American Airlines, Inc. v Carolina Rodrigues, Fundacion Comercio
WIPO Case No. D2022-4862
•17-02-2023
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
American Airlines, Inc. v. Carolina Rodrigues, Fundacion Comercio
Electronico
Case No. D2022-4862
1. The Parties
The Complainant is American Airlines, Inc., United States of America (“United States”), 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 <americanairlinesciticard.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 December 21, 2022. On December 22, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 22, 2022, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 27, 2022, 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 December 28, 2022.
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 January 3, 2023. In accordance with the Rules, paragraph
5, the due date for Response was January 23, 2023. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 24, 2023.
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The Center appointed Mariya Koval as the sole panelist in this matter on February 3, 2023. 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, founded in 1926, is the largest airline in the world and enjoys a reputation in the United States and internationally as a premier airline for business and leisure travelers. Prior to the COVID pandemic the Complainant and its regional partners and affiliates served over 350 destinations in over fifty countries, with nearly 7,000 daily flights. During its more than 90-year history, the Complainant has developed global name-recognition and goodwill, handling more than 200 million passengers annually with an average of more than 500,000 passengers daily. As of 2021, the Complainant employs 123,400 staff members The Complainant also is a founding member of the Oneworld alliance, the third-largest airline alliance in the world.
The Complainant is the owner of numerous AMERICAN AIRLINES trademark (the AMERICAN AIRLINES
Trademark) registrations in more than 75 countries throughout the world, among which are:
| - | United States of America Trademark Registration No. 514294, registered on August 23,1949, in respect of services in class 39; |
| - | United States of America Trademark Registration No. 1845693, registered on July 19, 1994, in respect of goods in class 25; |
| - | International Registration No. 1266184, registered on December 31, 2014, in respect of services in classes 35, 37, 39. |
The Complainant operates the domain names <aa.com> and <americanairlines.com> since 1998, in addition to numerous other domain names incorporating the AMERICAN AIRLINES Trademark, where the Complainant not only features general information about airlines and traveling, but also allows customers to book travel reservations around the world, view, change and cancel travel reservations, check in for flights, and view flights status. According to the web analytics website “ the Complainant’s website “ has been ranked the number one website in the world in the category of “Air Travel”. The Complainant is also very active on social media and has over 2.6 million followers on Facebook and 1.6 million followers of Twitter.
The Disputed Domain Name was registered on January 4, 2022. At the date of this decision, the website under the Disputed Domain Name resolves to the page containing either reCAPTCHA service and/or different alerts on possible infection of computer by viruses. According to the evidence submitted with the Complaint (Annex 12 to the Complaint), the Disputed Domain Name previously resolved to websites that contained pay-per-click (“PPC”) or affiliate advertising links that redirect to websites that are competitive with the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant contends that its brands, trade names, and other intellectual property are the result of significant investment and worth billions of dollars.
The Complainant further asserts that the Disputed Domain Name is confusingly similar to the Complainant’s AMERICAN AIRLINES Trademark in which it has established rights. The Disputed Domain Name reproduces the AMERICAN AIRLINES Trademark in its entirety, changing the Trademark only by adding the term “citicard” and the generic Top-Level Domain (“gTLD”) “.com”. The term “citicard” is strongly associated
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with and descriptive of the Complainant’s well-known co-branded credit card products, and thus, the use of
that term with the Complainant’s Trademark actually increases the likelihood of confusion.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Disputed
Domain Name in view of the following:
| - | the Complainant has never authorized, licensed or consented to the Respondent’s registration and/or use of the Disputed Domain Name which misappropriates and is confusingly similar to the Complainant’s AMERICAN AIRLINES Trademark; |
| - | the Respondent is not commonly known by the Disputed Domain Name; |
| - | the Respondent has never operated any bona fide or legitimate business under the Disputed Domain Name, and is not making protected non-commercial or fair use of the Disputed Domain Name. Instead, the Respondent is using the Disputed Domain Name to divert Internet traffic to websites that contain PPC” or affiliate advertising links that redirect to websites that redirect to websites that are competitive with the Complainant.. |
The Complainant further contends that the Respondent has registered and is using the Disputed Domain Name in bad faith. Long after the Complainant established its rights in its famous AMERICAN AIRLINES Trademark, and with knowledge of this Trademark, the Respondent registered the confusingly similar
Disputed Domain Name to divert Internet traffic intended for the Complainant to websites featuring advertising for goods and services through an affiliate advertising program.
