WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Airlines, Inc. v. Nguyễn Văn Lư
Case No. D2021-4102
1. The Parties
The Complainant is American Airlines, Inc., United States of America (“U.S.”), represented by Greenberg Traurig, LLP, U.S.
The Respondent is Nguyễn Văn Lư, Vietnam.
2. The Domain Name and Registrar
The Disputed Domain Name <refundsaa.com> is registered with April Sea Information Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On December 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 13, 2021, 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 December 15, 2021, 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 also on December 15, 2021.
On December 15, 2021, the Center transmitted another email communication to the Parties in English and Vietnamese, indicating that the Language of the Registration Agreement was Vietnamese. On December 15, 2021, the Complainant requested the Language of the Proceeding be English. No communication was received from the Respondent regarding this matter.
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 in English and in Vietnamese the Respondent of the Complaint, and the proceedings commenced on December 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2022. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 12, 2022.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on January 19, 2022. 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, American Airlines, Inc., is one of the largest air carriers in the world and enjoys a reputation in the U.S. and internationally as a premier airline for business and leisure travelers. According to the Complainant, prior to the COVID-19 pandemic, the Complainant and its affiliates served over 350 destinations in over 50 countries, with nearly 7,000 daily flights.
The Complainant’s trademarks AA and AMERICAN AIRLINES, alone or in combinations with other words and designs, have been registered for goods/services in many classes, including class 39 for air transportation services, in a variety of countries under a number of trademark registrations, including but not limited to the U.S. trademark Nos. 514292 for AA and 2339639 for AA.COM, registered on August 23, 1949 and April 11, 2000 respectively; and the Vietnamese trademark No. 14145 for AMERICAN AIRLINES, registered on November 7, 1994. Further, the Complainant has widely used the trademarks AA for air travel and transportation services, among many others goods and services, and gained certain reputation.
Additionally, the Complainant is the registrant of the domain name <aa.com>, registered on January 2, 1998, which features the trademarks AA. According to SimilarWeb, the website under the Complainant’s domain name <aa.com> has been ranked the number one website in the world in the air travel category. Furthermore, the Complainant provides a website dedicated to requesting refunds at “www.prefunds.aa.com”, at which customers can submit a request for refunds for cancelled flight reservations.
The Disputed Domain Name was registered on August 10, 2004. As of the date of this Decision, the Disputed Domain Name still resolves to a parking page containing sponsored pay-per-click (PPC) links to various third parties’ websites, including some associated with air transportation services.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
First, the Complainant contends that the Complainant is the registered owner of trademark registrations in numerous jurisdictions, including Vietnam, where the Respondent is purportedly located. Further, previous Panels have recognized that the Complainant’s AA Marks are well-known worldwide (see, e.g., American Airlines, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-1093).
Second, the Complainant contends that the Disputed Domain Name is confusingly similar to the trademarks AA owned by the Complainant by arguing that:
- The Disputed Domain Name reproduces entirely the registered trademarks AA of the Complainant;
- The addition of the word “refunds”, which is associated with the Complainant’s services of providing refunds for cancelled airline flights, could not dispel any confusing similarity. On the contrary, this term increases the likelihood of confusion between the trademarks AA and the Disputed Domain Name. Moreover, the Disputed Domain Name is virtually identical to the domain name and subdomain that the Complainant uses for its website in which customers may request refunds for cancelled flights at “www.prefunds.aa.com”; and
- The addition of the generic Top-Level Domain (“gTLD”) “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
First, the Complainant submits that the Respondent is not commonly known by the Disputed Domain Name since the Respondent’s name is “Thuỷ Tùng”, and there are no prior trademark applications or registrations in the name of the Respondent for any mark incorporating the Complainant’s trademarks AA anywhere in the world.
Second, the Complainant contends that the Respondent is using the Disputed Domain Name to divert Internet traffic to its website that contains PPC or affiliate advertising links competitive with the Complainant, including links that contain the Complainant’s trademarks, such as AMERICAN AIRLINES. Thus, the Respondent has never operated any bona fide or legitimate business under the Disputed Domain Name, and is not making a protected noncommercial or fair use of the Disputed Domain Name.
