American Airlines, Inc. v Domain Privacy, Domain Name Privacy Inc

WIPO Case No. D2024-2665

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

American Airlines, Inc. v. Domain Privacy, Domain Name Privacy Inc.

Case No. D2024-2665

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 Domain Privacy, Domain Name Privacy Inc., Cyprus.

2. The Domain Name and Registrar

The disputed domain name <americanairlinescreditunion.org> is registered with Tucows Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2024. On July 1, 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 (Contact Privacy Inc. Customer 0170042444) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 3, 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 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2024.

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The Center appointed Gill Mansfield as the sole panelist in this matter on August 15, 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 Delaware corporation located in Texas, United States. It is an international air carrier providing air transportation services for business and leisure travellers with a history dating back over 90 years. It offers thousands of flights daily serving more than 350 destinations in more than 50 countries.

The Complainant is the owner of an extensive international portfolio of AMERICAN AIRLINES and registrations:

- United States trademark registration number 514294 for AMERICAN AIRLINES (word mark) registered on

August 23, 1949, in class 39.

- United States trademark registration number 2728688 for AMERICAN AIRLINES FEDERAL CREDIT

UNION (word mark) registered June 4, 2003, in class 36.

- European Union trademark registration number 00153726 for AMERICAN AIRLINES (word mark)
registered on March 29, 1999 in classes 14, 16, 18, 25, 28, 34 and 39.

The Complainant owns and uses the domain names <aa.com> and <americanairlines.com>, which re-directs to <aa.com> where the Complainant’s primary website is located.

Additionally, the Complainant owns and uses the domain name <aacreditunion.org> where the American Airlines Credit Union website is located. American Airlines Federal Credit Union is a not-for-profit financial cooperative that serves current and retired employees of American Airlines, their family members, and others who work in the air transportation industry. It has 46 branches located throughout the United States and offers personal banking services, loans, credit cards, and business banking and credit cards.

The disputed domain name was registered on January 26, 2024, and at the time of the filing of the Complaint resolved to a parked page with pay-per-click (“PPC”) links and affiliate advertising, via the Google browser, and redirected to a McAfee download website via the Microsoft Edge browser. The disputed domain name has active mail exchange (MX) records configured.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights. The Complainant points to the fact that over
its more than 90-year history the Complainant has developed global name-recognition and goodwill, and
become a household name. It points to common law rights in the trademarks AMERICAN AIRLINES and
AMERICAN AIRLINES CREDIT UNION as well as its extensive international portfolio of trademark
registrations for AMERICAN AIRLINES and its registration for the AMERICAN AIRLINES FEDERAL CREDIT
UNION mark. In particular, the Complainant refers to the fact that the priority date for its earliest United
States trademark registration is 1948, the priority date for its earliest Canadian trademark registration is
1992, and the priority date for its earliest European Union trademark registration is 1999.

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The Complainant contends that the disputed domain name incorporates all of the Complainant’s AMERICAN AIRLINES CREDIT UNION mark in full with the addition of the generic top level domain (“gTLD”) “.org”. Further, it fully incorporates the Complainant’s AMERICAN AIRLINES mark and adds the words “credit union” which directly describe the services offered by the Complainant in connection with the American Airlines Credit Union. It states that that addition of “credit union” to the Complainant’s famous mark increases the likelihood of confusion due to the direct association of those words with the credit union aspect of the Complainant’s business. Further the disputed domain name is nearly identical to the Complainant’s registered domain name for its credit union services with the only difference being that the Complainant’s full registered trademark AMERICAN AIRLINES is used instead of the shortened form of “AA”.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered without the Complainant’s authorization, license or consent. The Respondent is not commonly known by the disputed domain name, has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, and is not making a protected non-commercial or fair use of the disputed domain name.

Finally, that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent registered a confusingly similar domain name long after the Complainant had established rights in its trademarks, to divert Internet traffic for commercial gain, causing disruption to the Complainant’s business and creating a likelihood of confusion regarding source, sponsorship, affiliation or endorsement. Further, the disputed domain name has active MX records indicating use for email and which the Complainant contends evidences a likelihood of additional bad faith through phishing or fraudulent email communications.

