WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The American Automobile Association, Inc. v. BWI Domains, Top Business Names, World Idea Business Case No. D2010-0319 1. The Parties
The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling, United States.
The Respondents are BWI Domains, Top Business Names, World Idea Business, all of West Bay, Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrars
The disputed domain names , , , , and are registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2010. On March 2, 2010, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain names. On March 8, 2010, R Corp. transmitted by email to the Center its complete verification response confirming that the Respondents Top Business Names and World Idea Business are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on March 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 30, 2010.
The Center appointed Richard Tan as the sole panelist in this matter on April 21, 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.
Due to unforeseen circumstances it was necessary for the Panel to extend the decision due date to at least May 12, 2010. 4. Factual Background
The Complainant has been in commerce since at least 1902. It has a long history of providing products and services including to motor vehicle owners of its organization and its member clubs in many areas such as road services, insurance, travel, financial services, tours and vacations. It has registered and owns numerous trademarks in the name or term AAA including trademark registration numbers 829,265, 2,158,654, 1,678,804 and in the expression AAA VACATIONS under trademark registration 2,120,266 issued by the United States Patent and Trademark Office in connection with its products and services.
It also owns several international trademark registrations for its AAA marks, including Canada Reg. No. TMA430671, Mexico Reg. No. 763123, Benelux Reg. No. R 534982, France Reg. No. 93 475288, Germany Reg. No. 2086870, Italy Reg. No. 1042418, Norway Reg. No. 247901 (AAA & Design), Spain Reg. No. 1772071 M0, Switzerland Reg. No. 543640, Community Trademark Reg. No. 3821378, China Reg. No. 4588081 (AAA & Design) (collectively with AAA's United States registrations, “AAA trademarks”).
The Complainant has extensively advertised and promoted its AAA trademarks in the United States and other countries.
The Respondents' disputed domain names were registered between 2004 and 2007 or thereabouts. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain names are confusingly similar to the Complainant's AAA trademarks; that the Respondents have no rights to or legitimate interests in the disputed domain names and that the Respondents have registered and are using the disputed domain names in bad faith.
The Complainant relies on its numerous trademark registrations in the United States and other parts of the world and claims that as a result of its extensive use, advertisements and promotion of the AAA trademarks in connection with its products, goods and services, it has acquired and enjoys substantial reputation and goodwill in the AAA trademarks, which should be regarded as famous and well-known marks. The Complainant has been in commerce since at least 1902 and has had a long history of providing products and services including to motor vehicle owners of its organization and its numerous member clubs. The Complainant claims that the Respondents have infringed these rights by registering the disputed domain names and using them to advertise services that compete with those offered by the Complainant.
Moreover, the Respondents have frustrated and delayed efforts to enforce the Complainant's rights by ignoring its many cease-and-desist requests and altering the domain names' WhoIs record to create the illusion of a new registrant. This pattern first came to the Complainant's attention when it sought to obtain the transfer of .
In or around October 2007, the Complainant learned that BWI Domains had registered and was using as a pay-per-click advertising website offering links to goods and services that competed directly with the Complainant's own financial and credit card related offerings. It then sent a notice of infringement to BWI Domains, but it was returned as undeliverable due to an invalid address. It successfully sent by email a second notice letter to BWI Domains, but the registrant did not respond. Some time thereafter, BWI Domains appears to have altered the WhoIs information for this domain name to list World Idea Business as the registrant. World Idea Business and BWI Domains share nearly identical addresses, email addresses, and phone numbers.
BWI Domains repeated this pattern with which was used to host a pay-per-click advertising website offering links that compete directly with the Complainant's travel agency services. After the Complainant sent a notice letter the WhoIs information for was changed to list Top Business Names as the registrant. The website's content, however, remained unchanged.
The other four disputed domain names, , , , and were all registered to Top Business Names when the Complainant first detected them. All of these host similar pay-per-click websites that direct users to goods and services that compete with AAA's automotive, finance, and travel related products.
The Complainant accordingly asserts that the Respondents have been seeking to frustrate and delay its efforts to protect its rights by repeatedly shifting registrant information and failing to respond to communications.
