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 Telecom Tech Corp. of Panamá, Panama. 2. The Domain Name and Registrar
The disputed domain names and (collectively, the “disputed domain names”) are registered with Bargin Register Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2011. On February 25, 2011, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain names. On February 25, 2011, Bargin Register Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 28, 2011 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 February 28, 2011.
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 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on April 5, 2011. 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 one of the world’s oldest and largest automobile associations. It is the owner of several United States trademark registrations consisting of, or including, the letters AAA. It holds a registration of the letters AAA simplicita claiming use in commerce since 1902. That registration covers inter alia services to vehicle owners and motorists and travel and insurance related services. It has corresponding trademark registrations in many countries of the world and its reputation and that of its AAA trademark has been recognized in several United States District Court decisions. It had to defend the integrity of its AAA trademarks in 59 cases decided under the UDRP. It has been successful in all but two of those cases.
The domain name (the “Nevada domain name”) was registered on November 24, 2006 and the domain name (the “Colorado domain name”) was registered on November 23, 2006. The Complainant states that it became aware of the Nevada domain name in 2009 and sent cease and desist letters to the Respondent on October 5 and October 26 of that year, but received no response. In December 2010, the Complainant also became aware of the Colorado domain name. Each of the domain names resolves to a website providing links to third party sites, many of which offer services, including insurance services, in direct competition with services offered by the Complainant.
The identity of Telecom Tech Corp. as the true owner of the disputed domain names was revealed following submission of the Center’s request for verification on February 25, 2011. The Panel therefore treats Telecom Tech Corp as the Respondent and references to the “Respondent” are references to that company. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
Each of the domain names consists of the entire AAA trademark with the addition of the generic terms “insurance” and “company” and the geographic terms “Colorado” and “Nevada”. The addition of these words does not serve to distinguish the disputed domain names from the Complainant’s trademarks, particularly since consumers may associate the geographic names as one of the Complainant’s many local clubs including, in the case of the Colorado domain name, its Colorado club. Likewise, the addition of the word “insurance company” in the case of the Nevada domain name is likely to heighten consumer confusion because the Complainant is well-known for providing insurance products and services.
The Respondent has no right or legitimate interest in the disputed domain names. It has not been licensed or authorized to use the AAA trademark; there is no evidence that it is commonly known by either of the disputed domain names and the commercial use which it is making of the disputed domain names by providing pay-per-click links to sites offering services in competition to the Complainant’s services does not constitute a bona fide offering of such services.
The Respondent registered and is using the disputed domain names in bad faith for the reason that:
(1) it is offering the disputed domain names for sale for more than its reasonable out-of-pocket expenses;
(2) use of the disputed domain names creates a likelihood of confusion for Internet users and demonstrates a bad faith intent to capitalize on the Complainant’s AAA trademarks;
(3) the Respondent’s registration and use of the disputed domain names constitutes a disruption of the Complainant’s business;
(4) the Respondent had actual or constructive knowledge of the Complainant’s AAA trademarks based on their United States and international registrations and their substantial reputation in the United States and abroad. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Each of the disputed domain names consists of the Complainant’s AAA trademark with the addition of, in the case of the Colorado domain name, the words “of Colorado”, and in the case of the Nevada domain name the words “Nevada Insurance Company”. The addition of these descriptive and/or geographic words “does nothing to dilute the impact and distinctiveness of the Complainant’s AAA service mark” (see The American Automobile Association Inc. v. Private Whois Escrow Domains Private Limited / K.A.L. Services,WIPO Case No. D2009-0822).
The Panel therefore finds that each of the disputed domain names is confusingly similar to the Complainant’s AAA trademark in which it has well established rights in the United States and abroad. B. Rights or Legitimate Interests
The Complainant has asserted that it has not licensed or authorized the Respondent to use its AAA trademark. There is no other basis upon which it could be concluded that the Respondent has any right or legitimate interest in the disputed domain names. The Respondent’s use of the disputed domain names to redirect to sites offering services in competition with the Complainant constitutes a blatant abuse of the Complainant’s rights and reputation in its trademarks and cannot therefore constitute use of the disputed domain names as a bona fide offering of goods or services. The Complainant has made a strong prima facie showing and the Respondent has said nothing in rebuttal of that showing.
The Panel therefore finds that the Respondent has no rights or legitimate interests in either of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant has been offering its goods and services under its AAA trademark for over a century. In that time it has established an extensive reputation for the goods and services which it offers under the trademark, not only in the United States, but internationally. Having regard to that and having regard to the Respondent’s use of the disputed domain names to direct traffic to third party websites offering services the same as, and in competition with, the Complainant leads inevitably to the assumption that the Respondent must have been aware of the Complainant’s rights and reputation and registered, and has subsequently used, each of the disputed domain names for the purpose of attracting Internet users to the websites to which the disputed domain names resolve. The Respondent has sought to profit from the confusion thus created by earning pay-per-click royalties.
The Panel therefore finds that each of the disputed domain names was registered and is 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 disputed domain names and be transferred to the Complainant.
Desmond J. Ryan AM
Sole Panelist
Dated: April 11, 2011
Full & Egal Universal Law Academy