The Complainant also contends that the fact that the disputed domain name contains the Complainant’s famous marks is alone sufficient to give rise to an inference of bad faith.

Finally, the Complainant refers to the fact that the disputed domain name is being offered for sale, and provides screenshots of the WhoIs record which states that the disputed domain name is listed for sale via a partner site, and a GoDaddy webpage with a premium domain listing.

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 carries the burden of proving:

(i) that the disputed domain name is identical or confusingly similar to a trademark or 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 in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

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The entirety of the AMERICAN AIRLINES mark is reproduced within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “credit union”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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.

The Panel also notes that the disputed domain name reproduces the Complainant’s registered AMERICAN
AIRLINES FEDERAL CREDIT UNION mark with the removal of the word “federal”, and reproduces the

Complainant’s unregistered AMERICAN AIRLINES CREDIT UNION trademark in full.

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, panels have recognized that proving a respondent lacks 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 (although 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.

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 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

In particular, the Respondent has no business relationship with the Complainant and the disputed domain name was registered without the Complainant’s authorization, license or consent. There is no evidence that the Respondent is commonly known by the disputed domain name, nor is there any evidence of any use or demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services. There is also no evidence of legitimate noncommercial fair use of the disputed domain name.

On the contrary, the disputed domain name resolves to a parked page that contains PPC and affiliate advertising links that redirect Internet users to third-party websites, including those that are directly competitive with the Complainant’s credit union services.

Panels have previously found that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark, or otherwise mislead Internet users. WIPO Overview 3.0 section 2.9.

In addition, the Panel notes that in the present case the disputed domain name directly corresponds to the
Complainant’s field of activity, describing the services offered by the Complainant in connection with the
American Airlines Credit Union business. Relatedly, the Panel notes that the disputed domain name mimics
that of the Complainant’s genuine domain name registered for its credit union business, namely
<aacreditunion.org>, with the only difference being that the disputed domain name replaced the AA acronym

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and trademark with the Complainant’s full AMERICAN AIRLINES trademark. As such the construction of the
disputed domain name itself is such as to carry a risk of implied affiliation that cannot constitute fair use.
WIPO Overview 3.0 section 2.5.1

Further, according to paragraph 14(b) of the Rules, the Panel may draw from the lack of response of the Respondent such inferences as it considers appropriate. The Panel is of the view that the lack of response from the Respondent corroborates the absence of any rights or legitimate interests of the Respondent in the disputed domain name.

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 purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, 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.

In the present case, the Panel notes that the disputed domain name was registered nearly 75 years after the Complainant’s first registration of the AMERICAN AIRLINES trademark. Having reviewed the available record, the Panel finds that the Complainant’s marks have achieved significant goodwill and reputation in their long history, and are well-known worldwide. In view of the worldwide reputation in the Complainant’s trademarks it is inconceivable that the Respondent did not have knowledge of those trademarks at the time the disputed domain name was registered.

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. WIPO Overview 3.0, section 3.1.4.

As already noted above by the Panel, the record shows that the disputed domain name resolves to a parked page containing PPC and affiliate advertising links. This constitutes bad faith under paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain,

Internet users by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement.

The Complainant has also provided evidence that MX servers associated with the disputed domain name have been configured to allow email to be sent from the disputed domain name thereby potentially enabling the Respondent to mislead or deceive potential recipients, an indicator of bad faith. This presents an implied ongoing threat to the Complainant and supports a finding that there is no conceivable good faith use to which the disputed domain name could be put, particularly given its impersonation of the Complainant’s genuine credit union registered domain name.

The Respondent did not submit a Response in this proceeding, or provide any evidence of actual or contemplated good faith use, which is a further indicator of the Respondent’s bad faith and was considered by the Panel.

Having reviewed the available record, the Panel finds that the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element 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 <americanairlinescreditunion.org> be transferred to the Complainant.

/Gill Mansfield/
Gill Mansfield
Sole Panelist
Date: August 29, 2024