WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The American Automobile Association, Inc. v. Donald David, AAA Fuel Busters Case No. D2010-0460 1. The Parties
Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
Respondent is Donald David of Torrance, California, United States of America; AAA FuelBusters of Torrance, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R and is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2010. On March 26, 2010, the Center transmitted by email to R and Tucows Inc. a request for registrar verification in connection with the disputed domain names. On March 26, 2010 and March 29, 2010, R and Tucows Inc. transmitted by emails to the Center their verification responses respectively confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2010. Respondent sent a couple of emails to the Center on April 12, 2010 and April 16, 2010.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on May 6, 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
Complainant The American Automobile Association, Inc. is the owner of the mark AAA for use in connection with automobile association services rendered to motor vehicle owners and travelers, and related goods and services. Complainant is the owner of the following U.S. Trademark Registrations:
AAA Reg. No. 829,265 Registered May 23, 1967;
AAA Reg. No. 2,158,654 Registered May 19, 1998;
GAS
WATCHER'S GUIDE Reg. No. 3,141,961 Registered September 12, 2006.
Complainant also owns numerous international trademark registrations for the mark AAA in Canada, Mexico, Barbados, Benelux, France, Germany, Italy, Norway, Spain, the People's Republic of China as well as a Community Trademark Registration.
Complainant also claims state and common law rights to the AAA marks and the marks “Fuel Gauge Report” and “Fuel Price Finder.”
Complainant is well known in the United States for disseminating automobile and travel information, including regular updates on gasoline prices. Complainant's AAA marks are widely recognized by consumers in the United States as identifying the products and services of Complainant and its local member clubs. See Am. Auto. Ass'n, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489.
In about November 2008, AAA learned that Respondent was using the domain name to host a website displaying advertising links for information on gasoline prices, travel and other services that compete with those offered by Complainant. On November 24, 2008, AAA sent Respondent a cease and desist letter to the email address and street address listed in the WhoIs records for the domain name, but both were returned as undeliverable.
On May 19, 2009, Complainant sent a further cease and desist letter to Respondent by email. The email notified Respondent that the WhoIs information provided in association with the domain name was false. On June 3, 2009, Respondent sent an email in response requesting a letter “by snailmail.” Complainant responded on June 3, 2009, by incorporating the text of its cease and desist letter into an email addressed to Respondent. Respondent's email response stated: “The address and email on that letter are no longer valid. We will get back to you as soon as possible.” Yet Respondent subsequently renewed the registration using the same registration information that it previously acknowledged was invalid.
At the time of the filing of the Complaint the disputed domain names redirected Internet users to websites that offered services in competition with those of Complainant. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names incorporate Complainant's AAA mark in its entirety, are confusingly similar to Complainant's trademark, that Respondent has no rights or legitimate interests in the domain names and that the domain names were registered and are being used in bad faith. B. Respondent
Respondent did not formally reply to Complainant's contentions. On April 12, 2010, Respondent indicated that the “www.” website had been “dropped” but that they were unable to “drop” the “www.” website because it was locked. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
Complainant has demonstrated that it owns rights in the trademark AAA in connection with the goods and services listed in its trademark registrations. Respondent's domain names incorporate Complainant's trademark in its entirety. The generic terms “fuel”, “busters”, “discount”, “gasoline” and “list” do not dispel confusing similarity because they describe services for which AAA is well known. See Am. Auto. Ass'n, Inc. v. AAA-Vacationsunlimited,WIPO Case No. D2009-0373.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant's trademarks. B. Rights or Legitimate Interests
Respondent has no connection to or affiliation with Complainant. Respondent is not a franchisee, affiliated businesses or licensee of Complainant. Respondent is not an authorized agent of Complainant and Complainant has not authorized Respondent to register the disputed domain names or to otherwise use Complainant's marks.
Respondent is not and has not been commonly known by the disputed domain names. Although AAA FuelBusters is listed as the Registrant for one of the domain names, a registrant cannot establish that it is “commonly known by” a disputed domain name simply by providing contact information in the WhoIs database that is identical or substantially similar to the domain name. There is no evidence that Respondent was known by the name AAA FuelBusters prior to registration of the disputed domain names.
There is no evidence that Respondent has made any demonstrable preparation for use of the domain names in connection with a bona fide offering of services or for a legitimate noncommercial or fair use. Respondent's websites merely redirects Internet traffic to other websites that offer services that compete with Complainant. Such pay-per-click advertising websites do not constitute a bona fide offering of goods or services and are not a legitimate use of the domain names.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's website or location of a product or service on the respondent's website or location.
The submitted evidence demonstrates that Respondent registered the disputed domain names that are confusingly similar to Complainant's marks to attract Internet users to Respondent's websites for Respondent's commercial gain. Respondent's registration of the disputed domain names also constitutes disruption of Complainant's businesses and is further evidence of bad faith registration. Moreover, it is highly likely that Respondent had actual or at least constructive knowledge of Complainant's AAA marks, based on their registration with the U.S. Patent and Trademark Office and their substantial fame in the United States. See Am. Auto. Ass'n, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489; Am. Auto. Ass'n, Inc. v. PerkinsPestControl c/o Del Rich and 1&1 Internet, Inc.,WIPO Case No. D2009-1379.
Finally, Respondent's maintenance of false contact information in the WhoIs record for one of the domain names also constitutes evidence of bad faith.
The Panel finds that Respondent has registered and used the disputed domain names 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 Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: May 20, 2010
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