WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The American Automobile Association Inc. v. Private Who is For cbelprip1702, Private Who is For yelprip1706 Case No. D2010-0212 1. The Parties
The Complainant is The American Automobile Association Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
The Respondent is Private Who is For cbelprip1702, Private Who is For yelprip1706 of Mumbai, India and St. Michael, Barbados. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with Lead Networks Domains Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2010. On February 12, 2010, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the Domain Names. The Center resent its request for registrar verification again on February 15, 17, 19, and 26, 2010. Lead Networks Domains Pvt. Ltd. failed to provide a verification response. 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 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 23, 2010.
The Center appointed Ian Lowe as the sole panelist in this matter on March 31, 2010. 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. Factual Background
The Complainant provides a broad variety of goods and services, including automobile, travel, home equity loan and insurance related products and services to more than 50 million members in the United States (“U.S.”). It is the proprietor of numerous trademark registrations in the United States and in many other countries of the world in respect of both the AAA and AMERICAN AUTOMOBILE ASSOCIATION marks.
The Domain Name was registered on May 10, 2002. The Domain Name was registered on September 16, 2002. At the time of the Complaint, both Domain Names resolved to pay-per-click advertising websites containing links for products and services competing with those of the Complainant. 5. Parties' Contentions A. Complainant
A summary of the principal submissions by the Complainant is as follows:
1) The Complainant is the proprietor of a substantial number of registered trademarks in respect of the AAA marks around the world. These include in particular U.S. trademark number 829,265 for the word mark AAA registered on May 23, 1967 in respect of a number of services including Automobile Association services, conducting motor vehicle tests and disseminating travel information; U.S. trademark number 1,806,416 for the word mark AAA registered on November 23, 1993 in respect of home equity loan services. The Complainant is also the proprietor of U.S. trademark number 1,131,305 for the word mark AMERICAN AUTOMOBILE ASSOCIATION registered on February 26, 1980 in respect of goods including instruction manuals, road maps, accommodations and emergency service directories and posters of interest to travellers and motorists.
2) The Complainant has used its AAA marks since at least 1902. As a result of its history and experience in providing high-quality products and services, as well as continuous and extensive advertising, promotion and sale of products and services under the AAA marks, those marks are valuable and famous in the United States and abroad.
3) The Domain Name is identical to the Complainant's AMERICAN AUTOMOBILE ASSOCIATION mark; the Domain Name contains the AAA mark followed by generic terms.
4) A domain name is confusingly similar to a mark when the name includes the entire mark. This is true even if one or more generic terms is added to the mark. The risk of consumer confusion is heightened where as in the case of the Domain Name the generic terms relate to important aspects of the Complainant's services, namely mortgage services. Accordingly, the Respondent's use of the Domain Names is likely to cause consumers to be confused as to the source, sponsorship, affiliation or endorsement of the Domain Names.
5) The Respondent has no legitimate interest in and no legal right to use the Domain Names. The Complainant has established rights to use the AAA marks and has not authorized or licensed the Respondent to use the marks. There is no evidence that the Respondent is commonly known by the Domain Names. The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Pay-per-click advertising websites do not constitute such bona fide or legitimate use.
6) The intentional use of the AAA marks in the Domain Names without any legitimate interest in the names and for the purposes of pecuniary gain demonstrates a bad faith intention to capitalize on the Complainant's marks. The registration of the Domain Names also constitutes disruption of the Complainant's business and is further evidence of bad faith registration under the Policy.
7) The Respondent's actual or constructive knowledge of the AAA marks, based on their registration with the U.S. Patent and Trademark Office and their substantial notoriety in the United States and abroad is further evidence of the Respondent's bad faith B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are 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 interest in respect of the Domain Names; and
(iii) the Domain Names have been registered in bad faith and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has adduced uncontroverted evidence of numerous registrations in respect of the AAA mark and a further registration in respect of AMERICAN AUTOMOBILE ASSOCIATION, the name of the Complainant under which it has traded for very many years. The Domain Name is identical to the name and trademark in which the Complainant has rights. The Domain Name comprises the entirety of the Complainant's AAA mark together with generic terms that allude to the mortgage business carried on by the Complainant under the AAA marks. Accordingly, the Panel finds that the Domain Names are identical or confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent has not replied to the Complainant's contentions so as to displace the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Names. The Respondent is not authorized to use the Complainant's name or AAA marks and there is no evidence that the Respondent is known by the Domain Names. The Domain Names resolve to pay-per-click websites featuring commercial links for products and services that compete with the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith
The Panel accepts that the Complainant's name and its AAA marks have become well-known in the United States and elsewhere as a result of the Complainant's activities over very many years. In the circumstances it is inconceivable that the Respondent did not have the Complainant's marks in mind when registering the Domain Names.
The inescapable conclusion is that the Respondent registered and has used the Domain Names with the intention that users would be confused into believing that the websites to which they resolve were operated by or with the consent of the Complainant or were authorised by or associated with the Complainant. The Respondent's exploitation of the Complainant's trademarks and goodwill with a view to commercial gain including through advertising revenue and sponsored links clearly amounts to bad faith use for the purposes of the Policy.
In the circumstances the Panel finds that the Domain Names were registered and are being used 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 Domain Names, and , be transferred to the Complainant.
Ian Lowe
Sole Panelist
Dated: April 14, 2010
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