Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America represented by Covington & Burling, United States of America.
Respondent is 555 Metro Airport Transportation Service LLC of Dearborn, Michigan, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2011. On April 1, 2011, the Center transmitted by e-mail to Wild West Domains, Inc a request for registrar verification in connection with the Domain Name. On April 3, 2011, Wild West Domains, Inc. transmitted by e-mail 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 April 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 27, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 4, 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.
On May 10, 2011, nearly two weeks after the notification of Respondent’s default, Respondent submitted a Response to the Complaint. On May 12, 2011, Complainant submitted a Reply to the belated Response. On May 14, 2011, Respondent submitted a Response to Complainant’s Reply. The Panel has reviewed these belated filings, but, as discussed in Section 5.B below, the Panel has given no little weight to these three tardy submissions. 4. Factual Background
Complainant is an automobile association of long standing and considerable renown. Under its AAA family of marks, Complainant has offered a variety of services to motorists, including towing services and insurance. Complainant has used the AAA marks in commerce for many decades, and has several registered trademarks of AAA going back for many years.
The Domain Name was registered on November 25, 2008. The Domain Name resolved to a website featuring pay-per-click advertisements for automobile towing services, automobile insurance, automobile loans, and used car dealerships. Some of these links were to Complainant itself, while others were to competitors of Complainant.
Complainant sent Respondent a cease-and-desist letter on June 3, 2009. Complainant noted, among other things, that Respondent’s infringing Domain Name resolved to a website where there were links to Complainant and to services in competition with Complainant.
Respondent advised on June 17, 2009 that he was represented by counsel. On July 6, 2009, Respondent’s counsel advised that Respondent would be willing to transfer the Domain Name if Complainant paid for Respondent’s “investments.” No further communication occurred until October 5, 2009, when Complainant followed up with Respondent’s counsel. In November 2010, Respondent renewed the registration of the Domain Name. In January 2011, Complainant sent further cease-and-desist communications to Respondent. Again, Complainant noted that the website to which the Domain Name resolved continued to feature a link to Complainant. No further response was received from Respondent or its counsel.
In none of the written communications preceding this Complaint (and part of this record) did Respondent attempt to explain its purported business or articulate some legitimate reason for its use of the Domain Name. In its uncertified, and hence disregarded, Response, Respondent offered a purported explanation for its selection of the Domain Name in connection with some inchoate business plans. No documents accompanied this uncertified assertion. 5. Parties’ Contentions A. Complainant
Complainant’s salient factual assertions are set forth above. Complainant asserts that it has satisfied the three elements of the Policy and is entitled to a transfer of the Domain Name. B. Respondent
Respondent did not submit a timely Response to Complainant’s contentions. More importantly, the Response does not contain a certification, even though it appears clear that Respondent was using a model response form (which contains a two-paragraph certification).
Paragraph 5(b)(viii) of the Rules requires that a respondent sign and certify its response. Some prior panels have disregarded responses in cases under the Policy because the responses were not certified. See, e.g., America Online, Inc. v. Quik-E Inc.,WIPO Case No. D2001-1141; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.
The certification is important in a proceeding under the Policy. These proceedings are already streamlined and are decided based on the submissions of the parties, with very limited opportunity for a panel to test the credibility of the parties making assertions. A respondent in proceedings under the Policy is required to certify various matters, including that “the information contained in this Response is to the best of the Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose…” The lack of this basic certification of accuracy is significant; it leaves little room for a panel to confer credibility on anything a respondent has asserted. Consequently, and according to paragraphs 10 and 12 of the Rules, the Panel in the instant case has decided not to consider the untimely and uncertified Response, the Reply thereto by Complainant, and Respondent’s response to the Reply. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There is no question that Complainant has rights in the registered mark AAA, and that AAA is a well-known mark in the realm of things automotive. Complainant’s offerings to motorists are wide-ranging, and are known to be so. Against this backdrop, the addition of the term “metro cars” to the AAA mark does little to dispel confusing similarity between the Domain Name and the AAA mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174, correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a certified Response and hence did not effectively rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. Even if the Panel were inclined to consider Respondent’s uncertified assertions about inchoate plans to use the Domain Name in connection with a future business endeavor, the strength of Complainant’s AAA mark in the automotive field would call the legitimacy of any such endeavor into question.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent is in “bad faith” under paragraph 4(b)(iv) of the Policy.
Specifically, the Panel concludes that Respondent probably had Complainant’s AAA mark in mind when registering the Domain Name. This conclusion is reached because the Domain Name not only includes the mark AAA but also includes the descriptive word “metro cars” – a term that calls to mind the wide-ranging suite of services offered under the AAA mark within the automotive industry. Further, Complainant has alleged that the site to which the Domain Name resolved contained click-through advertisements. It is significant in this vein that Complainant objected to the hyperlinks in its initial cease-and-desist letter in June 2009, and Respondent evidently did nothing to remove the offending links between that time and the final cease-and-desist letter of January 2011. It is therefore possible to conclude, based on the record admitted in this case, that Respondent has intentionally sought to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion between the AAA mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Dated: May 17, 2011
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