By Paul Keating, Esq.
I enjoy puzzles but I simply could not understand Houston Putnam Lowry’s logic in American Airlines, Inc. v. MegaWeb.com Inc. (http://domains.adrforum.com/domains/decisions/1305263.htm). I can only conclude that Mr. Lowry had a bad day. Mr. Lowry correctly (IMO) found that the domain name was neither identical nor confusingly similar to American Airlines.
However, he then goes on to find that the use (PPC) was not legitimate and that the domain was both registered and used in bad faith. The panelist found that the PPC page – showing links to (god forbid) competitors of AA as well as to AA, was neither bonafide nor fair use under Policy 4(c)(i) or (ii). Unless Mr. Lowry is asserting the opinion that PPC is never legitimate, his conclusion on legitimate use strikes me as (more than) somewhat odd. Absent a conflicting trademark it is difficult to see how PPC links to other airlines could be anything but legitimate.
The even more puzzling part of the opinion is the discussion on bad faith. Here are some of the “findings”:
“Respondent uses the <americanairways.com> domain name to resolve to a website containing hyperlinks to Complainant’s competitors in the air transportation industry. Complainant alleges Internet users interested in using Complainant’s air transportation services may use a competitor’s air transportation service instead because of Respondent’s use of the confusingly similar disputed domain name. Respondent’s use of the <americanairways.com> domain name disrupts Complainant’s air transportation business. The Panel finds Respondent’s actions constitute bad faith registration and use under Policy ¶4(b)(iii).”
But wait, it gets better:
“Complainant contends Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the AMERICAN AIRLINES mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, this Panel finds Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii) because of the famous nature of Complainant’s marks. “
So, now we have a panelist who is presumably with a straight face arguing that notwithstanding the absence of a conflict as between the mark and the domain, it is nevertheless bad faith registration and use if you use that non-conflicting domain to show links that are competitive with the complainant? And, how can the following 2 sentences be reconciled:
“While the word “airways” is a synonym for “airlines,” the two are not sufficiently close to be confusingly similar to the average consumer.”
“Respondent’s use of the <americanairways.com> domain name disrupts Complainant’s air transportation business.”
While I have no doubt that the respondent knew of AA when it registered the domain, such evidence is irrelevant absent a finding that the domain conflicts with the mark.
All of us are entitled to a bad day. However, the UDRP is supposed to be a serious process with checks and balances. I truly hope that Mr. Lowry takes a look at what he has written and issues an appropriate correction. Either that or ICANN should start requiring examinations and continuing education for panelists. Or perhaps Mr. Lowry merely made the error of relying on the NAF clerk-ghost-writer, if one believes that goes on over there.
Barcelona, April 2010