WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The American Automobile Association, Inc. v. Rami Smair Case No. D2009-0294 1. The Parties
The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling LLP, United States of America.
The Respondent is Rami Smair of Gold Coast, Queensland, Australia, appearing pro se. 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 March 5, 2009. On March 6, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On March 7, 2009, 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2009. The Response was filed with the Center on March 30, 2009.
The Center appointed David Perkins as the sole panelist in this matter on April 7, 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.
On April 2, 2009 the Complainant requested leave to file a Supplemental Submission responsive to a number of assertions made in the Response and submitted a Supplemental Complaint.
On April 4, 2009 the Respondent asked the Center if he could in turn file a Supplemental Response if the Supplemental Complaint was admitted by the Panel.
On April 9, 2009 the Panel issued Procedural Order No. 1 whereunder the Supplemental Complaint was admitted and the Respondent was given until April 16, 2009 for filing a Supplemental Response in answer.
On April 16, 2009 the Respondent requested additional time to respond to the Supplemental Complaint owing to being incapacitated due to ill health. In response, the Panel extended the time for response to April 24, 2009.
On April 24, 2009 the Respondent duly filed a Supplemental Response. 4. Factual Background 4.A. The Complainant The AAA and its trademarks
4.A.1 The Complainant, the American Automobile Association, Inc was established in 1902. It is a not-for-profit federation of affiliated automobile clubs. It has 50 million members and provides a broad variety of offerings, including automotive, travel, credit, financial and insurance products and services. It is known as the AAA, pronounced “triple A”.
4.A.2 The Complainant is the proprietor of the following registered trademarks.
Country Reg. No. Mark Class(es) Dates of Application and Registration
United States of America (“United States” or “US”)
829265
AAA
35, 36, 37, 39, 41 and 42
Filed: October 22, 1965
Registered: May 23, 1967
United States of America
2158654
AAA and logo
16, 35 to 37, 39 and 42
Filed: March 25, 1997
Registered: May 19, 1998
United States of America
1568799
AAA GUARANTEED LIFE
36
Filed: March 16, 1989
Registered November 28, 1989
United States of America
1101726
AAA LIFE INSURANCE COMPANY
36
Filed: December 6, 1977
Registered: September 5, 1978
United States of America
2900596
AAA PREMIER
35 to 39, 42, 43, 45
Filed: May 15, 2002
Registered: November 2, 2004
United States of America
2935481
AAA PREMIER and logo
35 to 37, 39, 42, 43, 45
Filed: May 15, 2002 Registered: March 22, 2003
Canada
Mexico
Benelux
France
Germany
Italy
Norway
Spain
Switzerland
European Community
People's Republic of China
430671
763123
534982
93475,288
2086870
1042418
188636
1772071
534640
3821378
1103764
AAA
AAA
AAA
AAA
AAA
AAA
AAA
AAA
AAA
AAA
AAA
Additional particulars not given
4.A.3 The Complainant says that by virtue of its history and experience providing high quality products and services, its and its member clubs' continuous and extensive advertising, promotion and sale of such products under the AAA trademark, including on the Internet, the AAA mark has become valuable and famous in the United States and abroad. The Complainant maintains several websites on its nearly 100 domain names that include , , , . The domain name was registered on August 3, 1990.
4.A.4 The well-known status of the Complainant's AAA trademarks has been recognized in decisions under the Policy and in US District Court judgments. Those cited in the Complaint are, American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489, where the panel said:
“For many years, Complainant has invested substantial resources in extensive advertising campaigns and promotions of its products and services under the AAA Marks. The result is that the AAA Marks are widely recognized by consumers in the United States and abroad and they have acquired significant goodwill as identifying the products and services of Complainant and its local member clubs. Likewise, Complainant created and has operated its web sites, in part, to attract potential members and customers and to offer its products and services to them.”
The American Automobile Association, Inc v. AAA Insurance Agency, Inc, 618 F. Supp. 787, 790 (WD Tex. 1985)]
“AAA is a widely known organisation that has been extensively advertised and promoted throughout the United State. The AAA name has come to be relied upon by a significant segment of the public as indicating AAA and its services” and The American Automobile Association, Inc v. AAA Automobile Club of Queens, Inc, No. 97 CV1180, 1999 WL 97918 at (ED NY Feb 8, 1999).