The Complainant is not aware of any use of the Complainant’s AMERICAN AIRLINES Trademark in connection with air travel, air travel booking services, or travel-related credit card services other than in connection with the Complainant. The Disputed Domain Name is so obviously connected with the Complainant and its services that its use by someone with no connection to the Complainant suggests opportunistic bad faith.
Additionally, the Disputed Domain Name has active mail exchange (“MX”)mail exchange) records, as shown in an MX records lookup. Those active MX records indicate use for email, which evidences a likelihood of additional bad-faith use of the Disputed Domain Name to engage in fraudulent email or phishing communications.
Finally, the Respondent’s pattern of prior bad faith registration of domain names utilizing well-known trademarks in which the Respondent has no rights or legitimate interests provides further evidence of the Respondent’s bad faith registration and use of the Disputed Domain Name in this case. There are an astonishing number of prior UDRP Panel decisions under the Policy against the Respondent—over 200 total and over 80 in the past year alone—the vast majority of which concern the Respondent registering and using in bad faith domain names incorporating famous and well-known marks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, in order for the complainant to succeed it must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
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(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has properly asserted its rights in the AMERICAN AIRLINES Trademark due to the long use and registrations worldwide.
| its entirety with addition of CITI third-party trademark – with which party the Complainant shares co-branded | The Disputed Domain Name resembles the Complainant’s registered AMERICAN AIRLINES Trademark in name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. Also, in accordance with the WIPO Overview 3.0, section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Furthermore, in accordance with section 1.12 of the WIPO Overview 3.0, where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element. The Panel finds that in view of the fact that the Disputed Domain Name incorporates the entirety of the Complainant’s well-known AMERICAN AIRLINES Trademark, the addition of the CITI trademark and the dictionary term “card” does not in any case prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark. (On the contrary, inclusion of the CITI trademark and term “card” in the Disputed Domain Name affirms a finding of confusing similarity in view of the Complainant has a special bonus program for its customers with use of “Citi” credit cards.) |
| It is also well established that the gTLD, in this case “.com”, is disregarded for the purpose of determining identity or confusing similarity under the first element. | |
| In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the condition of paragraph 4(a) of the Policy. | |
| B. Rights or Legitimate Interests | |
| The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. | |
| In accordance with section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element. | |
| The Panel finds that the Complainant has made a prima facie case. The Respondent registered the registered. There is no evidence that the Respondent owns any AMERICAN AIRLINES Trademark, nor that it is commonly known by the Disputed Domain Name. Therefore, the Respondent has failed to come forward with any evidence to rebut such prima facie case. | |
| Further, the Panel also accepts that the way of use of the Disputed Domain Name indicates clear bad faith registration and use. Namely at the date of the Complaint the Disputed Domain Name resolved to websites containing PPC or affiliate advertising links that redirected to websites competitive with the Complainant, and | |
| at the date of this Decision the Disputed Domain Name resolves to the page containing either reCAPTCHA |
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service and/or different alerts on possible infection of computer by viruses. Moreover, according to the
evidence presented by the Complainant (Annex 13 to the Complaint) the Disputed Domain Name has active
MX records, which indicate use for email, that evidences a likelihood of additional bad-faith use of the
Disputed Domain Name to engage in fraudulent email or phishing communications.