The Complainant asserts that the disputed domain names are substantially and confusingly similar to the AAA trademarks. A domain name is confusingly similar to a mark when the name includes the entire mark even if one or more generic terms are added. The disputed domain names combine the entire AAA mark with generic terms (“auto brokers”, “car movers”, “financial services”, “holiday homes” and “web travel”). Moreover, the likelihood of confusion is increased where, as here, the relevant mark, AAA, is highly distinctive. Additionally, the Complainant provides services or has affiliations with many member clubs, one of which is the AAA Washington and the addition of a geographically descriptive term does not alleviate the confusing similarity between a domain name and a trademark.
The Complainant further asserts that the Respondents have no rights or legitimate interests in the disputed domain names. The Complainant has not licensed or authorized any of the Respondents to use the AAA trademarks. The Respondents are not commonly known by the disputed domain names. The Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain names that resolve to pay-per-click advertisements, constitute neither bona fide offerings of goods or services nor legitimate noncommercial or fair uses. The Complainant asserts that the Respondents registered the confusingly similar domain names to mislead Internet users and to profit from its pay-per-click advertisements that offer automobile, travel, financial and insurance services in direct competition to those provided by the Complainant.
Finally, the Complainant asserts that the Respondents registered and used the disputed domain names in bad faith.
The Respondents registered multiple domain names that are confusingly similar to the AAA trademarks to attract Internet users to its pay-per-click advertising websites, creating confusion for Internet users as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites. The Respondent s' registration of the disputed domain names, without any legitimate interest in the names and for purposes of pecuniary gain, demonstrates a bad faith intention. The registration of domain names that are confusingly similar to the AAA trademarks, without any legitimate interest in the domain names, constitutes disruption of the Complainant's businesses and is evidence of bad faith registration and use. The Respondents' prior knowledge of the AAA trademarks confirms their bad faith. At the time the Respondents registered the domain names, they must have been aware of the AAA trademarks based on their substantial fame in the United States and other countries. The Respondents, under their many aliases, have a history of registering domain names that infringe third parties' trademark rights. In 2009 alone, BWI Domains was the respondent in at least ten UDRP proceedings before the Center and the National Arbitration Forum, and Top Business Names was the respondent in two. The Complainant relies on a number of cases including Houston McLane Company, Inc. d/b/a The Houston Astros Baseball Club v. Top Business Names c/o Domain Administrator, NAF Claim No. FA1296706 (December 15, 2009); Jim Carrey v. BWI Domains,WIPO Case No. D2009-0563 (June 16, 2009). Since 2007, BWI Domains has been the listed respondent in over 25 separate UDRP cases, several of which involved multiple domain names, including The Cartoon Network, Inc. v. BWI Domain Manager c/o Domain Manager, NAF Claim No. FA1247435 (April 6, 2009), Time Warner, Inc. v. BWI Domain Manager a/k/a Domain Manager a/k/a BWI Domains, NAF Claim No. FA1235722 (January 19, 2009), Chivas Brothers Ltd v. BWI Domains/Whois Protection,WIPO Case No. D2008-0722, American Girl, LLC v. BWI Domain Manager, NAF Claim No. FA1104431 (December 14, 2007) and AARP v. BWI Domain Manager, NAF Claim No. FA1094042 (November 26, 2007).
BWI Domains and Top Business Names have not responded to any of the Complainant's cease-and-desist requests. The Complainant contends that such a pattern of registration is evidence of bad faith.
The Complainant further contends that the Respondents demonstrated their bad faith by engaging in cyberflight, which involves changing domain name registration information after receiving notice of a complaint to evade further enforcement proceedings. Fifth Third Bancorp v. Secure Whois Info.Serv.,WIPO Case No. D2006-0696 (Sept. 16, 2006). B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
Based on principles of consolidation as expressed in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 and the unrefuted allegations that all Respondents are aliases for a single entity under common control, the Panel finds it appropriate to treat the Respondents as a single entity for purposes of the instant proceedings.
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer or cancellation of the disputed domain names:
(i) that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
The Respondents are required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from that party's failure to comply with the Rules “as it considers appropriate.”
