent had no rights to or legit-imate interests in the domain name).
The Panel therefore finds that complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s employment of the con-tested domain name in the manner described in the Complaint disrupts Com-plainant’s business. This stands as proof of bad faith in the registration and use of the domain name within the contemplation of Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using a domain name to divert Internet users to a UDRP complainant’s com-petitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
And, to the extent that Respondent’s use of a domain name that is substantively identical to Complainant’s JETNETAA mark to deceive Internet users as to the possibility of Complainant’s association with the resolving website, and for Re-spondent’s profit, this indicates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website offering links to third-party sites featuring services similar to those of a UDRP complainant).
Finally, under this head of the Policy, we are convinced from the record that Re-spondent knew of Complainant and its rights in the JETNETAA mark when it registered the contested <jetnet-aa.com> domain name. This too suggests bad faith registration of the domain name. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between a complainant's mark and the content advertised on a respondent's website was obvious, that respondent "must have known about the Complainant's mark when it registered the subject domain name"); see alsoYahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a complainant's YAHOO! mark at the time of domain name registration).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <jetnet-aa.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 28, 2013
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