Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling, United States.
Respondent is AAA Automotive of Monroe, North Carolina, United States.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2012. On April 24, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On April 24, 2012, GoD, LLC 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 April 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 18, 2012.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on June 20, 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 is a well-known automobile association that provides automotive-related goods and services using marks consisting of AAA or AAA along with other words or phrases relating to the automotive industry. Complainant also provides other goods and services using AAA and other marks, including insurance services, financial services, travel services, and discounts.
Complainant has a number of trademark registrations for AAA and AAA along with other words and phrases in class 37 and a number of other classes. These registrations specify dates of first use dating back to at least 1903. Many of these marks are incontestable.
Respondent registered the disputed domain name on June 18, 2011. The disputed domain name leads to a GoDaddy “parking page” with paid links to websites offering a variety of automobile-related goods and services, including Complainant’s website.
Complainant provided registration records indicating that Respondent registered a business named “AAA Transmission & Automotive Services, Inc.” with the North Carolina Secretary of State. That business currently is dissolved. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s marks – adding the generic term “automotive services” to Complainant’s AAA mark. Complainant asserts that this confusion is heightened by the fact that the generic term– “automotive services” – describes a central aspect of Complainant’s business. Complainant asserts that it has not licensed or authorized Respondent to use Complainant’s marks, that Respondent is not known by the disputed domain name because Respondent never used the disputed domain name in connection with Respondent’s own business and in any event Respondent’s business is dissolved, and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because it is using the disputed domain name for paid links. Finally, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith as a result of the use for paid links and due to the fame of Complainant’s marks at the time Respondent registered the disputed domain name incorporating those marks. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
Complainant’s trademark registrations and unrebutted long and extensive use demonstrate that Complainant has rights in the AAA mark and various related marks.
The disputed domain name consists of Complainant’s AAA mark, plus the generic words “automotive services” appended to the end, plus the “.com” gTLD. The addition of generic words to a trademark does not avoid confusing similarity to the mark. See Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TV, Inc. f/k/a Affinity Multimedia,WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). Indeed, as noted in another proceeding involving Complainant, “[t]he use of the descriptive term “automotive” does not serve to eliminate the confusing similarity. In fact in this case where the Complainant and Respondent are offering competitive product[s] and services (e.g., insurance, roadside assistance) and Respondent even refers to Complainant and its products and services on its website, use of “automotive” actually serves to increase the likelihood of confusion.” American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489. Similarly, the addition of the “.com” gTLD does not remove the confusing similarity between the disputed domain name and Complainant’s mark. Deutsche Lufthansa AG v. Nadeem Qadir,WIPO Case No. D2009-0003.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) of the Policy.
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] 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.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide offering of goods and services or fair use of the disputed domain name before receiving notice of this dispute. Rather, the submissions attached to the Complaint indicate that Respondent is using the disputed domain name in connection with paid links to Complainant’s and third parties’ websites. “The use of a domain name (that is identical or confusingly similar to a trademark) as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests.” See MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS,WIPO Case No. D2008-0009. See also The American Automobile Association, Inc. v. PSI,WIPO Case No. D2008-1931 (“The use of a domain name incorporating the Complainant’s AAA mark to attract Internet users to a pay-per-click website containing links to other providers of competing products and services does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.”).
Regarding the “commonly known” defense, Complainant asserts that because the disputed domain name was not used for Respondent’s business and because Respondent’s corporate registration with the North Carolina Secretary of state has been dissolved, that Respondent cannot argue it is commonly known by the disputed domain name. Complainant also cites Deutsche Kreditbank AG v. DKB Data Services (USA), Inc.,WIPO Case No. D2009-1084 (hereinafter “Deutsche Kreditbank”) for the proposition that the dissolution of a corporation and the discontinuation of the use of a business name precludes a respondent from being commonly known by the disputed domain name.
The Panel agrees that Respondent’s failure to use the disputed domain name for Respondent’s business makes it difficult for Respondent to argue that Respondent’s use of the disputed domain name caused Respondent to be commonly known by such domain name as a business or organization. However, in this Panel’s view dissolution of a corporate registration, without more, would not necessarily preclude a respondent from having been (or continuing to be, or intending to resume being) commonly known by the registered name. It is possible, for example, that the company was reincorporated in another state and that the registration in North Carolina was permitted to lapse. Of course, Respondent, having failed to submit a response, has not argued that such is the case here or that any other facts would explain the dissolution. However, it is noteworthy that the Deutsche Kreditbank decision, unlike this case, involved a respondent that had been dissolved for many years – thus the panel in that matter noted that “an entity that has not existed for many years and that does not respond to a complaint is unlike[ly] to have rights or a legitimate interest in a domain name.” In contrast, in Avio S.p.a. v. William Obeid,WIPO Case No. D2008-0295, the panel found rights and legitimate interests where the Respondent’s website “was used in connection with a bona fide offering of goods and services by the company owned by the Respondent even though this company is no longer in business.”
Nevertheless, nothing in the record indicates that Respondent has been commonly known by “AAA Automotive Services” or “”. Respondent’s corporate name was “AAA Transmission & Automotive Services, Inc.” and the holder of the disputed domain name is “AAA Automotive”. Perhaps it would not be a far leap to surmise that Respondent was known as “AAA Automotive Services”, but there is no evidence in the present record to that effect and Respondent, having failed to file a response, has not argued as much.
“[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. In this case, Complainant has made out such a prima facie case; Respondent has not rebutted it. See American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489; Dell Inc. v. George Dell and Dell Net Solutions,WIPO Case No. D2004-0512.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [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) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site 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] web site or location or of a product or service on [Respondent’s] web site or location.”
“The unauthorized use of Complainant’s trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.” Hoffmann-La Roche Inc. v. Kevin Chang,WIPO Case No. D2008-1344. See also The American Automobile Association, Inc. v. A Domain Privacy / Transure Enterprise Ltd.,WIPO Case No. D2010-0565 (“the use of a confusingly similar domain name to lure Internet users to a site hosting links to providers of competing products or services is prima facie evidence of bad faith”).
In addition, Respondent’s registration of the disputed domain name over 100 years after Complainant’s adoption and extensive use of the mark (i.e., at a time when Respondent almost certainly knew of Complainant’s trademark rights), and Respondent’s use of the mark for competitive purposes, also is evidence of bad faith. See American Automobile Association, Inc. v. Nevis Domains LLC, supra.
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy 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 disputed domain name be transferred to Complainant.
Bradley A. Slutsky
Sole Panelist
Dated: July 11, 2012
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