WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The American Automobile Association, Inc. v. Domain Name Agent Case No. D2010-0018 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 Domain Name Agent of Vancouver, British Columbia, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2010. On January 7, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, eNom 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 proceedings commenced on January 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 4, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 9, 2010. The Panel finds that it was properly constituted. The Panel 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, American Automobile Association, Inc. (hereinafter the “Complainant”), is a 50 million member North American not-for-profit automobile lobby group, service organization, and seller of vehicle insurance.
The Complainant has been using the “AAA” mark (pronounced “triple-A”) continuously in commerce since at least 1902. The mark AAA is being used with a variety of goods and services, including towing services, car products, financial services and others.
As a result of the Complainant's products and services, and the continuous and extensive advertising, promotion and sales of these products and services under the AAA mark, the AAA mark became well-known both in the United States and abroad.
The Complainant is the owner of multiple trademark registrations for the mark AAA around the world. For example: United States (Hereinafter: “U.S.”) Trademark Registration No. 703,556 – AAA, with the registration date of August 30, 1960; U.S. Trademark Registration No. 1,678,804 – AAA, with the registration date of March 10, 1992; U.S. Trademark Registration No. 1,782,222 – AAA, with the registration date of July 13, 1993; U.S. Trademark Registration No. 2,158,654 – AAA logo, with the registration date of May 19, 1998; U.S. Trademark Registration No. 2,453,440 – GEE...I DIDN'T KNOW AAA DID THAT!, with the registration date of May 22, 2001; and many others.
The AAA trademark is well-known and well-recognized by the general public, and has generated significant goodwill. As a result of extensive use and publicity, the AAA trademark became widely-known and is solely associated with the Complainant.
The Complainant also developed a formidable presence on the Internet and is the owner of several domain names that contain the name mark AAA. For example: and , among others. The Complainant is using these domain names in connection with its activities.
Upon learning of the Respondent's use of the disputed domain name, the Complainant attempted to contact the Respondent twice – on June 2008 and again on December 2008. The Respondent did not reply to the Complainant either time.
The Respondent registered the disputed domain name on November 1, 2003.
The disputed domain name resolves to a pay-per-click advertising page, which offers links to financial websites and search pages that promote credit card use and sale. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the AAA trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole.
The Complainant further argues that it has exclusive rights to the AAA trademark and that this trademark is widely associated with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the AAA mark.
The Complainant further argues that the Respondent is not making a legitimate use of the AAA mark. Further, the Complainant argues that the Respondent has not demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.
The Complainant further argues that the Respondent promoted quasi-identical goods under the disputed domain name without the Complainant's consent. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent was aware of its existence and of its AAA mark and products at the time it registered the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The AAA trademark is registered in the name of the Complainant in various jurisdictions around the world. For example, U.S. Trademark Registration No. 703,556 – AAA, with the registration date of August 30, 1960; U.S. Trademark Registration No. 1,678,804 – AAA, with the registration date of March 10, 1992; U.S. Trademark Registration No. 1,782,222 – AAA, with the registration date of July 13, 1993; U.S. Trademark Registration No. 2,158,654 – AAA logo, with the registration date of May 19, 1998; U.S. Trademark Registration No. 2,453,440 – GEE...I DIDN'T KNOW AAA DID THAT!, with the registration date of May 22, 2001; and many others.
The disputed domain name consists of a combination of the Complainant's registered AAA trademark with the trademark VISA and the generic TLD indicator “.com”, which is not taken into consideration when determining confusing similarity. The mark VISA is a trademark belonging to the Visa International Service Association Corporation associated with the provision of financial services. The Panel finds that the term “AAA” (“aaa” in the disputed domain name) is the main and more influential part of the disputed domain name since it is located at the beginning of the of the disputed domain name. Due to its said position it would also be taken to reference the Complainant. (See Audi AG v. Hans Wolf,WIPO Case No. D2001-0148). The fact that the mark VISA appears after the registered trademark AAA may indicate to Internet users a connection between the Complainant and the owner of the mark VISA. (See Saab Automobile AB et al. v. Joakim Nordberg,WIPO Case No. D2000-1761)
In addition, the fact that the disputed domain name incorporates the Complainant's trademark with a third party's trademark (in this case VISA) does not serve sufficiently to distinguish the disputed domain name from the Complainant's trademark and does not diminish the Complainant's possible rights to the disputed domain name (Société Air France v. Domain Park Limited,WIPO Case No. D2007-0818).
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate domain names and it does not serve to identify the source of the goods or services provided by the registrants of domain names.
The result is that the Complainant has shown that the above disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the AAA trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence which shows that the Respondent registered the disputed domain name after the Complainant had registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned registrations for its AAA trademark at least since the year 1960. It is suggestive of the Respondent's bad faith that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (See Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name resolves.
The disputed domain name resolves to a pay-per-click advertising page, which offers links to financial websites and search pages that promote credit card use and sale. A previous WIPO panel has asserted the following:
It appears clear in this case from the use made of the Domain Name that the Domain Name was registered with a view to taking advantage of “domain name parking” or “pay per click” services pages in order to generate revenue for the Respondent. It is now well-known how these sorts of “domain name parking” or “pay per click” service pages operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to those sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name […] The generation of revenue from domain name parking activities is not necessarily use in bad faith under the Policy. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page (Classmates Online, Inc. v. Mary Lamb,WIPO Case No. D2009-0715).
Furthermore, the Respondent's use of the name “AAA” to promote similar or identical services to the services being offered by the Complainant clearly evidences that the Respondent registered these disputed domain names with knowledge of the Complainant and of the use the Complainant is making of the mark AAA. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent makes of the disputed domain name for quasi-identical services to the ones the Complainant offers constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
Furthermore, the Respondent failed to respond to the cease and desist letters which were sent to it by the Complainant.
The Panel cites the following similar case with approval:
There is also considerable force in the submission raised by the Complainant that the fact that the Respondent failed to respond to the cease and desist letter is recognition of both a bad faith registration and use. There is significant authority from earlier UDRP decisions … that a failure on the part of the Respondent without good reason, to respond to a cease and desist letter is evidence of bad faith registration and use (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
Based on the evidence presented on the use of the AAA trademark, the evidence submitted as to the use made by the Respondent of the disputed domain name and the Respondent's failure to reply to the cease and desist letters sent by the Complainant, the Panel can draw the inference that the disputed domain name was registered and used in bad faith.
Further, the disputed domain name is virtually identical and confusingly similar to the Complainant's trademark. Previous WIPO panels ruled that in such situations “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO Panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In light of the Complainant's distinctive registered trademark and the Respondent's use of the disputed domain name, the Panel finds that the registration of the disputed domain name which is confusingly similar to the Complainant's mark shows the Respondent's intent to operate a pay-per-click website that offers links to websites which offer similar services and by doing so, to confuse Internet users into identifying the Respondent as either associated or affiliated with the Complainant.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 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 disputed domain name be transferred to the Complainant. The Panel notes that such transfer is ordered without prejudice as to any third-party rights in the VISA trademark.
Jonathan Agmon
Sole Panelist
Dated: February 18, 2010
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