WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The American Automobile Association Inc. v. Private Whois Escrow Domains Private Limited / K.A.L Services Case No. D2009-0822 1. The Parties
The Complainant is The American Automobile Association Inc. of Florida, United States of America, represented by Covington & Burling, United States of America.
The Respondent is Private Whois Escrow Domains Private Limited of Mumbai, Maharashtra, India also known as K.A.L Services of Hyderabad, Andhra Pradesh, India. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Lead Networks Domains Pvt. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2009. On June 19, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 24, 2009, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 24, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 25, 2009.
The Center verified that the Complaint together with the amended 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 July 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 30, 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.
The amendment to the Complaint was prompted by the Registrar's “unmasking” of the underlying registrant, K.A.L Services, following receipt by the proper Respondent, Private Whois Escrow Domains Private Limited, of the original Complaint.
For the purposes of this administrative proceeding the Panel proposes to treat Private Whois Escrow Domains Private Limited and K.A.L Services as one for the reasons set out in his decision inWIPO Case No. D2009-0320 Research In Motion Limited v. Privacy Locked LLC/Nat Collicot. 4. Factual Background
The Complainant is a long established and well-known automobile club based in the United States of America. It is the proprietor of a large number of service mark registrations of or including the acronym, “AAA”, including by way of example, United States registration No. 0829265 dated May 23, 1967, AAA (typed drawing), in class 42 for a wide variety of motoring-related services.
The Domain Name was registered on August 22, 2000. It has been used to connect to a website featuring advertising links to sites offering services competing with those of the Complainant.
On September 23, 2008 the Complainant's representatives wrote to the Respondent drawing the latter's attention to the Complainant's rights in respect of the mark, AAA, and seeking cessation of the use complained of and transfer of the Domain Name. No response having been received, a “chaser” was sent on November 17, 2008. No response was received to that letter either. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its AAA service mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant's registered service mark, AAA, the name and/or the geographical indication, “carolina” and the generic “.com” domain suffix, the last of which may be ignored for the purposes of assessing identity and confusing similarity under the Policy.
In the view of the Panel the addition of the name, “carolina”, does nothing to dilute the impact and distinctiveness of the Complainant's AAA service mark and the Panel finds that the Domain Name is confusingly similar to a service mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Respondent is using the Domain Name to connect to what is alleged by the Complainant (and appears to the Panel) to be a commercial pay-per-click site featuring sponsored links to inter alia motoring and other related sites, many of them associated with North Carolina, United States.
For this to constitute a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy, the adoption by the Respondent of what the Panel has found to be a domain name confusingly similar to the Complainant's service mark for a commercial service offering must at the very least have been independent of the Complainant's rights. In other words, the Respondent must not have had the Complainant and/or its AAA mark in mind when registering the Domain Name. The Respondent must have had some other reason for selecting the name.
The Complainant contends that the circumstances are such that the Respondent, which is not known by any name remotely resembling the Domain Name and which is using the Domain Name for advertising services falling within the Complainant's field of activity, must have selected the Domain Name precisely because of its attraction as a confusingly similar variant of the Complainant's well-known mark.
The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent.
There being no answer from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends that Internet users visiting the Respondent's website will be doing so in the belief that the site in question is a site of or authorized by the Complainant. On reaching the site the visitor will no doubt appreciate that it is a very different site, but by then the Respondent will have achieved its objective, namely the exposure to the visitor of a number of alternative sites, which, if the visitor goes on to visit them, will attract for the Respondent pay-per-click revenue.
On the evidence before him the Panel finds that it is probable that that was the Respondent's objective when registering the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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.
Tony Willoughby
Sole Panelist
Dated: August 7, 2009
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