American Airlines, Inc. v Contact Privacy, Inc. Customer 7151571251/ Name
WIPO Case No. D2022-2526
•25-08-2022
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
American Airlines, Inc. v. Contact Privacy, Inc. Customer 7151571251/ Name
Redacted
Case No. D2022-2526
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 Contact Privacy, Inc. Customer 7151571251, Canada/ Name Redacted[1] .
[1] The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential
2. The Domain Name and Registrar
The disputed domain name <americanairlinejob.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2022. On July 12, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 13, 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 July 13, 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”).
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2022. The Respondent did not submit a response. However, an informal third party email communication revealing the underlying Registrant’s name (whether intentional or otherwise) was disclosed and subsequently received by the Registrar on July 20, 2022. Another email communication then was received on July 21, 2022, claiming identity theft. After consultation, the Center notified the Parties it would proceed with the Panel Appointment Process on August 11, 2022.
The Center appointed William R. Towns as the sole panelist in this matter on August 15, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is American Airlines, Inc., a United States based company first established over 90 years ago in Fort Worth Texas and initially operating eighty small airlines. Much has changed since then. American Airlines (often referred to as “AA” and “AAL”) is one of the world’s most largest airlines, with regional partners and affiliates operating over 7,000 daily international and domestic flights serving as many as 350 destinations in 50 countries.
The Complainant is the owner of its registered AMERICAN and AMERICAN AIRLINES trademarks, the earliest of which was registered with the United States Patent and Trademark Office (USPTO) on August 23, 1949. The Complainant since has secured further trademark registrations for its AMERICAN AIRLINES mark, including among the following:
- U.S. Trademark Registration No. 0514294, applied for July 27, 1948, and registered August 23, 1949;
- U.S. Trademark Registration No. 1845693, applied for July 6, 1993, and registered July 19, 1994;
- U.S. Trademark Registration No. 5279167, applied for February 5, 2016, and registered
September 5, 2017;
- U.S. Trademark Registration No. 4939082, applied for December 23, 2014, and registered April 19, 2016;
- U.S. Trademark Registration No. 5573314, applied for September 8, 2017,and registered October 2, 2018;
- U.S. Trademark Registration No. 5592865, applied for November 22, 2016, and registered
October 30, 2018;
- International Trademark Registration No 1266184, and registered December 31, 2014; and
- International Trademark Registration No 1330416, and registered December 9, 2016.
The Complainant also uses a stylized AA mark, United States Trademark Registration No. 2328546, applied for by the Complainant on November 5, 1998, and registered March 14, 2000. WIPO UDRP panels consistently have recognized the Complainant’s AMERICAN AIRLINES and AMERICAN marks as well- known marks. See, e.g., American Airlines, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues et al., WIPO Case No. D2021-1093.
The disputed domain name was registered by the Respondent on June 21, 2022, according to the concerned Registrar’s WhoIs records. The Complainant maintains that the Respondent although passively holding the disputed domain name has impersonated the Complainant, creating a fraudulent email account in an unlawful attempt to deceive one or more unsuspecting individuals. The Complainant has offered
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relevant evidence of a credible report from an unsuspecting job seeker who was defrauded by the
Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s well- known AMERICAN and AMERICAN AIRLINES marks, emphasizing that the Complainant is the largest air carrier in the world and recognized internationally as a premier airline for both business and leisure travelers.
The Complainant attributes its success to investment in its brand and in intellectual property. The Complainant explains that it is the holder of domain names such as <aa.com> and <americanairlines.com>, each of which are redirected by the Complainant to its primary American Airlines website. The Complainant remarks it has registered its AMERICAN AIRLINES mark in over 75 countries.