Also, given the fact that the Disputed Domain Name contains CITI trademark and term “card”, which both refer to the Complainant’s special co-branded bonus program, the construction of the Disputed Domain Name is likely to mislead or cause confusion, which was likely the main intent of the Respondent when registering the Disputed Domain Name, which cannot amount to fair use nor confer rights or legitimate interests upon the Respondent.
There is no evidence that the Respondent is commonly known by the Disputed Domain Name or any similar name. Moreover, the Respondent is, as the Complainant asserts (Annex 14 to the Complaint), a serial cybersquatter. The Panel has no reason to believe that this case is anything other than another case in large number of cases brought against the Respondent in respect of the unauthorized use for commercial purposes of well-known trademarks.
The Respondent did not file any response to the Complaint and did not participate in this proceeding, respectively, the Respondent did not present any evidence for supporting any rights or legitimate interests in the Disputed Domain Name.
In view of the foregoing, the Panel finds that the Respondent lacks rights or legitimate interests in the the Policy.
C. Registered and Used in Bad Faith
The Panel comes to the conclusion that the Disputed Domain Name was registered and is being used in bad faith in view of the following. The Complainant obtained the registration of the AMERICAN AIRLINES Trademark almost seventy years earlier than the Respondent registered the Disputed Domain Name in 2022. Having considered that the Complainant’s AMERICAN AIRLINES Trademark is globally well known, and that the Complainant has spent huge amounts and efforts for promotion of its Trademark, it is obvious that the Respondent has been very well aware of the reputation of the AMERICAN AIRLINES Trademark when registering a confusingly similar Disputed Domain Name that completely incorporates the Complainant’s Trademark. The Panel considers it is obvious bad faith that the Respondent deliberately chose the Disputed Domain Name to create a likelihood of confusion with the Complainant’s AMERICAN AIRLINES Trademark so as to create a false association or affiliation with the Complainant.
The Disputed Domain Name incorporates the Complainant’s AMERICAN AIRLINES Trademark in its entirety, as well as contains CITI trademark and term “card”, which both refer to the Complainant’s special co-branded bonus program, that creates a strong likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name. The Panel considers that the Respondent obviously chose to register the Disputed Domain Name with well awareness of the Complainant’s business and the AMERICAN AIRLINES Trademark for the only purpose of attracting Internet users to its competing website.
In accordance with the WIPO Overview 3.0, section 3.4, UDRP Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution (in some such cases, the respondent may host a
copycat version of the complainant’s website). Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective
customers. Taking into account the Respondent’s use of the Disputed Domain Name to redirect to websites
containing PPC or affiliate advertising links that redirected to websites that are competitive with the
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Complainant, and to the page containing different alert notifications on possible infection of computer by viruses, such the Respondent’s behavior cannot be in any way considered as a good faith.
In addition, according to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is of the opinion that it is clear that the Respondent, having registered and used the Disputed Domain Name, which is confusingly similar to the Complainant’s well-known AMERICAN AIRLINES Trademark, intended to disrupt the Complainant’s business and confuse Internet users seeking for or expecting the Complainant. In view of the absence of any evidence to the contrary and that the Respondent did not file any response to claim otherwise, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.
Also, the Panel has found that the Respondent is a serial cybersquatter (i.e., an individual who intentionally registers and uses domain names in bad faith for a commercial purpose) and that this case is part of that pattern.
According to section 3.6. of the WIPO Overview 3.0 there are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith. The Panel considers that, taking into account all circumstances of this case and the fact that the Respondent is a cybersquatter, in this case the Panel considers that the Respondent’s use of privacy service constitutes an inference of bad faith registration and use of the Disputed Domain Name.
Therefore, having examined all the circumstances of the case the Panel finds that the Respondent registered
and is using the Disputed Domain Name in bad faith, and accordingly that the paragraph 4(a)(iii) of the
Policy has been satisfied by the Complainant
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 <americanairlinesciticard.com> be transferred to the Complainant.
/Mariya Koval/ Mariya Koval Sole Panelist Date: February 17, 2023
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