WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Automobile Association Limited, Automobile Association Developments Limited v. Fish4travel, Inc. Case No. D2009-0401 1. The Parties
The Complainants are The Automobile Association Limited, Automobile Association Developments Limited of Jersey and Hampshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”) represented by Lovells LLP, United Kingdom.
The Respondent is Fish4travel, Inc. of Incline Village, Nevada, United States of America (“United States” or “US”). 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2009. On March 26, 2009, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the disputed domain name. On March 27, OnlineNic, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. 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 proceedings commenced on March 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2009. The Response was filed with the Center on April 20, 2009.
The Center appointed Ross Wilson as the sole panelist in this matter on May 1, 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. Supplemental Filing
On May 12, 2009 the Center received a supplemental filing from the Complainant. In reply the Center advised the Complainant that there is no express provision for supplementary filings in the Rules except in the case of a deficiency notification or if requested by the Center or the Panel, and that admission of such filings would be at the sole discretion of the Panel.
Panels in the past have held that additional information would only be allowed in exceptional circumstances. In Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 the Panel considered exceptional circumstances as “the existence of new, pertinent facts that did not arise until after the submission of the complaint, or the desire to bring new, relevant legal authority to the attention of the Panel”. There was nothing in the Complainant's supplementary filing that indicated that any such circumstances exist. Consequently, the Panel did not consider the supplemental filing. 5. Factual Background
The Automobile Association Limited and Automobile Association Developments Limited (referred to hereafter as the Complainant) form United Kingdom's largest motoring organization and have about 15 million members. The Complainant was formed in 1905 and is commonly referred to as “the AA”. It provides a wide range of services to members such as vehicle recovery, insurance, finance and travel. The Complainant has a large portfolio of trademarks featuring both its initials AA only and the initials with additional elements such as AA ALLABOUTCARS, AA TRAVEL, AA TRAVELSHOP, AA HELP, AA INSURANCE, AA HELP LINE AA CALLSAFE, AA CLAIM LINE, AA EXPLORER and AA ESSENTIAL. These elements represent various services provided by the Complainant.
Since 2000 the Complainant has been providing a discounted airport parking service to members at various UK airports. Over 380,000 bookings have been made since the start of the service. Its parking service is available on its own website and also through an agent's website. The current agent is Holiday Extras Limited. The former agent was Airport Parking & Hotels Limited (APH).
The Respondent is a United States company incorporated in August 2008. The President of the company is Mr. Bennett who owns the US trademark AA PARKING registered on June 24, 2008.
The disputed domain name was created on September 23, 2004. 6. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's AA trademark because the addition of “parking” to the domain name does not reduce its confusing similarity to the Complainant's trademark. The Complainant submits that where a domain name consists of a famous registered trademark in its entirety, together with a suffix or prefix closely associated with the trademark owner's business as in that domain name must be judged confusingly similar to the trademark. In the Complainant's view the design of the name “Aaparking” in the website linked to the disputed domain name is depicted in the Complainant's corporate colour and draws attention to the uppercase “AA” to deliberately attempt to confuse consumers into thinking that the website is the Complainant's website or its affiliate.
The Complainant also submits that the disputed domain name is identical or confusingly similar to its unregistered trademark. The Complainant contends that by virtue of the extensive use of its AA trademark in connection with its other services, unregistered rights in other designations such a “life insurance”, “loans” and “parking” exists. With respect to AA PARKING the Complainant points out that the unregistered trademark has been in continuous use since 2000.
According to the Complainant the Respondent cannot claim bona fide use of the disputed domain name due to the Respondent's linking the domain name to another website which offers competing parking services. The Complainant alleges that the disputed domain name is employed for commercial gain and misleadingly diverts Internet users to the Respondent's website. Also, the Complainant alleges that the Respondent is making use of the dispute domain name to profit from the Complainant's goodwill and that the Respondent was aware of the Complainant and its business.
