American Airlines, Inc. v lin yanfei

WIPO Case No. D2023-3938

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

American Airlines, Inc. v. lin yanfei

Case No. D2023-3938

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 lin yanfei, China.

2. The Domain Name and Registrar

The disputed domain name <americanairlinesjetnet.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2023. On September 21, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On September 21, 2023, 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 (REDACTED FOR PRIVACY (DT), Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email

communication to the Complainant on September 22, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on October 3, 2023.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on October 4, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2023. The Respondent did not submit any response.

Accordingly, the Center notif ied the Respondent’s default on October 26, 2023.

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The Center appointed Rodrigo Azevedo as the sole panelist in this matter on November 10, 2023. The Panel f inds 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 the world-renowned air carrier American Airlines.

The Complainant obtained registrations for the trademark AMERICAN AIRLINES in numerous regions of the world, including the United States trademark registration number 0514294, registered on August 23, 1949, and the Chinese trademark registration no. 616440, registered on October 30, 1992.

The Respondent registered the disputed domain name on August 7, 2023.

The disputed domain name does not resolve to any active website, but just to an automated warning message informing Internet users accessing it that it is a fraudulent website, connected to phishing practices or with the dissemination of computer virus. The Complainant also brought evidence of use of the disputed domain name in connection with pay-per-click (“PPC”) advertisement and that it is connected to active mail exchange (MX) records.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant has used the AMERICAN AIRLINES trademark for over 86 years, both alone and in combinations with other words and designs in connection with travel and transportation services, travel agency services and travel reservation services, among numerous other goods and services. In addition to its strong common law rights in the AMERICAN and AMERICAN AIRLINES marks, the Complainant owns multiple trademark registrations for its AMERICAN and AMERICAN AIRLINES marks in the United States - where the Respondent’s privacy service, Super Privacy Service LTD c/o Dynadot, is purportedly located - and in China - where the Respondent is purportedly located. Priority for the oldest United States registration for the AMERICAN AIRLINES mark dates back to 1948, decades before the Respondent registered the disputed domain name. The Complainant also owns and operates the domain names <aa.com> and <americanairlines.com>, in addition to numerous other domain names incorporating the terms “American” and “American Airlines.” The disputed domain name incorporates the Complainant’s AMERICAN AIRLINES mark in full, just adding the term “jetnet” and then the generic top-level domain (“gTLD”) “.com”. The term “jet” describes the Complainant’s airline services, which use jets. Additionally, “Jetnet” appears to be a transposition of “Net Jets”. NetJets operates the largest private aircraf t f leet in the world and of fers a full range of personalized private aviation solutions. Numerous panel decisions have found that the mere additions of a gTLD and generic terms to a complainant’s mark fails to produce a domain name distinct f rom the complainant’s mark, especially when the generic terms added describe or are associated with the complainant’s business as is the current case. Similarly, numerous panel decisions have found that the addition of another trademark to a complainant’s mark fails to produce a domain name distinct f rom the complainant’s mark. Therefore, the addition of the terms “jet” and “net” to the Complainant’s famous AMERICAN AIRLINES mark does not distinguish the disputed domain name but instead actually increases the likelihood of confusion.

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The Respondent has no rights or legitimate interests in respect of the disputed domain name.

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 of fering of goods or services, and has not been authorized, licensed, or otherwise permitted by the Complainant to register and/or use the disputed domain name. The Respondent has never operated any bona fide or legitimate business under the disputed domain name, and is not making a noncommercial or fair use of the disputed domain name. Instead, the

Respondent is using the disputed domain name to divert Internet traf f ic to a website that contains PPC or af f iliate advertising links which presumably generate revenue to the Respondent. Furthermore, to the Complainant’s knowledge, there are no prior trademark applications or registrations in the name of the Respondent for any mark incorporating the Complainant’s marks.

The disputed domain name was registered and is being used in bad faith.

The mere fact that the Respondent has registered a domain name that incorporates the famous AMERICAN and AMERICAN AIRLINES marks of the largest airline in the world is alone suf f icient to give rise to an inference of bad faith. In addition, the Respondent had constructive knowledge of the AMERICAN and AMERICAN AIRLINES marks because of the Complainant’s trademark registrations. The Respondent is using the disputed domain name to intentionally attract Internet users and obtaining commercial gain through a PPC advertising scheme, causing disruption of the Complainant’s business and creating a likelihood of confusion regarding source, sponsorship, affiliation, or endorsement. Also, the disputed domain name has active MX records, which indicate potential use for email, a likelihood of additional bad faith use of the disputed domain name to engage in fraudulent email or phishing communications. The Respondent used a proxy service to register the disputed domain name, shielding its identity and eluding enforcement efforts by the legitimate trademark owner. 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 bad faith registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3. the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel has no doubt that “american airlines” is a term directly connected with the Complainant’s well-known commercial aviation services.

Annexes 9 and 10 to the Complaint show trademark registrations for AMERICAN AIRLINES obtained by the

Complainant as early as in 1949.

The trademark AMERICAN AIRLINES is wholly encompassed within the disputed domain name.

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The disputed domain name differs from the Complainant’s trademark AMERICAN AIRLINES merely by the addition of the term “jetnet”, as well as of the gTLD extension “.com”.

Previous UDRP decisions have found that the mere addition of terms to a trademark in a domain name (such as “jet” or “net”) does not prevent a finding of confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Question, Third Edition (“WIPO Overview 3.0”), section 1.8.

It is already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel f inds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisf ied the f irst element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use

the domain name in connection with a bona fide of fering of goods or services; or

(ii) the respondent has been commonly known by the domain name; 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 at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel f inds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the warning message displayed when trying to access the disputed domain name

suggests that the disputed domain name has been used in connection with a f raudulent phishing scheme or with the dissemination of computer virus. Moreover, as evidenced in the Complaint, the disputed domain name has resolved to a PPC site with some links relating to the Complainant’s operations in the travel industry, reflecting the Respondent’s intent to commercialize the disputed domain name via the well-known status and reputation of the Complainant’s trademark, which cannot constitute fair use. WIPO Overview 3.0, section 2.9.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why the specif ic term

“americanairlinesjetnet” was chosen to compose the disputed domain name.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

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the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration
in excess of documented out-of -pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark f rom reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent in 2023, the trademark AMERICAN

AIRLINES was already well known and directly connected to the Complainant’s air carrier services.

The disputed domain name encompasses the trademark AMERICAN AIRLINES.

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 to a famous or widely known trademark by an unaf f iliated entity can by itself create a presumption of bad faith.

The addition of the terms “jet” and “net” even enhances the risk of confusion in the present case, as they relate to air travel and the Internet, respectively.

Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the adoption of the disputed domain name was a mere coincidence.

Currently, no active website is linked to the disputed domain name, but this does not prevent the Panel’s f indings that the disputed domain name is also being used in bad faith.

In the Panel’s view, the circumstances of this case, including:

(a) the Respondent not presently using the disputed domain name; case.

(b) the Respondent not indicating any intention to use the disputed domain name;
(c) the Respondent not providing justifications for the registration of a domain name containing a third-party
famous trademark;
(d) the evidence that the disputed domain name has been used in connection with sponsored PPC links, and
has most recently reflected warnings regarding potential fraudulent phishing scheme or computer malware;
and
(e) the lack of any plausible good faith reason for the adoption of the term “americanairlinesjetnet” by the

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisf ied 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 <americanairlinesjetnet.com> be transferred to the Complainant.

/Rodrigo Azevedo/
Rodrigo Azevedo
Sole Panelist
Date: November 27, 2023