As the Respondents have not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel decides the dispute based on the Complaint and accepts as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.
The Respondents' default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, the requirements of the Policy: World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827. A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant's AAA trademarks have, as noted above, been registered in the United States and many other countries and have been widely used and advertised in respect of the products and services of the Complainant for a long period of time. This Panel has no hesitation in finding that those trademarks are well-known trademarks and that the Complainant has rights in those trademarks.
The disputed domain names include the Complainant's AAA trademark. A domain name may be confusingly similar to a mark when the name includes the entire mark even if one or more generic terms are added. In this case the disputed domain names combine the AAA marks with generic terms like “auto brokers”, “car movers”, “financial services”, “holiday homes” and “web travel”. Where as here a complainant's mark is distinctive, the likelihood of confusion is increased: see Reuters Ltd. v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.
As regards the disputed domain name , the Panel accepts the Complainant's contention that the addition of a geographically descriptive term may not be sufficient to avoid a finding of confusing similarity between a domain name and a trademark in certain circumstances: see Disney Enters., Inc. v. Greg Kiesinger, NAF Claim No. FA1203947. The Panel finds that the disputed domain name is confusingly similar to the AAA trademarks, given that one of the Complainant's many local clubs is AAA Washington, and that Internet users may associate that disputed domain name with the Complainant despite the addition of a geographically descriptive term.
This Panel accordingly finds that the disputed domain names are confusingly similar to the AAA trademarks in which the Complainant has rights. B Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the respondent] 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 or services; or
(ii) you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [the respondent] 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 trade mark or service mark at issue.
The Respondents have not filed a Response to the Complaint. They have not attempted to demonstrate that they have any rights or legitimate interests in the disputed domain names.
In the absence of any Response, this Panel accepts the Complainant's contentions that
the Respondents have no rights or legitimate interests in the disputed domain names on the grounds advanced by the Complainant.
Clearly, the Complainant has not licensed or authorized the Respondent to use the AAA trademarks and has no commercial relationship or association with the Respondents. There is no evidence that any of the Respondents are commonly known by the disputed domain names. This Panel has no difficulty in finding that the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain names resolve to sites that offer pay-per-click advertisements that constitute neither bona fide offerings of goods or services nor legitimate noncommercial or fair uses. This Panel accepts that the Respondents registered the confusingly similar domain names to mislead Internet users into visiting their websites offering various automobile, travel, financial and insurance services in direct competition to those provided by the Complainant.
This Panel accordingly finds that the Respondents have no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain names have been registered and used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:
(i) circumstances indicating that you [the respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Complainant submits that the Respondents have registered and are using the disputed domain names in bad faith.
This Panel accepts that the Respondents knew or must have known of the Complainant's AAA trademarks given the extent of the reputation and widespread use of the same by the Complainant. The Respondents' registration of multiple domain names that are confusingly similar to the AAA trademarks was no coincidence and must have been designed to create confusion as to the source or endorsement by the Complainant of the Respondents' websites.
Further, this Panel accepts, absent any Response from the Respondents, that the latter have used many aliases and have a history of registering domain names that infringe third parties' trademark rights, as contended by the Complainant. The pattern of abusive registration relied upon by the Complainant is clear evidence of bad faith: Jim Carrey v. BWI Domains,WIPO Case No. D2009-0563. Further, changing domain name registration information after receiving notice of a complaint to evade further enforcement proceedings amounts to cyberflight: see Fifth Third Bancorp v. Secure Whois Info.Serv.,WIPO Case No. D2006-0696. Such evasive conduct is capable of supporting a finding of bad faith. The Respondents' deliberate and blatant provision of false contact or identification information is further evidence of bad faith: see Carfax, Inc. d/b/a Carfax v. Auto Check USA,WIPO Case No. D2001-0929 and Valerio Inc. v. Sunshinehh,WIPO Case No. D2003-0255.
This Panel accordingly finds, for all the foregoing reasons, that the disputed domain names have been registered and 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 disputed domain names, , , , , and be transferred to the Complainant.
Richard Tan
Sole Panelist
Dated: May 12, 2010
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