WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The American Automobile Association, Inc. v. Contractor Services Company, Inc. Case No. D2009-0192 1. The Parties
Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by the law firm Covington & Burling LLP, United States of America.
Respondent is Contractor Services Company, Inc. of Sacramento, California, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2009. On February 13, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On February 13, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 February 17, 2009 the Center received an informal email communication from Respondent stating: “Can I just settle this dispute in ant way?” The Center in response suggested that Complainant consider requesting suspension of the proceedings to explore settlement of the dispute, and gave the parties until February 20, 2009 to pursue settlement, after which date the Center would proceed with the Notification of the Complaint if it had not heard from the parties.
On February 20, 2009, Complainant informed the Center that the parties were unable to reach a settlement of the matter and requested that proceedings commence.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 23, 2009. In accordance with the Rules, paragraph 5(a), the Response was due March 15, 2009. Respondent did not submit any Response. Accordingly the Center informed Respondent that the due date for filing of a Response had lapsed, that the Center would proceed with the appointment of an administrative Panel, and that any consideration or other action in respect to any late submission of Response would be left to the discretion of the Panel on appointment. No Response was filed, timely or otherwise.
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 26, 2009. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding.1 The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On April 1, 2009, the Panel issued Procedural Order No. 1, requesting certain additional information from each party. 4. Factual Background
The American Automobile Association, Inc. has provided a broad variety of goods and services relating to automobiles and automotive traffic of the parties in the United States for over a century: insurance, warranty, educational services and products, travel assistance, and the like. Better known by its initials “AAA” or “Triple-A,” Complainant holds many United States of America and other national trademarks for many of its products. Among its marks registered in the United States Patent and Trademark Office (USPTO) are AAA, AAA APPROVED, AAA RATED, and AAA APPROVED AUTO REPAIR. Complainant's USPTO-registered trademarks date back to 1933 and in the Complaint Complainant states that it has used some AAA marks since as early as 1902.
Respondent registered the disputed domain names in 2003. Included with the Complaint are screen shots of Respondent's three websites taken early in 2009. Each is a parking page with an automotive photograph at the top, sponsored listings for automotive insurance and other automotive-related products and services, and additional hyperlinks to non-automotive related topics frequently found on click-through websites. In small type on each of these web pages is a statement that “This domain is listed for sale for $10,000 [in one case, $5000] at GoDaddy,” with hyperlinks to pursue a possible purchase.
Complainant initiated communications (by certified mail and electronic mail) with Respondent in late January 2008, advancing many of the arguments asserted in this proceeding, requesting that Respondent cease all further use of one of the disputed domain names and “of any other confusingly similar domain name or mark,” and requesting transfer of this disputed domain name to Complainant.2 Respondent replied by email, stating that the disputed domain name in question “does not violate any trademark and we do not use AAA as a method or means of advertising.” In this letter Respondent further states “American Allied Alumni Association's Unitied [sic] Trade Organization School is in no way connected to [Complainant] and in no way uses [Complainant's] mark. You certainly are welcome to make an offer to purchase the domain if you feel it would serve the needs of your client.”
The Panel's own examination of the websites at the disputed domain names revealed that at the head of a category entitled “Sponsored Listings:” was: “Official Site AAA.com,” with a hyperlink to what appears to be a website operated by Complainant. In Procedural Order No. 1 the Panel requested, inter alia:
“1. Complainant is requested to advise the Panel if it has at any time (a) sponsored a listing on any website owned by Respondent, or (b) authorized Go D, the registrar for the disputed domain names, to post a sponsored listing on parking pages hosted by Go D. If the answer to either of these questions is anything other than an unqualified negative, Complainant is requested to provide a brief (not to exceed one page) description of its arrangement with Respondent or Go D, as the case may be.
2. Respondent is requested to advise the Panel if (a) at any time it had any agreement (of whatever nature) with Complainant, and (b) if not, by what authority was the “Sponsored Link” to Complainant's website included on Respondent's website. If Respondent answers question (a) with anything other than an unqualified negative, Respondent is requested to provide a brief (not to exceed one page) description of its arrangement with Complainant.”
Complainant responded on April 7, 2009, stating:
1(a) Complainant is requested to advise the Panel if it has at any time sponsored a listing on any website owned by Respondent.
AAA has never authorized or directly sponsored a listing on any website owned by Respondent.
1(b). Complainant is requested to advise the Panel if it has at any time authorized Go D, the registrar for the disputed domain names, to post a sponsored listing on parking pages hosted by Go D.
AAA has never directly authorized Go D to post any sponsored listings on parking pages hosted by Go D.
Although sponsored listings to AAA's official website, “”, have appeared on the Go D parking pages associated with the [disputed] domain names [] AAA has no contractual or other arrangement with Go D concerning these or any of sponsored listings. AAA believes, but has been unable to confirm in the time provided, that these sponsored listings may have appeared as the result of AAA's contractual relationship with a digital marketing agency, which in turn contracts with leading search engines to place sponsored listings for AAA on websites. AAA believes, but cannot itself confirm, that one or more of these search engines may themselves have agreements with Go D allowing them to post their customers' sponsored listings, including those of AAA, on parking pages hosted by Go D.