The Complainant contends that it has never authorized or otherwise licensed or permitted the Respondent to use any of its trademarks and that they are not affiliated in any way. The Complainant contends that the use of the disputed domain name may devalue its long standing goodwill and fame.
The Complainant alleges that the disputed domain name was registered and used in bad faith due to the deliberate copying of the Complainant's brand. For the Complainant this is proof that the Respondent was aware of the goodwill in its brand and intended to benefit from that goodwill and that the Respondent is deliberately trying to mislead customers into thinking that its website linked to the domain name is that of the Complainant or is connected to the Complainant.
The Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor and to create a likelihood of confusion with the Complainant's AA and AA PARKING trademarks. In the Complainant's view the website linked to the disputed domain name contains references to AAPARKING and misleads consumers.
The absence of a disclaimer or explanation regarding the Respondent's relationship with the Complainant in the website to which the disputed domain name is pointing is considered abusive by the Complainant.
Finally, the Complainant alleges bad faith use because there seems to be a close link, if not identicality, between the Respondent and APH, a company that previously had an arrangement with the Complainant in relation to its AA PARKING services. B. Respondent
The Respondent contends that it owns a US trademark for AA PARKING and that the Complainant does not own any specific AA PARKING trademark. The Respondent asserts that the Complainant has not provided any evidence that it has unregistered rights in the trademark AA PARKING. In the Respondent's view the only reference the Complainant makes to the use of “AA parking” is on the website of its agent. The Respondent alleges that that website was recently built and captured as a screen shot for the purpose of providing it to the Panel.
The Respondent acknowledges that the Complainant owns a number of AA related trademarks but that none of them include the word “parking”. Also, it submits that the Complainant's “AA” designation is commonly used by many other registered trademark owners.
According to the Respondent the reason that the disputed domain name website refers Internet users to another website owned by the Respondent is that it is still developing the technology to interact with a different partner as the previous link with the Complainant's agent was terminated at the request of the Complainant.
The Respondent alleges that the Complainant's true intentions are reverse domain hijacking and requests the Panel to make such a finding. It asserts that the Complainant “has been trying to squeeze Respondent out of [the]airport car parking business”. 7. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided extensive evidence of its United Kingdom and European Community rights in the registered trademark AA.
Apart from the generic gTLD, the disputed domain name consists of the Complainant's trademark in full followed by the descriptive word “parking”. It has been held in many previous cases that incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics Corp. v. Camp Creek Co. Inc.,WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
Also, numerous cases have recognised that the addition of descriptive words may not provide sufficient differentiation for a disputed domain name to be considered distinctive from the dominant element of a complainant's trademark. For example, The American Automobile Association, Inc. v. Contractor Services Company, Inc.,WIPO Case No. D2009-0192, Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275, General Motors Corporation and General Motors of Canada Limited v. Andre Rheaume,WIPO Case No. D2004-0664 and AirTran Holdings Inc. v. Forsyte Corporation,WIPO Case No. D2008-1169.
The Panel notes that the Complainant made a subsidiary claim that the disputed domain name was identical to its unregistered trademark rights. However, as pointed out by the Respondent, the Complainant provided no evidence that it uses “AAParking” as a trademark. As a finding in this case can be made based on the Complainant's registered trademark the Panel does not need to make a finding related to the alleged unregistered trademark rights.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant's AA trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy. B. Rights or Legitimate Interests
According to the Policy, and without limitation, the Respondent can demonstrate its rights or legitimate interests to the disputed domain name for the purposes of paragraph 4(a)(ii) by any of the following circumstances:
(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 and 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 disputed domain name was created on October 23, 2004 and the Respondent's company president, Mr. Bennett, filed a US trademark on October 19, 2007 which was subsequently registered on June 24, 2008. It is this trademark registration (registered in the company's president's name) that the Respondent relies upon to demonstrate its rights to the disputed domain name.