Finally, the Complainant submits that it has not authorized, licensed, or consented to the Respondent’s registration and use of domain names incorporating the Complainant’s AA trademarks or any confusingly similar variation thereof. Further, the Respondent is not in any way associated with, or authorized by, the Complainant in connection with the Complainant’s trademarks and the Complainant’s services. As such, the Respondent’s use of the Disputed Domain Name, to confuse and deceive website visitors regarding an affiliation with the Complainant for commercial gain, cannot be called fair or legitimate.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
First, the Complainant argues that the Respondent is using the confusingly similar Disputed Domain Name to intentionally attract Internet users to the Respondent’s websites and PPC advertising links for the purposes of commercial gain, causing disruption of the Complainant’s business and creating a likelihood of confusion regarding source, sponsorship, affiliation, or endorsement. Therefore, this conduct demonstrates bad faith registration and use on the part of the Respondent.
Second, the Complainant contends that the fact that the Respondent has registered the Disputed Domain Name which incorporates the Complainant’s famous trademarks AA is alone sufficient to give rise to an inference of bad faith.
Third, the Complainant argues that, in addition to the Respondent’s obvious actual and inferred knowledge of the Complainant’s AA trademarks, the Respondent had constructive knowledge of the AA trademarks because of the Complainant’s trademark registrations. This supports findings of bad-faith registration and use of the Disputed Domain Name.
Finally, the Complainant contends that there is no any use of the Complainant’s trademarks AA in connection with travel reservation services, flight reservation refund services, or any other transportation services, other than in connection with the Complainant. Also, the Disputed Domain Name is so obviously connected with the Complainant and its services provided under the Complainant’s famous trademarks. Thus, the Respondent’s use of the Disputed Domain Name, with no connection to the Complainant, establishes an inference of Respondent’s prior knowledge of Complainant’s trademarks and opportunistic bad faith.
With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Issues
(i) The Respondent’s Identity
The Panel notes that at the time the Complaint was filed on December 7, 2021, the Respondent was identified as “REDACTED FOR PRIVACY”. On December 13, 2021, the Registrar transmitted by email to the Center, disclosing the underlying registrant as “Nguyễn Văn Lư” in their verification response to the request of the Center. However, further in the Registrar’s response, the Registrar provided the answer “thủy tùng”.
The Center sent an email communication to the Complainant on December 15, 2021, providing the information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. On December 15, 2021, the Complainant filed an amended Complaint, adding “Thủy Tùng, Nguyễn Văn Lư” as the underlying registrant, as provided by the Center. The Panel accepts the amended Complaint filed by the Complainant and will treat ““Nguyễn Văn Lư” as the Respondent for purposes of this proceeding.
(ii) Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement is Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated December 15, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding by December 18, 2021.
On December 15, 2021, the Complainant submitted a request that English be the language of the proceeding.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties' level of comfortability with each language, the expenses to be incurred, and the possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, an American entity, does not appear to be able to communicate in Vietnamese and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;
(ii) the English language is quite popular in Vietnam, where the Respondent appears to be located; the Disputed Domain Name and the website thereunder contain English content; this suggest that the Respondent has knowledge of the English language and would be able to communicate in English;
(iii) the Respondent did not object for English to be the language of the proceeding, and did not submit a Response in neither English nor Vietnamese.
Therefore, for the purpose of easy comprehension of the Complainant (ultimately, the party solely taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.
(iii) Delay in bringing the Complaint
The Panel finds that the Disputed Domain Name was registered on August 10, 2004, but the Complaint was not filed with the Center until December 7, 2021. In considering this delay of over 17 years in challenging the Respondent’s registration of the Disputed Domain Name, the Panel is of the same view as those in previous UDRP decisions mentioned in section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which held that “panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits”. However, similar to previous decisions, the Panel has taken into account this delay when considering the second and third elements requiring the Complainant to establish that the Respondent lacks rights or legitimate interests and that the Respondent has registered and used the Disputed Domain Name in bad faith (see, e.g., CeltonManx Limited v. Pham Dinh Nhut, WIPO Case No. D2014-0109).
(iv) The Respondent’s Failure to Respond
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to trademarks AA, well before the Disputed Domain Name was registered.
