WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The American Automobile Association, Inc. v. greate echo ltd., faceidea ltd Case No. D2010-0390 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 greate echo ltd., faceidea ltd of Hong Kong, SAR of China and Northampton, Northamptonshire, United Kingdom. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010. On March 15, 2010, the Center transmitted by e-mail to Dynadot, LLC a request for registrar verification in connection with the Disputed Domain Name. On March 16, 2010, Dynadot, LLC transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to the Complainant on March 26, 2010 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 March 29, 2010. 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 March 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on April 29, 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 is the well-known American Automobile Association, Inc. that has operated since 1902 and owns registered trade marks for or incorporating its AAA trade mark both in the United States of America (for example registrations 829,265 and 2,158,654) and in many other jurisdictions, in particular in respect of goods and services including travel arrangements and travel agency services.
The Respondent owner of the Disputed Domain Name was upon filing of the Complaint the company “greate echo ltd.”, based in Hong Kong, but after filing and service of the Complaint and before the Registrar could lock the Disputed Domain Name, as required under the Rules, the registration appears to have been transferred to “faceidea ltd” based in the United Kingdom using the same contact e-mail address. 5. Parties' Contentions A. Complainant
The Complainant submits that it owns both registered trade mark rights and common law rights in its AAA mark as set out above and that the Disputed Domain Name incorporates its mark and the addition of the terms “ha” and “travel” are not distinctive and should be found confusingly similar, in particular based on past cases such as The American Automobile Association, Inc. v Jack Holder, NAF Claim No. 1227171.
The Complainant further submits that it has not licensed or authorised the use of its mark by the Respondent. It says that there is nothing to suggest that the Respondent is commonly known by the Disputed Domain Name. Apart from offering some cruise vacation information the Complainant says its sole use constitutes pay-per-click advertising which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
As far as bad faith is concerned the Complainant submits that the Respondent chose the Disputed Domain Name so as to create a likelihood of confusion for Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent's website under paragraph 4(b)(iv) of the Policy. It further says that the Respondent's registration without any legitimate interest for the purposes of pecuniary gain demonstrates an intention to capitalize on the Complainant's trade mark and also comprises a disruption of the Complainant's business under paragraph 4(b)(iii) of the Policy.
In support of its allegation of bad faith the Complainant says that the Respondent must have had actual or constructive knowledge of the Complainant's marks and has had subsequent notice but continues to use the Disputed Domain Name. Further the Respondent's use of an e-mail address which is obviously designed to elicit offers for purchase of the Disputed Domain Name is indicative of bad faith.
The Complainant also submits that the Respondent has a history of cybersquatting in at least two past cases (SGF License, LLC v greate echo ltd. c/o mi dominio, NAF Claim No. 1283181 and TELECOM ITALIA, S.p.A. v. greate echo ltd. c/o mi dominio, NAF Claim No. 1283203) and the fact that the Respondent engaged in cyberflight by changing domain name registration information after receiving notice of the Complaint in order to evade further enforcement proceedings, is further indicative of bad faith, see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
For the reasons set out below, the Panel accepts the Complainant's submission in its amended Complaint that both the original Respondent and the new domain name registrant, namely, faceidea ltd of Northhampton, Northhamptonshire, United Kingdom should be treated as the Respondent for the purposes of this proceeding. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered trade mark rights in its AAA trade mark and that the Disputed Domain Name incorporates the Complainant's mark. In the circumstances of the degree of renown attaching to the Complainant and to its mark which has been used extensively by the Complainant in the United States over a century or more, the Panel finds that the addition of the terms “ha” and “travel” do not adequately distinguish the Disputed Domain Name and that it is confusingly similar to the Complainant's trade mark. The Panel notes that the addition of the word “travel” is an obvious non-distinguishing addition considering the Complainant's business activities in the travel area and based on the repute attaching to the mark and in the absence of any argument to the contrary, it does not find that the addition of “ha” in the middle of the Disputed Domain Name assists as a distinguisher. This approach is consistent with that taken by the Panel in Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.
Accordingly the Complaint succeeds in relation to the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that it has not licensed or authorised the use of its mark by the Respondent. It says that there is nothing to suggest that the Respondent is commonly known by the Disputed Domain Name. In addition it submits that use for pay-per-click advertising does not in the circumstances constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
In the absence of any response to the contrary the Panel accepts the Complainant's submissions on this element of the Policy. It is not apparent that the Respondent does have any bona fide interest in the Disputed Domain Name apart from using it for pay-per-click advertising and as set out under element 3 below the Panel does not consider that in the circumstances this amounts to bona fide use. Accordingly the Complainant has made out its prima facie case under this part of the Policy and there is nothing before the Panel to rebut this case.
Therefore the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
In the Panel's view it is more than likely based on all the circumstances that at the date of registration of the Disputed Domain Name in 2009 the Respondent which registered the Disputed Domain Name was well aware of the Complainant's business and AAA trade mark. Firstly, the Complainant's business and AAA trade mark appear to have a significant degree of repute in the United States and elsewhere and it is unlikely that in 2009 when the first Respondent registered the Disputed Domain Name incorporating the AAA mark together with the word “travel” that it did so unwittingly and by coincidence.
This inference is only reinforced by the Respondent's e-mail address which is certainly suggestive of it purchasing domain names expressly for re-sale together with its past history of cybersquatting as noted by the Complainant. Although a pay-per-click advertising site may not necessarily be evidence of bad faith under the Policy, it may be indicative of bad faith in circumstances where the site is used for competitor advertising and where other factors allow the Panel to infer bad faith. In this case it is the apparent attempt to evade the Policy by transferring the Disputed Domain Name to a United Kingdom based entity after receiving notice of this Complaint which clearly confirms the Panel's view that in all the circumstances the Respondent registered and has used the Disputed Domain Name in bad faith.
It is notable that the contact e-mail address for the transferee of the Disputed Domain is the same as for the first Respondent at the time of this Complaint. The Panel infers from this co-incidence and in the absence of any argument by the Respondent that the two parties are related and should be treated as the “Respondent” for the purposes of this proceeding and that the Respondent's conduct in this regard amounted to cyberflight. Previous panels have found that evidence of cyberflight supports an inference of bad faith as described by the panelist in Fifth Third Bancorp v. Secure Whois Information Service, supra, and the Panel follows this line of decisions.
Accordingly the Panel finds that the Disputed Domain Name was registered and used in bad faith and that the Complaint succeeds under the third element 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 Disputed Domain Name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: May 9, 2010
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