Generally, a trademark registration should be sufficient to demonstrate rights particularly if the trademark registration predates notification of the dispute and if the respondent's business activities do not interfere at all with a complainant's business (see Ebel International Limited v. Carlos Manuel Salinas,WIPO Case No. D2006-1323). However, in this case because the Respondent and the Complainant have common interests in airport car parking the Panel must consider whether the Respondent's interest is “legitimate”. The Complainant alleges that the Respondent was well aware of the Complainant's trademark at the time of registering the disputed domain name, almost four years prior to the Respondent registering the trademark.
The Complainant has provided details about a probable link between Mr. Bennett the president of Fish4travel and the company that from 2000 to July 2008 was the Complainant's initial agent for arranging airport parking, namely, Airport Parking and Hotels Limited (APH). The Complainant has provided evidence that demonstrates a strong connection with Mr. Bennett, APH and the Respondent through his connections with a number of domain names including the following:
a. originally registered or acquired by APH at a time when APH had a commission arrangement with AA whereby its members could make bookings for discounted airport parking;
b. which is registered in the name of Mr. Bennett of APH Limited; and
c. which is the domain name Internet users are redirected to when they reach the disputed domain name. The domain name is registered at the same address as the Respondent.
Through the various domain registration details the Complainant has identified common contact names, telephone numbers and domain name servers (DNS) details. Where there is a difference in the telephone numbers (by only five extensions) the Complainant advised that they share the same recorded message which begins “thank you for calling APH Airport Parking and Hotels…” By establishing a connection between the Respondent, Mr. Bennett and APH the Complainant asserts that the Respondent was well aware of the Complainant's trademark when it registered the disputed domain name and the trademark AAPARKING.
In the case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and M,WIPO Case No. D2000-0847 the respondent relied on a registered trademark for its prior rights under the Policy. However, the panel stated that “it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark … and not obtained merely to circumvent the application of the Policy.”
In BECA Inc. v. CanAm Health Source, Inc.,WIPO Case No. D2004-0298 the panel stated that “a conclusion that a trademark wherever and however obtained grants sufficient rights under paragraph 4(a)(ii) is unattractive. It suggests that a cybersquatter can avoid the Policy by the mere device of obtaining a trademark registration anywhere in the world.” The panel goes on to provide guidance that “when considering the question of ‘rights or legitimate interests' under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.”
While the Respondent claims that it is not APH, is not controlled by APH and was not aware of the Complainant's dispute with APH before receiving a copy of the Complaint, the Panel considers on balance the Complainant has made a convincing case demonstrating links between the Respondent, Mr. Bennett and APH which are persuasive in establishing the Respondent's prior knowledge of the Complainant's trademark. It is noteworthy that the Respondent has not provided any explanation as to why it selected the disputed domain name or rebutted the domain name links evidenced by the Complainant.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name which stands unrebutted. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Complainant has made a case that the Respondent is aware of the AA trademark and has subsequently registered and used the disputed domain name to confuse Internet users who are seeking information about the Complainant and attracting them to its website for commercial gain. The evidence provided shows that when an Internet user seeks to book a parking space on the website linked to the disputed domain name, no matter what dates and locations are entered into the booking form, the website returns a message stating that no parking spaces exist at the time selected. Instead, the website suggests that the user visits “Pickatravel Airport Parking and Hotels” and provides a link to a site which provides competing airport car parking services and one in which the Respondent has an interest.
Such activity represents bad faith as envisaged by paragraph 4(b)(iv) both in respect to registration and use of the disputed domain name. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain names were registered and used in bad faith. 8. Reverse Domain Name Hijacking
The Respondent requested the Panel to consider a finding of reverse domain name hijacking.
According to the Rules, reverse domain name hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. In other words, wrong and improper or reckless motives are the common factor of the Complainant's actions.
In light of the Panel's findings above, the Respondent's claim on reverse domain hijacking is denied. 9. 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.
Ross Wilson
Sole Panelist
Dated: May 15, 2009
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