Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America.
Respondent is Alex Agahi of Irvine, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2012. On March 19, 2012, the Center transmitted by email to the Registrar a request for Registrar verification in connection with the Disputed Domain Name. On March 19, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name.
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 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 16, 2012. Further, on April 16, 2012, Respondent submitted an email communication in response to the Center’s Notification of Respondent Default stating, “why are you guys keep harassing me, if the domain was so important to you why didn’t you buy it in the first place, it is mine and I will keep it, stop your harassment. Make an offer an I will consider, till then stop.”
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 26, 2012. 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. (“AAA”) was founded in the early 1900s as an automotive club. Through its many local member clubs, AAA offers various products and services to the public, including automobile and travel insurance.
Complainant owns trademark registrations issued by the United States Patent and Trademark Office for several “AAA” trademarks which it has used in commerce since at least 1902 in connection with its automobile and insurance products and services. Those registrations include. United States Trademark Registration Numbers 829,265, 1,101,726, and 2,158,654. In addition to these federal registrations, Complainant has common law and state law rights in its AAA trademarks and also owns several international trademark registrations in various countries abroad.
For many years, Complainant has invested substantial resources in extensive advertising campaigns and promotions of its products and services under the AAA trademarks. The result is that the AAA trademarks are widely recognized by consumers in the United States and abroad and they have acquired significant goodwill as identifying the products and services of Complainant and its local member clubs.
Respondent registered the Disputed Domain Name on July 21, 2009.
On or around November 2011, Complainant learned that Respondent was using the Disputed Domain Name to host a parking page with pay-per-click links to automobile and homeowners insurance coverage offered by Complainant’s competitors.
On November 1, 2011, Complainant sent Respondent a cease and desist letter regarding Respondent’s unauthorized use of Complainant’s trademarks in the Disputed Domain Name. In response, Respondent informed Complainant by email that he would not relinquish the Disputed Domain Name unless Complainant offered to pay him an amount that “could justify all my last few years [sic] hard work to [get] my agency to here.”
On December 9, 2011, Complainant responded, reiterating its request that Respondent cease all further use of the Disputed Domain Name and explained that Complainant had no interest in purchasing the Disputed Domain Name from Respondent. Respondent failed to answer that letter and Complainant sent a final
cease and desist letter in December 2011, to which Respondent also failed to respond. 5. Parties’ Contentions A. Complainant
Complainant bases its Complaint on its continuous and longtime use of the AAA trademarks, registered in the United States and abroad. Complainant contends that its AAA trademarks have been promoted, advertised and used in connection with insurance products and services for many years, and thus, the AAA trademarks have become well known by the public to indicate products and services provided by Complainant. Complainant also contends that the evidence demonstrates that the Disputed Domain Name is confusingly similar to Complainant’s famous trademarks, that Respondent has no rights or legitimate interest in the Disputed Domain Name, and that Respondent registered and used the Disputed Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions in the Complaint.
Respondent, however, did respond to a November 1, 2011 cease and desist letter written by Complainant regarding Respondent’s infringing use of Complainant’s trademarks in the Disputed Domain Name. In his email response of the same date, Respondent informed Complainant that he would only transfer the Disputed Domain Name to Complainant if Complainant paid him an amount that “could justify all [his] last few years [sic] hard work to [get] [his] agency to here.” Respondent also claimed that he registered the Disputed Domain Name because the initials of his name are “AAA”.
Further on April 16, 2012, Respondent submitted an email communication in response to the Center’s Notification of Respondent Default stating, “why are you guys keep harassing me, if the domain was so important to you why didn’t you buy it in the first place, it is mine and I will keep it, stop your harassment. Make an offer an I will consider, till then stop.” 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) that respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that respondent has registered and is using the domain name in bad faith.
These elements are discussed as follows: A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name, which incorporates Complainant’s trademark in its entirety, is confusingly similar to that trademark. Complainant has valid and well established rights in its AAA trademarks. The word “insurance” in the Disputed Domain Name is descriptive and indicates that the website offers insurance products. The addition of the descriptive word “insurance” and the geographic term “usa” does not remove the similarity but increases the risk of confusion for consumers. Consumers would likely believe that any website to which the Disputed Domain Name would resolve offers Complainant’s automobile and insurance products and services.
