Complainant is The American Automobile Association Inc. of Heathrow, Florida, United States of America represented by Covington & Burling, United States of America.
Respondent is Windshield Shop of North Las Vegas, Nevada, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2010. On November 24, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 24, 2010, eNom transmitted by email to the Center its verification response 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 November 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 21, 2010.
The Center appointed Richard W. Page as the sole panelist in this matter on December 22, 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 is the exclusive owner of United States (“U.S.”) federal trademark registrations and common law rights in the U.S. in its AAA and associated trademarks, which Complainant has long used in commerce in connection with a broad variety of goods and services, including automotive, financial, insurance, travel and discount goods and services. The U.S. trademark registrations include Registration Nos. 829,265, 2,158,654, 3,014,132, 3,046,904 and 3,046,905.
In addition, Complainant further bases this Complaint on its ownership of international trademark registrations in Canada, Mexico, the Benelux Countries, France, Germany, Italy, Norway, Peru, Spain Switzerland, the European Community and The People’s Republic of China. Complainant collectively refers to its U.S. and international trademark rights as the “AAA Marks”.
In or around July 2010, Complainant learned that Respondent had registered the Disputed Domain Name to host a website offering automobile glass repair and replacement services. On July 26, 2010, Complainant sent Respondent a cease and desist letter to the email address listed in the WhoIs records for the Disputed Domain Name. Complainant asked Respondent to cease using the Disputed Doman Name and to cancel the registration or to transfer it the Complainant.
Also on July 26, 2010, Respondent replied by email and offered to sell the Disputed Domain Name for USD 3,699. Respondent attempted to put pressure on Complainant by claiming that it had “emailed many parties who would benefit from the domain name and expected a fast sale.” Following Respondent’s offer to sell the Disputed Domain Name to others, Complainant referred the matter to counsel.
On August 18, 2010, counsel for Complainant sent Respondent a second cease and desist letter to the email address and street address listed in the WhoIs records for the Disputed Domain Name. The second letter recounted Complainant’s rights in the AAA Marks and requested that Respondent transfer the registration of the Disputed Domain Name to Complainant. The letter further explained that Respondent’s threat to sell the Disputed Domain Name constituted a bad faith intent to profit from registration of the Disputed Domain Name.
Respondent again replied by email that same day and again offered to sell the Disputed Domain Name for USD 3,699. On August 25, 2010, counsel for Complainant replied to Respondent’s email, warning that Complainant was prepared to take all necessary steps to protect its rights, including initiating this proceeding, if Respondent did not transfer the Disputed Domain Name and cease all other use of the AAA Marks. Complainant’s email was delivered to Respondent’s email address, but Respondent failed to respond. 5. Parties’ Contentions A. Complainant
Complainant alleges that many of its U.S. trademark registrations are incontestable under 15 U.S.C. §1065.
Complainant alleges that it has used its AAA Marks in commerce since at least 1902 and is well known by the public for providing emergency road services and automobile repair services, including automobile glass repair and replacement. As a result of Complainant’s history and experience providing high quality products and services, as well as its member clubs’ continuous and extensive advertising, promotion, and sales of such products and services under the AAA Marks, these Marks are valuable and famous in the United States and abroad. Under United States law, registration certificates for the AAA Marks constitute prima facie evidence of the validity of those registrations dating back to Complainant’s first use of the respective AAA Marks, and of Complainant’s exclusive right to us those AAA Marks in commerce or in connection with products and services specified in the registration certificates.
Complainant alleges that the Disputed Domain Name is substantially and confusingly similar to Complainant’s AAA Marks. Complainant argues that the Disputed Domain Name includes the entirety of the “AAA” element common to the AAA Marks. Complainant further argues that the addition of the generic terms “emergency,” “glass” and “replacement” is not distinctive. The potential confusion is only heightened because Complainant renders emergency services and windshield replacement.
Complainant alleges that Respondent has neither a legitimate interest in the Disputed Domain Name nor any legal right to use the name. The AAA Marks have not been licensed or authorized for use by Respondent in connection with its business or as part of the Disputed Domain Name. Complainant further alleges that Respondent is not commonly known by the Disputed Domain Name. The website to which the Disputed Domain Name resolves is “Windshield Shop” used as the common name by which Respondent is known.
