American Airlines, Inc. v Carolina Rodrigues, Fundacion Comercio

WIPO Case No. D2024-2696

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

American Airlines, Inc. v. Carolina Rodrigues, Fundacion Comercio
Electronico

Case No. D2024-2696

1. The Parties

The Complainant is American Airlines, Inc., United States of America (“United States” or “US”), represented by Greenberg Traurig LLP, United States.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <americanairlinesslack.com> (the “Disputed Domain Name”) is registered with

GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2024. On July 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 2, 2024, the Registrar transmitted by email to the Center its

verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 5, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 9, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2024.

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The Center appointed Michal Havlík as the sole panelist in this matter on August 8, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a US based airline and one of the largest air carriers in the world. The Complainant has used and continues to use its name American Airlines (abbreviated AMERICAN) and other trademarks and service marks including AA, AMERICAN, and AMERICAN AIRLINES in the US and 75 other countries.

The Complainant owns multiple trademark registrations including:

- US trademark registration for AMERICAN AIRLINES, No. 514294, registered on August 23, 1949;
and

- International trademark registration for AMERICAN AIRLINES, No. 1266184, registered on
December 31, 2014.

The Complainant has owned and operated the domain names <aa.com> and <americanairlines.com>, which redirects to <aa.com> since 1998 where the Complainant’s primary website is hosted.

The Disputed Domain Name was registered on May 14, 2024. The Disputed Domain Name resolves to a website which contains pay-per-click (“PPC”) advertising links redirecting to various third-party websites in particularly offering airline tickets. There was no change in the webpage after filing of the Complaint.

5. Parties’ Contentions
A. Complainant

The Complainant contends that is has satisfied each of the elements required under the Policy for a transfer of the Disputed Doman Name.

The Complainant cites its US and other trademarks for word mark AMERICAN AIRLINES. The Complainant contends that the Disputed Domain Name contains the AMERICAN AIRLINES mark in its entirety as its initial part. According to the Complainant, the only change is the addition of a well-known workplace chat platform named “slack” which is not sufficient to exclude confusion with the Disputed Domain Name, and then the generic Top-Level-Domain (“gTLD”) “.com”. Notably, the Disputed Domain Name is nearly identical to the Complainant’s domain name <americanairlines.com>, which redirects to the Complainant’s website at the domain name <aa.com>. Furthermore, the Disputed Domain Name is nearly identical to how the

Complainant can access the Complainant’s internal Slack platform, accessible from the domain name
<americanairlines.slack.com>. It submits that as a result, the Disputed Domain Name is confusingly similar
to the Complainant’s trademarks.

The Complainant contends that the Respondent has prima facie no rights or legitimate interests in respect of the Disputed Domain Name. Furthermore, it holds that the Complainant’s earlier rights precede the Disputed Domain Name by a long period. Moreover, the Complainant contends that it never licensed or granted an authorization to the Respondent to use AMERICAN AIRLINES mark. Given the fact that the Disputed

Domain Name resolves to a website containing PPC links, the Respondent does not make a fair use of it.

Finally, the Complaint alleges that the registration and use of the Disputed Domain Name was undertaken in bad faith. With regard to the long-term and broad use of the Complainant’s trademarks, the Respondent must have known about their existence when registering the Disputed Domain Name. Using the Disputed Domain Name in connection with a PPC website constitutes bad faith.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i)     that the Disputed Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii)     that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii)    that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights regarding a trademark or service mark for the purpose of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purpose of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of the term “slack” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Accordingly, this Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the Complainant, previous panels have recognized that proving a respondent lack of rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the Respondent. As such, where a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (even though the burden of proof always remains on the Complainant). If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element. WIPO Overview 3.0., section 2.1.

The use of a domain name to host a parked page comprising PPC links does not represent bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark. WIPO Overview 3.0, section 2.9. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

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Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence illustrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the

Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purpose of paragraph 4(a)(iii), paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel notes that the Complainant’s trademarks, AMERICAN AIRLINES, predate the Disputed Domain Name by several decades and have been intensively used in numerous jurisdictions including Panama, which is the country of residence of the Respondent. As a result of the long-term use, the Complainant’s trademarks are distinctive and well-known for airline services. Therefore, the Respondent knew or should have known about the Complainant’s trademarks prior to registering the Disputed Domain Name, see F. Hoffmann-La Roche AG v. Popo, WIPO Case No. D2008-0423.

The Disputed Domain Name has been used in connection with an website containing PPC links offering services that are related to the Complainant.

When taking into account all relevant facts and circumstances, the Panel notes that the Disputed Domain Respondent has registered and used the Disputed Domain Name in bad faith primarily for the purpose of attracting Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks and as such for generating the commercial gain through PPC advertising for services that are related to or competing with the Complainant. See Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.

Name is confusingly similar to the Complainant’s distinctive and widely-known trademark, and that the

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <americanairlinesslack.com> be transferred to the Complainant.

/Michal Havlík/
Michal Havlík
Sole Panelist
Date: August 22, 2024