Respondent made no submission in response to the Procedural Order. 5. Parties' Contentions A. Complainant contends as follows
Complainant has USPTO-registered marks that contain as their dominant feature the letter combination AAA, and all three disputed domain names begin with that letter combination, making confusion likely. Under well-established Policy precedent, the addition of other common words to an enforceable mark does not obviate confusion. When as here the words chosen by Respondent relate to or hint at services provided by Complainant, confusion is even more likely.
Complainant has never authorized Respondent to use its marks. There is no evidence that Respondent has ever been commonly known by the names it chose when it registered the disputed domain names. Respondent has never used the disputed domain names for an active website. Even several years of use merely as click-through sites do not confer upon Respondent a right or legitimate interest in the disputed domain names. The facts of this case indicate rather that Respondent selected the disputed domain names to take advantage of Complainant and the goodwill attached to Complainant's AAA marks, by attracting Internet users seeking Complainant. Respondent's holding the disputed domain names out for sale is further evidence that all use has not been legitimate.
The matters set forth in the preceding paragraph similarly indicate that Respondent registered and has used the disputed domain names in bad faith, to attract Internet users to its commercial sites using the renown attached to Complainant's marks. In its correspondence with Complainant, Respondent has acknowledged that it knew of Complainant and its marks when it registered the disputed domain names, further evidence of registration in bad faith. Prominent and continuous offers to sell the disputed domain names for amounts considerably in excess of registration costs also establishes registration and use in bad faith. B. Respondent did not reply to Complainant's contentions 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has held many USPTO-registered marks for decades, and has used those marks extensively in commerce during that period. As the dominant feature of the disputed domain names is the three letter combination AAA, those domain names are confusingly similar to Complainant's marks. Complainant has established the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has never authorized Respondent to use its marks, and nothing in the record indicates that Respondent has been commonly known by any of the disputed domain names. Respondent's websites maintained at the disputed domain names are wholly commercial. The only possible basis for a defense revealed by the record is Respondent's reference, in his email reply to Complainant's cease and desist letter, to a trade school operated by something called the American Allied Alumni Association. Complainant's evidence and the Panel's research found no evidence that such an association or its trade school exists. Even if the Panel were to accept Respondent's assertion that it existed in 2008, that fact alone would not provide Respondent a defense under paragraph (4)(c)(ii) of the Policy. That section requires that Respondent be commonly known by the disputed domain name, and being commonly known by a particular name requires corroborating evidence (of, for example, that American Allied Alumni Association is an operating entity that regularly uses the three-letter abbreviation AAA). The record in this proceeding contains no such evidence. To the contrary, the evidence is classic indicia of cyber squatting: click through revenues to Respondent generated by links on websites prominently featuring Complainant's marks and an ongoing offer for sale of each of the disputed domain names to the general public.
Respondent has owned these marks for more than five years, and the Wayback machine indicates that it began using them as active websites shortly after registration. While there is no estoppel or laches defense available under the Policy, in some circumstances continuous use can provide a defense under paragraph 4(c)(i) or 4(c)(ii) of the Policy. See, e.g., Authorize.Net LLC v. Cardservice High Sierra,WIPO Case No. D2008-0760. Not in this proceeding, however. Given the longtime use and wide recognition of Complainant's marks and Respondent's use of the disputed domain names for links to automotive-related goods and services, Respondent from the start actively took advantage of Complainant's marks for commercial purposes, and from the start openly offered the disputed domain names for sale. Such use is not legitimated merely by Complainant's silence; there must be some showing of acquiescence.
The Panel issued Procedural Order No. 1 to determine whether any action taken by Complainant might constitute or be evidence of direct or indirect acquiescence. Complainant flatly denies any direct permission, to the registrar or Respondent, to include a hyperlink to any website controlled by Complainant. The question is therefore whether Complainant's agreements with “a digital marketing agency,” which may have contracted with the registrar for placement of sponsored listings on unspecified websites, constitute acquiescence. A mark owner's acts to promote widespread use of sponsored links, even only on the basis of a general agreement with a third party, might raise questions of permission or acquiescence. Just as a domain name owner is responsible under the Policy for links on its site selected by its registrar or other agent or by “random” software, a mark owner might be held to have consented to a link activated through agreements with marketers or registrars even if the link wound up on a cybersquatter's website.
On the record in this case the Panel readily concludes that such permission or acquiescence should not be implied. This is so principally because the sponsored link first appeared (as far as can be ascertained) only in the last month or two, and likely only after commencement of these proceedings. There is no indication that Complainant actively sought to increase its advertising exposure by broadside permission to include hyperlinks on parked pages; likewise, there is no indication that Respondent's five-year use has caused third parties to rely upon Respondent's sites for the goods or services that are available by clicking through from those sites. Finally, Respondent is, by agreement with its registrar and under ordinary agency principles, responsible for its websites' content, and it is thus for Respondent to demonstrate permission, which it has not done.
Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The facts recited and the reasons given in part B. above indicate obvious bad faith in registering and using the disputed domain names. Respondent in its reply to Complainant acknowledged its awareness of Complainant and its marks. All use of the disputed domain names shown by the record has included prominent automotive references. The most prominent hyperlinks (other than the one the Complainant itself) are to Complainant's competitors, and Respondent, both on its websites and in its email communications with Complainant, has continuously and publicly offered the disputed domain names for sale. Complainant has demonstrated bad faith as required by 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 names , , and be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Dated: April 8, 2009
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