Complainant alleges that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant further alleges that Respondent was aware of Complainant and its AAA Marks when Respondent registered the confusingly similar Disputed Domain Name and used it to divert Internet users seeking Complainant’s automobile glass services to Respondent’s website. Complainant further alleges that Respondent is making a commercial use of the Dispute Domain Name by selling its automobile glass repair and replacement services on the website associated with the Disputed Domain Name.
Complainant alleges that the recited facts constitute a breach of the Policy, paragraphs 4(b)(ii), (iii) and (iv) showing that the Respondent has filed and used the Disputed Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Because both Complainant and Respondent are domiciled in the U.S. and U.S. courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the U.S. See Tribeca Film Center, Inc. v. Brusasco-Mackenzie,WIPO Case No. D2000-1772.
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also, Hewlett-Packard Company v. Full System S.a.S., NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
(ii) that Respondent has no legitimate interests in respect of the Disputed Domain Name; and,
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant alleges that many of its U.S. trademark registrations are incontestable under 15 U.S.C. §1065 and that it also owns international registrations.
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Respondent has chosen not to refute prima facie evidence of Complainant.
The Panel finds that Complainant has numerous U.S. trademark registrations of the AAA Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the AAA Marks. The Panel further finds that certain AAA Marks are incontestable under 15 U.S.C. §1065.
The Panel finds that, for purposes of this proceeding, Complainant has enforceable rights in the AAA Marks.
Complainant further alleges that the Disputed Domain Name is substantially and confusingly similar to Complainant’s AAA Marks. Complainant argues that the Disputed Domain Name includes the entirety of the “AAA” element common to the AAA Marks. Complainant further argues that the addition of the generic terms “emergency,” “glass” and ”replacement” is not distinctive. The potential confusion is only heightened because Complainant renders emergency services and windshield replacement.
Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the AAA Marks.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that QUIXTAR and are identical under the Policy). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to a complainant’s registered trademark.
The Panel finds that the Disputed Domain Name includes the entirety of the “AAA” element common to the AAA Marks. The Panel further finds that the additional phrases of “emergency,” “glass,” and “replacement” are descriptive and do not distinguish the Disputed Domain Name from the AAA Marks in respect of a first element analysis.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the AAA Marks pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [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 trademark or service mark at issue.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Complainant alleges that the AAA Marks have not been licensed or authorized for use by Respondent in connection with its business or as part of the Disputed Domain Name. Complainant further alleges that Respondent is not commonly known by the Disputed Domain Name. The website to which the Disputed Domain Name resolves is “Windshield Shop” used as the common name by which Respondent is known.
Complainant alleges that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant further alleges that Respondent was aware of Complainant and its AAA Marks when Respondent registered the confusingly similar Disputed Domain Name and used it to divert Internet users seeking Complainant’s automobile glass services to Respondent’s website. Complainant further alleges that Respondent is making a commercial use of the Dispute Domain Name by selling its automobile glass repair and replacement services on the website associated with the Disputed Domain Name.
The Panel finds that Complainant has come forward with sufficient facts to make a prima facie showing for each of the three nonexclusive methods provided for in the Policy, paragraph 4(c). Respondent has chosen not to respond.
The file contains no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you 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 trademark 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 have 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 you have engaged in a pattern of such conduct; or
(iii) you 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 web site 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 web site or location or of a product
Complainant alleges that the recited facts constitute a breach of the Policy, under several subparagraphs of 4(b), including subparagraph 4(b)(iv) showing that Respondent has filed and used the Disputed Domain Name in bad faith. The Panel finds that Complainant has alleged sufficient facts (discussed supra) to establish the elements of the Policy, paragraph 4(b)(iv). Respondent has not contested any of these facts.
Therefore, the Panel finds that Respondent registered and used the Disputed Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii). 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 Complainant.
Richard W. Page
Sole Panelist
Dated: January 10, 2011
Full & Egal Universal Law Academy