A one member UDRP panel has awarded the 12 year old domain name americanconnection.com to American Airlines (AA)
The domain holder who is a Canadian Citizen and resident registered the domain name on June 19, 2001.
Complainant is American Airlines, Inc. of Fort Worth, TX, USA. Complainant is the owner of the USPTO registered mark AMERICAN CONNECTION which it claims to have been using at least as early as September 24, 1997 and which was registered on October 27, 1998. AMERICAN CONNECTION is one of the many marks owned by Complainant that Complainant uses primarily in connection with providing flight transportation and cargo services for the general public.
Complainant contends that it is engaged in the business of air transportation and related goods and services and is one of the world’s largest airlines. Complainant argues that it is the owner of a trademark registration with the USPTO for the AMERICAN CONNECTION mark
The Panel notes that while Respondent appears to reside within Canada, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides, so long as it establishes its rights in the mark in some jurisdiction.
Complainant asserts that Respondent’s disputed domain name americanconnection.com is confusingly similar to Complainant’s AMERICAN CONNECTION mark because the domain name incorporates the entire mark merely eliminating the space between the terms of the mark and then adding the gTLD “.com.”
The Panel here finds that Respondent’s
Rights or Legitimate Interests
Complainant claims that Respondent’s website at the
Complainant asserts that some of the websites include those of Complainant’s direct competitors such as “British Airways” and “Alaska Airlines.”
Complainant contends that when the user clicks on the link that is purported to be for “British Airways,” a webpage surfaces that displays another set of links with the title “Ads related to British Airways” at the top. Prior panels have held that a respondent’s use of a domain name to link to competing advertising is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel here finds that Respondent is not using the
Complainant alleges that Respondent is using the
Complainant argues that Respondent is using this confusingly similar domain name to mislead Internet users looking for Complainant’s travel services.
Respondent claims that it has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Respondent argues that the links displayed on the disputed domain name were not selected by Respondent. Respondent contends that the domain name is merely parked with a parking provider and Respondent is using the parking provider’s name servers. Respondent asserts that it is because Complainant was in another country when it visited the website that the links were about airlines, and that Respondent had no way of knowing what links were displayed at different countries around the world. Respondent argues that “This site is simply parked and waiting for me to one day develop it into a dating website.”
The Panel notes that Respondent does not deny the fact that links featuring competitors of the Complainant are present but instead seeks to shift the responsibility for them to a third party parking service.
The Panel finds that Respondent is primarily and ultimately responsible for the content reflected on the site to which the domain name resolves whether Respondent is consciously aware of the presence of competitors links or has hired a third party who is directly involved in generating the links.
The Panel finds that Respondent is passing itself off as Complainant, and therefore not using the disputed domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(ii) legitimate noncommercial or fair use.
Respondent argues that its intention was building a website for Canadians and Americans to connect with one another. Respondent elsewhere asserts that Complainant has not provided a single piece of evidence of revenue, operations, destinations, fleet, statistics, advertising revenue, or advertising samples or anything that could prove that the AMERICAN CONNECTION mark is still being used.
Respondent apparently has misread such a requirement burdening only Complainants into the UDRP proceeding.
Complainant has in fact provided evidence of a current valid trademark registration and proof of its mark’s usage on its websites. A mere allegation of nonuse by Respondent is insufficient to prove a mark has been abandoned. Ironically Respondent has not provided any like information to support its claimed intent of usage for
Respondent argues that it has not registered the domain name
Complainant’s claimed date of first use and date of registration both predate Respondent’s registration of the disputed domain name. Respondent points to nothing coming directly from Complainant indicating that Complainant had decided to, is presently considering or even wishes to abandon its mark. Discontinuing or reducing the scope of services associated with a mark does not automatically constitute abandonment of the attendant mark.
Respondent contends that the
However, Respondent has provided no proof that it registered or has ever used the domain name in accord with the common meaning of the terms. Respondent has shown no use of the domain name except for its assertion of parking it, which has allowed others to generate links associated with Complainants competitors. Thus, Respondent’s usage, despite its limits, has reflected an association of the terms with the same meaning that the public associates the terms with Complainant’s mark.
Doctrine of Laches
The Panel notes that the doctrine of laches generally is not applied as a defense in UDRP proceedings.
The Panel agrees that a judicial venue is best for legal arguments directed at the continuing validity of a protected mark.
However, the Panel recognizes that while the UDRP proceeding is nominally administrative in nature, the relief granted is effectively equitable and finds support for addressing the potential applicability of the equitable defense of laches regarding the viability of a domain name registration.
Numerous panels have addressed laches specifically or relatedly by analyzing the effect of the passage of time on the parties respective claims.
The facts here do not warrant the application of the laches doctrine nor any negative inference as a result of the time frame relative to Complainant’s filing of the UDRP.
This is not a situation where the Complainant claimed to use its mark, but failed to register its rights, until after the Respondent built a substantial web presence and business through use of an identical domain name.
This is not a situation where the Respondent, through a diligent investigation prior to registration of its domain name, would have been unable to find the previously registered mark of the Complainant.
Respondent’s mere assertion of good intentions for the past twelve years and the unlimited future, while currently being responsible for the limited use of the domain name resolving to a website that benefits Complainant’s competitors, is sufficient for a finding of registration and use in bad faith despite the time gaps between the parties past interactions.