A substantial number of previous UDRP panels have found that a domain name which wholly incorporates a complainant's trademark may be sufficient for a finding of confusing similarity under the Policy. See, e.g., The American Automobile Association, Inc. v. Rami Smair,WIPO Case No. D2009-0294 ( , and found confusingly similar to AAA trademarks for insurance services); The American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489 ( found confusingly similar to AAA trademarks for automotive products and services).
Further, it is well established that the addition of descriptive or generic words to a trademark does nothing to change an otherwise identical or confusingly similar domain name. See Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191 (confusing similarity found where “shop” and a hyphen were added to the trademark of the complainant in the disputed domain name). See also PRL USA Holdings, Inc. v. Unasi Management Inc.,WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity).
Accordingly, the first element of the Policy has been met by Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Name, or that Respondent has any authority, license or permission to use the Complainant’s trademark.
Furthermore, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Therefore, the Panel infers that Respondent is using the Disputed Domain Name to divert Internet users searching for Complainant’s website to its own website by capitalizing on the fame and goodwill of Complainant. This use does not constitute a legitimate interest in the Disputed Domain Name. See Owens Corning v. NA,WIPO Case No. D2007-1143. Finally, where Respondent has registered and used the Disputed Domain Name in bad faith (see below), this Panel finds that Respondent cannot be found to have made a bona fide offering of goods or services. C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Names; or
(ii) Respondent has registered the Disputed 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) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed 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 on Respondent’s website or location. Policy, paragraph 4(b).
The Panel finds that based on the record, and for the reasons set forth below, Complainant has demonstrated the existence of Respondent's bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, under the Policy, an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is evidence of bad faith registration and use. Policy, paragraph 4(b)(i). The only exception to this is where a respondent can show that it has rights to or legitimate interests in the domain name. Avnet, Inc. v. Aviation Network, Inc.,WIPO Case No. D2000-0046. The Panel, therefore, concludes that the offer to Complainant for the Disputed Domain Name by Respondent was made in bad faith.
Second, Respondent’s registration of the Disputed Domain Name after Complainant began to use and widely promote its distinctive trademark is also evidence that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where respondent registered the domain name after complainant established rights and publicity in complainant’s trademarks). As owner of the AAA trademarks, Complainant has been using AAA widely and continuously. Thus, it is extremely difficult to conceive of a plausible situation in which Respondent would have been unaware that AAA belonged to another party at the time of registration. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Third, Complainant has submitted evidence that the Disputed Domain Name resolves to a website displaying links for competing services and products offered by Complainant’s competitors. In other words, Respondent appears to have used the Disputed Domain Name in order to intentionally trade on the goodwill in the AAA trademark and to attract traffic to third party websites for commercial gain, which previous UDRP panels have concluded support a finding of bad faith. See NetWizards, Inc. v. Spectrum Enterprises,WIPO Case No. D2000-1768 (registration and use of a domain name to re-direct Internet users to websites of competing organizations constituted bad faith registration and use); Tarjeta Naranja S.A. v. MrD and Alejandro San Jorge,WIPO Case No. D2001-0295 (to link Internet users looking in their browsers for the well-known mark of complainant to a competitor’s website is a typical bad faith use under the Policy); AutoNation, Inc. v. Paul Schaefer,WIPO Case No. D2001-0289 (bad faith use and registration found where Respondent used confusingly similar domain name to sell competing products).
Finally, the website to which the Disputed Domain Name resolves had been set up to provide links to insurance products and services, on a pay-per-click basis. The Panel finds that here, this is further evidence of bad faith. See St. Baldrick’s Foundation Inc. v. Web Advertising, Corp.,WIPO Case No. D2007-0707 (“Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate ‘click-through’ sites, can be considered to be evidence of bad faith.”). It is reasonable to assume that the Disputed Domain Name generates revenue from the click-through referrals. Whether this revenue accrues directly to Respondent or to the Registrar, or to both, is immaterial. See Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912. This conduct additionally confirms that Respondent registered and used the Disputed Domain Name in bad faith. Conversely, the Panel finds that Respondent’s contention that he registered and used the Disputed Domain Name because the initials of his name are “AAA” is not at all credible.
Accordingly, the Panel finds that Complainant has established its case under the third element 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 Disputed Domain Name, , be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Dated: May 10, 2012
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