“The AAA marks strongly indicates the source of the services provided and are therefore entitled to the greatest degree of protection under the Lanham Act.” Correspondence between the Parties
4.A.5 The three disputed domain names were registered on February 22, 2008. In August 2008 the Complainant became aware that the Respondent had registered one of those domain names, , which resolved to a pay-per-click advertising website providing links to the Complainant and to its competitors in the insurance field. On August 12, 2008 counsel for the Complainant sent a cease and desist letter to the Respondent requesting transfer of that domain name and any other confusingly similar domain names. The Respondent replied the same day by email rejecting the Complainant's assertions and concluding :
“We hereby invite you to initiate and suggest solutions that are reasonable and acceptable to both parties.”
Also, on the same day Counsel for the Complainant responded repeating the request that use of that disputed domain name cease forthwith and that the domain name should be transferred to the Complainant.
4.A.6 On August 25, 2008 the Respondent responded:
“We're inviting you to initiate and suggest solutions that are reasonable and acceptable to both parties. Are you seriously requesting that we provide you with the domain for free? Please offer serious suggestions, otherwise stop wasting our time.”
The same day counsel for the Complainant replied stating, inter alia,
“AAA has no interest in purchasing infringing domain names from you or any other infringer. To resolve this mater expeditiously, however, AAA may consider reimbursing you for your out-of-pocket costs for registering the domain name in exchange for your transferring it to AAA. We understand that Go Daddy's registration fee for one year, the relevant period here, is approximately $9.99.”
On September 8, 2008 the Respondent replied rejecting that proposal but offering to display a disclaimer on both its “developed domain page” and “parked domain page”.
4.A.7 At around this time the Complainant learned that the Respondent was also the registrant of the other two disputed domain names and replied the same day, drawing the Respondent's attention to US Court decisions that use of a mere disclaimer does not cure likelihood of confusion in cases of trademark infringement. The Complainant repeated its offer to reimburse the Respondent for his registration expenses associated with the three disputed domain names in consideration for transfer of those domain names. On September 11, 2008 the Respondent replied stating that its “related expenses” totalled USD900.00 and for payment of that amount the disputed domain names would be transferred.
4.A.8 The Complainant's answer of September 12, 2008 was that USD900.00 was excessive and USD30.00 seemed appropriate, subject to the Respondent providing credible documentation supporting a greater amount. The Respondent replied on September 22, 2008 continuing to deny any wrongdoing and repeating its offer to transfer for USD900.00, which offer would remain open until September 26, 2008. The same day the Complainant responded rejecting that offer, indicating that it would take “all necessary steps to protect its valuable trademarks”. 4.B. The Respondent
4.B.1 The Respondent states that he is part of the Australian Arab Community and that he purchased the three disputed domain names “for the sole purpose of providing a wide ranging insurance related information, advice, and tips to the Australian Arab community”. This so-called Australian Arab Action (AAA) initiative is, the Respondent says, purely for noncommercial purposes to benefit that community.
4.B.2 The Respondent concedes that the disputed domain names were parked at pay-per-click sites as “a standard practice for domains awaiting development and without any intention to get any significant revenue from such an action”. The Respondent says that when the Complainant put him on notice of its claims, he took steps to render all three disputed domain names inactive “as soon as practical”.
4.B.3 As to the correspondence with the Complainant summarized in paragraphs 4.A.5 to 4.A.8 above, the Respondent says that it was not he who initiated the suggestion of selling those domain names to the Complainant. His proposal of USD900.00 was made in response to the Complainant's offer of USD30.00 5. Parties' Contentions 5.A. Complainant Identical or Confusingly Similar
5.A.1 The Complainant's case is that the three disputed domain names are all confusingly similar in that they incorporate the well-known AAA trademark with the generic description “insurance” as the prefix in two instances and the suffix in the other.
5.A.2 The Complainant cites two decisions under the Policy where, in similar circumstances, the disputed domain names were held to be confusingly similar to its AAA trademark. They are:
American Automobile Association, Inc. v. Nevis Domains LLC, supra, where the disputed domain name was .
The American Automobile Association, Inc. v. Blue-Cove Interactive a/k/a Kristine Wolfe, NAF Case No. FA 1224407, where the disputed domain names were , , and .
5.A.3 The Complainant asserts that confusing similarity is all the more likely where the generic element of the disputed domain name describes a central aspect of the Complainant's business, in the present case the provision of insurance services. In that respect, the Complainant cites three decisions under the Policy. They are:
The American Automobile Association, Inc. v. PSI,WIPO Case No. D2008-1931, where the disputed domain name was
American Automobile Association Inc. v. Texas International Property Associates,WIPO Case No. D2007-0592, where the disputed domain name was ; and
American Automobile Association, Inc. v. Nevis Domains LLC, supra, where, as stated above, the disputed domain name was .
