American Airlines, Inc. v.
Claim Number: FA0702000914854
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 <redeemaamiles.com>, registered with Compana, LLC.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of her knowledge has no known conflict in serving
as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On February 21, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <redeemaamiles.com> domain name is
registered with Compana, LLC and that
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 February 27, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 19, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@redeemaamiles.com by
e-mail.
A timely Response was received and determined to be complete on March 19, 2007.
On
Complainant filed an Additional Submission on
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <redeemaamiles.com> domain name is confusingly similar to Complainant’s AA, BUYAAMILES, SHAREAAMILES, and REDEEMAAMILES marks.
2. Respondent does not have any rights or legitimate interests in the <redeemaamiles.com> domain name.
3. Respondent registered and used the <redeemaamiles.com> domain name in bad faith.
B. Respondent makes the following assertions:
1.
Complainant
did not have rights in REDEEMAAMILES at the time Respondent registered the <redeemaamiles.com>
domain name.
2.
Respondent
has legitimate rights in the <redeemaamiles.com> domain name.
3.
Respondent
did not register and is not using the <redeemaamiles.com> domain name in
bad faith.
C. In its Additional Submission, Complainant emphasizes
its common law rights in the REDEEMAAMILES mark, refutes the notion that the
mark is somehow generic, and provides evidence of Respondent’s travel-related
website content.
D. In its Additional Submission, Respondent
argued that Supplemental Rule 7, pertaining to Additional Submissions, is an
improper modification to the Rules because it gives Complainant more than one
“bite at the apple.” Respondent also
argued that Complainant’s evidence on its advertising expenditures is
inadequate.
FINDINGS
Complainant has established rights in its AA
mark through registration with the U.S. Patent and Trademark Office (“USPTO”),
with use dating back to 1935.
Complainant has established rights in its SHAREAAMILES and BUYAAMILES
marks through registration with the USPTO, with use dating back to 2001. Complainant has a pending application with
the USPTO for REDEEMAAMILES, with use dating back to
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 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;
(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.
Procedural Matter
First, the
Panel rejects Respondent’s argument that Supplemental Rule 7 is an improper
modification of the Rules. In this
Panel’s view, it is the goal of the Policy to provide an expedient means of
resolving domain name disputes while allowing a full rendering of relevant
facts by both Parties. That goal can be
maintained through allowing Additional Submissions from both Parties within
rather stringent time deadlines, rather than disallowing them altogether. The Policy allows, as in this case, an equal
opportunity to be heard by both Parties.
Complainant has established rights in its AA,
SHAREAAMILES, and BUYAAMILES marks through registration with the USPTO. Complainant
is not required to possess a trademark registration in order to have rights in
the REDEEMAAMILES mark under Policy ¶ 4(a)(i).
Complainant asserts common law rights in the REDEEMAAMILES
mark through its continuous and extensive use of the mark since at least
Complainant was using the mark REDEEMAAMILES commercially, and already had registrations of two other marks including the term “AAMILES,” prior to Respondent’s registration of the <redeemaamiles.com> domain name. The Panel finds Complainant possesses sufficient common law rights in the REDEEMAAMILES mark to meet the burden set by Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Respondent’s
<redeemaamiles.com> domain name is identical to Complainant’s REDEEMAAMILES. The disputed domain name contains
Complainant’s mark in its entirety and adds the generic top-level domain
(“gTLD”) “.com.” The addition of a gTLD
is not significant when examining whether a disputed domain name is identical
or confusingly similar under Policy ¶ 4(a)(i) as a gTLD is a required part of
all domain names. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO
June 25, 2000) (finding that the top level of the domain name such as “.net” or
“.com” does not affect the domain name for the purpose of determining whether
it is identical or confusingly similar); see
also Snow Fun, Inc. v. O'Connor,
FA 96578 (Nat. Arb. Forum
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Respondent is using the <redeemaamiles.com> domain name to operate a website that features hyperlinks to various third-party websites, some of which are in direct competition with Complainant as well as to Complainant’s own website, from which Respondent presumably receives click-through fees. Such diversionary use for commercial gain 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 Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute 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)).
The Respondent is not commonly
known by the <redeemaamiles.com> domain
name under Policy ¶ 4(c)(ii) as Respondent’s WHOIS information lists Respondent
as “Texas International Property Associates” and there is no other evidence in
the record to suggest that Respondent is or has ever been known by the disputed
domain name. Respondent is not
authorized by Complainant to use its REDEEMAAMILES mark. See M. Shanken Commc’ns, Inc.
v. WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not
commonly known by the <cigaraficionada.com> domain name because the WHOIS
information lists the registrant of the domain name as as
“WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record
indicating that the respondent is known by the domain name).
Respondent’s notion that the <redeemaamiles.com> domain name is somehow generic is nonsense, as the name has no meaning save its association with Complainant.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
is using the <redeemaamiles.com> domain name to operate a website featuring hyperlinks
to various other websites. These
websites include both Complainant’s own website, as well as the websites of
Complainant’s competitors. Respondent
presumably receives click-through fees for the operation of its website. The <redeemaamiles.com>
domain name is capable of creating a likelihood of confusion as to the source
and affiliation of Complainant with the disputed domain name. See
Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent’s
registration of the disputed domain name to advertise the websites of Complainant’s
competitors constitutes a disruption of Complainant’s business under Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <redeemaamiles.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated:
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