The Complainant cites screen captures of web pages from its American’s website, which the Complainant asserts being ranked the number one website in the world in the category of air travel. The Complainant represents that in addition to common law rights it holds numerous trademark registrations for its AMERICAN and AMERICAN AIRLINES marks, including some dating back as far as July 27, 1948, and used in commerce since as early as April 1934. The Complainant ads this has been continuously used by its AMERCIAN AIRLINES website since 1998, and in addition also posts information for current job positions.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent absent the Complainant’s authorization or consent has misappropriated the Complainant’s AMERICAN and AMERICAN AIRLINES marks. The Complainant contends that the Respondent has not been commonly known by the disputed domain name, and has neither used nor undertaken preparations to us the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant further contends that the Respondent has not been authorized, licensed, or otherwise permitted by the Complainant to register or use the disputed domain name. The Complainant further submits to the best of the Complainant’s knowledge that there have been no prior trademark applications or registrations by the Respondent of the Complainant’s AMERICAN and AMERICAN AIRLINES marks. The Complainant reiterates that the Respondent is using the disputed domain name to impersonate the Complainant by creating fraudulent email accounts used to trick individuals. The Complainant accordingly concludes that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant submits that the disputed domain name was registered by the Respondent in bad faith and is being used by the Respondent in bad faith. The Complainant observes that even were the disputed domain name not to resolve to any active content, the Respondent’s passive holding of the disputed domain name is in and of itself sufficient to establish the Respondent’s bad faith, particularly in circumstances where as here the disputed domain name has been used by the Respondent to create fraudulent email accounts.
The Complainant further finds it inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant, and reiterates that the Respondent’s fraudulent use of the disputed domain name clearly demonstrates the
Respondent’s bad faith. The Complainant further asserts that the mere fact that the Respondent registered the disputed domain name without more is sufficient to create an inference of bad faith, articulating that the Panel must look to the “totality of circumstances”.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
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6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the
complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights
or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing
all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the
often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the
knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to
come forward with evidence of a right or legitimate interest in the domain name, once the complainant has
made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions,
Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International
Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s AMERICAN and AMERICAN AIRLINES marks, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.[2] The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
The Complainant’s AMERICAN and AMERICAN AIRLINES marks are clearly recognizable in the disputed
domain name.[3] The inclusion in the disputed domain name of the word “job” immediately following the
AMERICAN AIRLINE does not prevent a finding of confusing similarity. When as here the relevant
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trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive,
geographical, pejorative, meaningless, or otherwise, does not prevent a finding of confusing similarity under
paragraph 4(a)(i) of the Policy.[4] Top-Level Domains (“TLDs”) generally are disregarded when evaluating the
identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph
[4] See WIPO Overview 3.0, section 1.8 and cases cited therein.
4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.[5]
[5] See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the
Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima
facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent
has not been authorized to use the Complainant’s AMERICAN and AMERICAN AIRLINES marks. The
record nonetheless reflects the Respondent’s intentional registration and use of the disputed domain name
in a blatant and unlawful attempt to defraud one or more unsuspecting job seekers.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use,
the domain name or a name corresponding to the disputed domain name in connection with a bona fide
offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name
within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is clearly evident from the record in this case that the Respondent knew of the Complainant and had the Complainant’s AMERICAN AIRLINES and AMERICAN marks firmly in mind when registering the disputed domain name. The record beyond any doubt establishes that the Respondent registered the disputed
domain name with the aim of exploiting and profiting from the Complainant’s mark, using the disputed
domain name to impersonate unsuspecting job seekers in an employment-related identity theft scheme. The
use of a domain name for illegal activity (e.g., phishing, impersonation, or other types of fraud) can never
confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13 and cases cited
therein.
Having regard to the relevant circumstances in this case, and absent any explanation by the Respondent,
the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain
name in connection with a bona fide offering of goods or services, and is not making a legitimate
noncommercial or fair use of the disputed domain name. There is no indication that the Respondent at any
time has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the
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Policy. In the final analysis, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the
Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the
owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in
excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the
owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided
that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to
attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent had the Complainant’s AMERICAN AIRLINES and AMERICAN marks mark firmly in mind when registering the disputed domain name. The Respondent’s registration and use of the disputed domain name as reflected in the record of this case is clearly demonstrative of bad faith. The Respondent sought to capitalize on the Complainant’s trademark rights, creating a likelihood of confusion with the Complainant’s AMERICAN AIRLINES and AMERICAN marks, with the Respondent’s ultimate objective being to profit illicitly from the perpetration of a fraudulent employment-related and identify theft scam.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the
Policy.
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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 <americanairlinejob.com> be transferred to the Complainant.
/William R. Towns/
William R. Towns
Sole Panelist
Date: August 25, 2022
identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v.
FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
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