In the first and third of those cases, the disputed domain names related to the Complainant's AAA trademark for automotive services and in the second to its AAA trademark for maps. Rights or Legitimate Interests
5.A.4 First, the Complainant says that it has not licensed or otherwise authorized the Respondent to use its AAA trademark.
5.A.5 Second, the Complainant says there is no evidence that the Respondent can demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply on the facts of this case.
5.A.6 Third, in the absence of a license or authorization, the Respondent's use of the disputed domain name to resolve to a pay-per-click website linking to websites of the Complainant's competitors cannot give rise to bona fide or fair use of that domain name.
5.A.7 Fourth, the Complainant asserts that the Respondent's offer to sell the three disputed domain names for USD900.00, a sum considerably in excess of his out-of-pocket costs relating to those domain names is evidence that the Respondent registered those domain names with the purpose of profiting by selling them. The offer to sell a disputed domain name which is confusingly similar to a well-known trademark cannot, the Complainant says, constitute use of that domain name in connection with a bona fide offering of goods or services. The Complainant cites in that respect, Bayerische Motoren Werke AG v. Lucjan Niemiec,WIPO Case No. D2003-0240, where the disputed domain name was . Registered and Used in bad Faith
5.A.8 The Complainant's case is that the facts of this case fall within paragraph 4(b)(iv) of the Policy. This is for the following reasons.
5.A.9 First, the Complainant says that the three disputed domain names are clearly confusingly similar to its AAA trademark and as such are designed to take advantage of Internet users who search for information about the Complainant and its insurance services. From the identity of the competitors to which links are provided from the website to which the domain name resolved, it would appear that the Respondent was targeting US consumers. Furthermore, the Respondent's lack of rights or legitimate interests in the three disputed domain names is indicative of bad faith in the registration and use of those domain names.
5.A.10 Second, the passive holding of two of the disputed domain names, and , also constitutes bad faith having regard to the circumstances of this case: see, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
5.A.11 Third, the fact that the Respondent has discontinued bad faith use of the third disputed domain name, , as set out in paragraphs 4.A.5 and 5.A.6 above cannot avoid the prior bad faith use.
5.A.12 Fourth, The Complainant says that the Respondent cannot credibly have been unaware of the Complainant's well-known AAA trademark in February 2008 when the three disputed domain names were registered. Further, having been put on notice of the Complainant's prior registered trademark rights in AAA, the Respondent nevertheless subsequently chose to renew the three disputed domains on February 22, 2009 for an additional year. 5.B. Respondent
5.B.1 The essence of the Response is set out in paragraphs 4.B.1 to 4.B.3 above.
5.B.2 Further, the Respondent says that, although the Complainant's AAA trademark may be well-known in the United States, it is not known in his country of residence, Australia. Hence, he says that his purchase of the three disputed domain names was in good faith for use with his Australian Arab Action (AAA) initiative.
5.B.3 As to making commercial use of the domain name, the Respondent says that the click-through revenue he has received has been negligible.
5.B.4 As to his good faith registration and intention to use the disputed domain names in contravention of the Complainant's rights in the AAA trademark, the Respondent points to his removing the parked domain name from the offending website offering links to the Complainant's competitors in the insurance field.
5.B.5 The Respondent then asserts that his proposed future use of the three disputed domain names for his Australian Arab Action (AAA) initiative will not in any way harm the Complainant's business.
5.B.6 Finally, the Respondent reiterates that it was not he who initiated the offer to sell the disputed domain names to the Complainant, it was the Complainant who made the first offer to pay him out-of-pocket expenses relating to the domain names which the Complainant estimated at approximately USD30.00. 5.C. Complainant's Supplemental Submission
5.C.1 The Complainant says that the Respondent's proposal to use the three disputed domain names for an Australian Arab Action (AAA) initiative is clearly spurious. For example, he never once mentioned it as a justification in the correspondence which spanned a period of some seven months between the first cease and desist letter in August 2008 and the filing of this Complaint in March 2009; see, paragraphs 4.A.5 to 4.A.8.
