Complainant is The American Automobile Association, Inc. of Florida, United States of America, represented by Covington & Burling, United States.
Respondent is Stanley Pace/ “Covington & Burling LLP”1 of Flower Mound, Texas, United States of America and Washington, DC, United States of America. 2. The Domain Names and Registrars
The disputed domain names and are registered with F and the disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2011. On June 8, 2011, the Center transmitted by email to June 8, 2011 a request for registrar verification in connection with the disputed domain names. On June 9, 2011, GoD, Inc. transmitted by email to the Center its verification response. GoD, Inc. confirmed that the Respondent is listed as the registrant and provided relevant contact details. F also responded on June 9, 2011. F provided contact information for Respondent that is identical to Complainant’s contact information. On June 30, 2011 Complainant informed the Center that it was not in control of the domain names which were “in their name” and requested the Center to proceed with the case.
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 July 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 25, 2011.
The Center appointed Andrew Mansfield as the sole panelist in this matter on August 3, 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
Complainant owns numerous United States federal trademark registrations and has developed extensive common law rights in the United States in its AAA and associated trademarks. These trademarks include:
United States Registration No. Date Mark Sample of Description of Goods or Services Associated with Mark
829,265
May 23, 1967
AAA
Automobile association services rendered to motor vehicle owners, motorists, and travelers generally; arranging for discount purchases; providing emergency road services; conducting motor vehicle tests and making tests of automotive and related products; disseminating travel information and making travel arrangements; and placing insurance with underwriters.
1,988,918
July 23, 1996
AAA RATED
Evaluating automobile repair shops.
2,158,654
May 19, 1998
AAA
Magazines, pamphlets, booklets, and
directories in the fields of travel information; travel agency services, namely, making reservations and booking for transportation; travel arranging services, namely, making reservations and booking for lodging; insurance brokerage services, namely, obtaining insurance, placing insurance with underwriters; emergency road services; and automobile.
2,900,596
November 2, 2004
AAA PREMIER
Providing referrals in connection with auto
body repair services; administration of a discount program; providing information about vehicles for sale; home lockout services, namely, locksmithing in the nature of opening locks for others.
3,162,780
October 24, 2006
AAA
Magazines, pamphlets, and books featuring travel information, traffic safety information, vehicle and vehicle repair information, driver instruction information, and touring and route information.
Complainant owns numerous trademark registrations in nations around the world tying its AAA mark to services related to automotive, travel, and insurance services. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has used its AAA Marks in commerce since at least 1902 and is well-known by the public for, among other things, providing emergency roadside assistance, publishing vehicle information, conducting motor vehicle tests, offering extended vehicle warranties and discount purchases, providing travel agency services, rating hotel accommodations, and providing insurance services.
Complainant alleges that the disputed domain names , , and are substantially and confusingly similar to Complainant’s trademarks. A domain name is confusingly similar to a trademark when the domain name includes the entire mark, even if generic and descriptive terms are added. In this proceeding, the word “in” and location “Athens” have been added to one mark. The generic terms “auto” and “auction” have been added to another trademark to form a second domain name. Finally, the generic terms “lock” and “company” have been added to the AAA mark in a third domain name.
Complainant concludes that Respondent’s use of the disputed domain names is likely to cause, and may have already caused, Internet users to become confused as to the source, sponsorship, affiliation, or endorsement of the disputed domain names.
Complainant alleges that Respondent has neither a legitimate interest in any one of the disputed domain names nor any legal right to use the domain names. Complainant has not licensed or authorized Respondent to use the marks in connection with its business or as part of the disputed domain names. Additionally, there is no evidence that Respondent is commonly known by the disputed domain names. Finally, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Complainant argues that Respondent registered and is using the domain names in bad faith. Complainant identifies a number of items that support these conclusions:
1. Respondent registered domain names that are confusingly similar to the AAA Marks to attract Internet users to websites providing pay-per-click links to AAA’s competitors;
2. Respondent’s registration and use of domain names that are confusingly similar to Complainant’s Marks, without any legitimate interest in those domain names, disrupts Complainant’s business;
3. Respondent had actual or constructive knowledge of Complainant’s marks, based on hundreds of United States and international trademark registrations and the substantial fame of those Marks in the United States and abroad;
4. Respondent has engaged in a pattern of registering infringing domain names; and,
5. Respondent offers to sell the disputed domain names through a prominent offer or link on each such domain name website.
Accordingly, Complainant requests that the disputed domain names be transferred to it. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
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 in respect to each of the disputed domain names; and,
iii. The disputed domain names are registered and are being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, Complainant must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383. Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate.”
The Panel proceeds to each of these elements below. A. Identical or Confusingly Similar
The disputed domain names consist entirely of Complainant’s registered trademark AAA and common or generic terms. Numerous UDRP panel decisions have reiterated that “the mere addition of common terms” to a trademark “does not change the overall impression of the designations as being a domain name connected to the Complainant.” PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; and America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184. In this case, the disputed domain names consist, variously, of the AAA mark and the words “in”, “Athens” “auto”, “auction”, “lock”,and “company”.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel is satisfied that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in a disputed domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith. If found, any one of these elements, though non-exclusive, may be found to be evidence of the registration and use of a domain name in bad faith.
i. Circumstances indicating that Respondent has registered or has acquired the domain names 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 your documented out of pocket costs directly related to the domain names; or
ii. Respondent has registered the domain names 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. Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
iv. By using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the 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.
In this matter, Complainant has introduced evidence that Respondent has a history of cyber-squatting and that Respondent offers to sell the domain names on its various websites. The Panel agrees with Complainant that it is unlikely that Respondent was not familiar with the AAA marks when it registered the disputed domain names. Indeed, the Panel finds that Respondent registered the disputed domain names for the purpose of profiting both from the advertising revenue available from misdirected Internet web users and from the potential sale of the disputed domain names to the trademark holder.
The Panel finds that Complainant has satisfied the requirements of paragraphs 4(b)(i) and 4(b)(iv) of the Policy. 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 names , , and be transferred to Complainant.
Andrew Mansfield
Sole Panelist
Dated: August 21, 2011
1 The Registrar F on June 9, 2011 confirmed that the registrant of the disputed domain names and was “Covington & Burling LLP”. Complainant confirmed on June 30, 2011, it was not in control of the domain name.
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