WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The American Automobile Association, Inc. v. PSI Case No. D2008-1931 1. The Parties
The Complainant is The American Automobile Association, Inc., of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
The Respondent is PSI, of Ellisville, Missouri, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2008. On December 18, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 18, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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”).
On December 18, 2008 the Complainant transmitted an email communication from the Respondent to the Center dated December 17, 2008 stating that “We are not using it. I had offered to release upon payment for the domain. What would you like to do?” The Center notified the parties that a suspension of the proceedings could be requested in the event they were interested in negotiating a settlement. On December 19, 2008, the Complainant submitted a request for temporary suspension of proceedings. The Respondent by email communication subsequently indicated that as the Complainant had refused the Respondent's offer to transfer the domain name for $500.00, the offer had been withdrawn and the Respondent was prepared to “let WIPO take its course”. The Complainant then requested that the proceedings be reinstituted.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2009. The Respondent did not submit a formal Response. Accordingly, the Center advised the Respondent that the Center would proceed with the appointment of an administrative panel and the consideration or otherwise of any late submission of Response would be left to the discretion of the Panel on appointment.
The Center appointed William R. Towns as the sole panelist in this matter on January 23, 2009. 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 the owner of numerous valid and subsisting national registrations for the mark AAA in the United States and other countries around the world. The Complainant's AAA marks have become widely recognized in the United States and abroad in relation to the Complainant's automobile, travel, financial and insurance related products and services. See, e.g., American Automobile Association v. Nevis Domains LLC,WIPO Case No. D2006-0489.
The Respondent registered the disputed domain name on July 12, 2006. The disputed domain name resolves to a parking website containing advertising links to the Complainant's official website as well as third parties websites offering automobile, travel, financial and insurance related products and services, some of which compete directly with those of the Complainant.
The record reflects that the Complainant, through its legal counsel, sent the Respondent a cease and desist letter on October 31, 2007, demanding the transfer of the disputed domain name. In reply, the Respondent offered to sell the disputed domain name to the Complainant. On July 16, 2008, the Complainant's counsel sent a second notice letter demanding the transfer of the disputed domain name, to which the Respondent replied by offering to transfer the disputed domain name for payment of USD500.00, indicating that otherwise the domain name would remain parked.
The Complainant thereafter commenced this proceeding under the Policy seeking to obtain the transfer of the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant asserts that it is the exclusive owner of federal registrations and common law rights in the AAA mark for use in connection with a variety of goods and services, including automobiles sales and services, travel, customer rewards, and discount products and services. According to the Complainant, its AAA mark is widely recognized by the relevant segment of the public and has acquired significant goodwill as identifying the Complainant's products and services. The Complainant states that it has used the mark in commerce since 1902.
The Complainant contends that the disputed domain name is confusingly similar to its AAA mark, since the disputed domain name incorporates the entirety of the Complainant's mark, and that the additional generic or descriptive terms have an obvious relationship to the Complainant's business. The Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant maintains that the Respondent has not been authorized to use the Complainant's AAA mark, and that the Respondent is not commonly known by the disputed domain name. The Complainant contends that the Respondent is not making any legitimate commercial or noncommercial use of the disputed domain name, but instead registered the disputed domain name in a bad faith attempt to profit from selling the disputed domain name, and that the Respondent is using the disputed domain name in bad faith to attract Internet visitors to a pay-per-click parking website with links to the services and products of the Complainant's direct competitors. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's AAA mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. Prior panels have recognized that confusing similarity is generally established for purposes of the Policy where the dispute domain name incorporates the complainant's trademark in its entirety. The additional term “auto rewards”, which calls to mind the Complainant's business, does not dispel such confusing similarity, and in all likelihood heightens the confusion. See, e.g., American Automobile Association v. Nevis Domains LLC, supra ( confusingly similar to Complainant's AAA mark for automotive services).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of proof shifts to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name e.g. as under paragraph 4(c) of the Policy. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent is not authorized to use the Complainant's AAA mark or to appropriate the mark for use with domain names. The Respondent, both before and after receiving notice of this dispute, has used the disputed domain name to divert Internet users to a parked website featuring advertising links to websites offering automobile, insurance, and travel related goods or services that compete with those of the Complainant. The Respondent further refused to transfer the disputed domain name to the Complainant unless the Complainant paid the sum of USD500.00.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; 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 or service mark at issue.
The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy.
There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name. Under the circumstances of this case, the Respondent cannot credibly claim to be making a legitimate noncommercial or fair use of the domain name within the contemplation of paragraph 4(c)(iii) of the Policy. See Coventa Energy Corporation v. Anthony Mitchell,WIPO Case No. D2007-0185 (respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy).
On the basis of the record in this case, there is no plausible basis on which it could be said that the Respondent has been or is using the disputed domain name in connection with any bona fide offering of goods or services. The use of a domain name incorporating the Complainant's AAA mark to attract Internet users to a pay-per-click website containing links to other providers of competing products and services does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor does the offering of the disputed domain name for sale, under the circumstances of this case, fall within this safe harbor provision. To the contrary, as discussed below, such behavior is an indication of the Respondent's bad faith intent to profit from and exploit the Complainant's mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
The circumstances of this case as reflected in the record convincingly demonstrate the Respondent's bad faith registration and use of the disputed domain name. It is a reasonable inference from the circumstances of this case that the Respondent knew of and had in mind the Complainant and the Complainant's AAA mark when registering the disputed domain name. The record reflects the Respondent's use of the disputed domain name to attract Internet users to a website featuring advertising links to providers of automobile and travel related goods and services that compete with those of the Complainant. Further, the record reflects that the Respondent attempted to sell the disputed domain name to the Complainant for an amount that appears to be in excess of the reasonable out-of-pocket expenses directly related to the disputed domain name. In the absence of any evidence to the contrary being offered by the Respondent, such circumstances manifest the Respondent's bad faith intent to profit from and exploit the Complainant's AAA mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: February 6, 2009
1 Some panels have held that a respondent's lack of response in particular circumstances can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403.
Full & Egal Universal Law Academy