5.C.2 Furthermore, the Respondent has registered 74 other domain names, 65 of which contain the descriptive word “insurance” and many of which also contain the well-known third party trademark such as SONY; AIG; ALLSTATE; and TOYOTA. Many of these also resolve to pay-per-click websites with the same links to companies providing insurance services.
5.C.3 Still further, the Complainant demonstrates that as at the date of registration of the three disputed domain names, domain names well suited to the Respondent's claimed AAA initiative, namely , , , and , were all available for registration.
5.C.4 Next, even if the Respondent's implausible AAA initiative was legitimate, “mere assertions of an incohate plan are insufficient, especially if significant time has passed since registration of the domain name with no effort to act on those plans” Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales,WIPO Case No. D2001-0729. In this case, the three disputed domain names were registered in February 2008, and no evidence of actual preparations to use any of them has been provided by the Respondent. Instead, the domain name was parked at a website offering links to the Complainants' competitors in the insurance field.
5.C.5 Finally, the Complainant relies upon the Respondent's failure to approach resolution of this dispute in good faith. This, the Complainant says, is evidenced by the demand of USD900.00 to cover the out-of-pocket expenses relating to those websites which was undocumented and clearly far in excess of the actual cost. 5.D Respondent's Supplement Response
5.D.1 In response to the Complainant's assertion that in the correspondence preceding the filing of this Complaint he failed to mention his planned AAA initiative, the Respondent refers to his email of August 13, 2008 in response to the Complainant's first cease and desist letter. In that email he stated his intention to develop websites for the three disputed domain names. The passage relied upon by the Respondent reads:
“While we totally disagree with your claim that it is our intent to harm the company that you represent and reject the serious accusations in your letter, it is our desire to clarify any misunderstanding, resolve any disagreements, and work together to reach a mutually acceptable solution - especially before the domain/website in question is developed.”
5.D.2 The Respondent then reiterates that, because the Complainant's AAA trademark is not known in Australia, because the intended use of the disputed domain names is for the Australian Arab community, because the Complainant has no trademark rights in Australia, and because the proposed use of the disputed domain names will not be commercial, such use will not in any way be damaging to the Complainant.
5.D.3 As to evidence of his preparatory work to develop websites for his AAA initiative, the Respondent says that he has “worked and spent considerable time in discussing, designing, planning for the development of these domains.”
5.D.4 As to the use of the parked domain name , the Respondent reiterates that, once he was put on notice of the Complainant's objections, that use was discontinued. Further, the Respondent repeats that the planned actual use of the three disputed domain names will not harm or have any negative impact on the businesses of the Complainant. 6. Discussion and Findings
6.1 Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant clearly has rights in the AAA trademark.
6.6 Further, for the reasons advanced by the Complainant each of the three disputed domain names is confusingly similar to the AAA trademark.
6.7 Accordingly, the Complaint meets the two requirements of paragraph 4(a)(i) of the Policy. Rights or legitimate Interests
6.8 Nothing in the Response or the Supplemental Response demonstrates any of the circumstances of paragraph 4(c) of the Policy. Such use as has been made of the domain name, namely that it resolves to a pay-per-click website providing links to competitors of the Complainant in its insurance business, is clearly neither a bona fide nor a fair use of that domain name.
6.9 As to the other two disputed domain names, no tangible evidence other than repeated assertions has been provided by the Respondent of the intended use for his Australian Arab Action (AAA) initiative.
6.10 Further, the evidence, produced in the Supplemental Submission by the Complainant of the availability as at February 2008 when the three disputed domain names were registered, of domain names incorporating the words “Australian Arab Action” is striking. That, together with the evidence that the Respondent is also the registrant of domain names incorporating well-known third party trademarks both with and without the descriptor “insurance”, is strongly indicative of the Respondent's lack of good faith and consequent lack of rights or legitimate interests in the disputed domain names. The Complainant's description of the Respondent's AAA initative as spurious is apposite.
6.11 Accordingly, the Complaint satisfies paragraph 4(a)(ii) of the Policy. Registered and Used in bad Faith
6.12 The Complainant's case under paragraph 4(b)(iv) of the Policy is made out and it is unnecessary to reiterate here Complainant's submissions summarized in paragraphs 5.A.9 to 5.A.12 above, coupled with the additional evidence of the Respondent's bad faith disclosed in the Supplemental Submission by the Complainant: see, paragraphs 5.C.1 to 5.C.5 above,. The Panel has no hesitation in finding that the Complaint meets the two 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 names , , and be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: April 29, 2009
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