Second, the Disputed Domain Name comprises the Complainant’s AA trademarks, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademarks AA is the addition of the prefix “refunds”. In this regard, it is well established that the addition of a term to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said term does nothing to prevent the trademark from being recognizable in the Disputed Domain Name, nor to prevent confusing similarity, as it was found in previous UDRP decisions (see, e.g., Price Costco International, Inc. v. Huynh Van Duc, WIPO Case No. D2020-0321; Philip Morris Products S.A. v. Ong Nguyen Ngoc Ha, WIPO Case No. D2019-2509; Facebook, Inc. v. Domain Admin Privacy Protect, LLC (PrivacyProtect.org) / Do Viet Dung, WIPO Case No. D2019-1121).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s AA trademarks, and the first element of the Policy is established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.
The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainant, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted providing arguments or evidence to the contrary.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization in any kind to use the Complainant’s trademarks has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to “AA”. Thus, the Panel finds that the Respondent has no rights in the trademarks AA.
The Complainant has submitted relevant evidence showing that the Disputed Domain Name resolves to a parked page with PPC links that redirect Internet users to other online locations. In this regard, section 2.9 of the WIPO Overview 3.0 holds that “the 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”.
In this present case, the Panel finds that some of the PPC links on the website under the Disputed Domain Name are referring to air travel and transportation services of the Complainant’s competitors. Hence, in light of foregoing viewpoint and similarly to a number of well-established prior UDRP decisions, the Panel upholds that operating PPC parking page using a trademark and providing connection to goods and/or services competitive with the trademark owner, does not establish bona fide offering of goods or services (see, e.g., Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302; Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363).
Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name despite the long period since its registration. This finding is substantiated by the fact that there is no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Name. Therefore, it is not evidenced that the Respondent is identified by “refundsaa” or that the Respondent has any rights in it.
Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and is using the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s AA trademarks have been registered in a variety of jurisdictions around the world. In addition, the Complainant’s AA trademarks have been put in use for a long period of time and gained certain reputation in the sector of air travel and transportation services. The Complainant’s registrations of the trademarks AA and its domain name <aa.com> all predate the registration of the Disputed Domain Name.
The Disputed Domain Name comprises the Complainant’s AA trademarks in its entirety, the only difference between them is the prefix “refunds” which is evocative of the Complainant’s services of providing refunds for cancelled airline flights. Given the extensive use of the AA trademarks for air travel and transportation services by the Complainant, which occurs in numerous countries, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name (a parked page with some PPC links referring to air travel and transportation services of the Complainant’s competitors as well as the Complainant’s trademark.), the Panel is of the view that the Respondent obviously knew of the Complainant and its AA trademarks before the registration of the Disputed Domain Name, and the Panel considers such registration is an attempt by the Respondent as to take advantage of the Complainant’s goodwill. The Panel’s finding is reinforced given the Complainant’s use of the website “www.prefunds.aa.com” for its above-mentioned refund services.
Further, in Section 6.C. above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the Panel’s view, registration of a domain name, in which a respondent has no rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the domain name, may be considered as bad faith.
On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is still resolving to the PPC parking page, where some of the PPC links are referring to the air travel and transportation services of the Complainant’s competitor and this PPC parking page contains the Complainant’s trademark AMERICAN AIRLINES. With all these facts and findings, the Panel finds that by using the Disputed Domain Name in this manner, the Respondent has intentionally attempted to attract Internet users to its website and generate income from such PPC links by creating a likelihood of confusion with the Complainant’s AA trademarks as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain.
In addition, the Panel finds that the Respondent, Nguyễn Văn Lư, was involved in a pattern of several cybersquatting cases of domain name disputes, namely, Thi Factory S.A. v. Vietnam Domain Privacy Services, Nguyễn Văn Lư, WIPO Case No. D2019-2596; Squarespace, Inc. v. April Sea Information Technology Company Ltd. / Nguyễn Văn Lư, WIPO Case No. D2019-3064; Skyscanner Limited v. Nguyễn Văn Lư, WIPO Case No. D2020-0672; xHamster IP Holdings Ltd v. Nguyễn Văn Lu, WIPO Case No. D2020-3163; CenterPoint Energy, Inc. v. Nguyễn Văn Lư, WIPO Case No. D2020-3300; Hillsong Church Inc. v. Nguyễn Văn Lư, WIPO Case No. D2021-0368.
Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b) of the Policy, and the third element under paragraph 4(a) of the Policy is established.
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 <refundsaa.com> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: February 2, 2022