Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America (hereinafter ‘’AAA”), represented by Covington & Burling, United States of America.
Respondents are Domains By Proxy, LLC. and Arkady Dorf of Scottsdale, Arizona, United States of America and San Jose, California, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain names and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2012. On May 7, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain names. On May 7, 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 for the disputed domain names.
The Center verified that the Complaint satisfies 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 May 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 15, 2012.
The Center appointed Paul E. Mason as the sole panelist in this matter on June 15, 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.
Domains by Proxy, LLC. is also a listed Respondent in this case because as its name implies, this company registers domain names for its clients on an anonymous basis. According to page 3 of the Complaint, the disputed domain names were registered by Domains by Proxy on behalf of co-Respondent Arkady Dorf who had originally registered them previously. 4. Factual Background
Complainant has been engaged in promoting and providing a wide variety of automotive related products and services for over 100 years.
According to page 5 of the Complaint, the AAA has used its trade and service mark AAA regularly in commerce in the United States since 1902 (which grants legal rights in the mark), with registrations of the mark as far back as 1967. The AAA has also registered its AAA mark in countries such as Canada, Mexico, the Benelux countries, Germany, amongst others. According to page 6 of the Complaint, United States court decisions as well as UDRP decisions have also referenced the AAA mark as a so-called “famous mark”. 5. Parties’ Contentions A. Complainant
(i) Similarity of the disputed domain names to Complainant’s trade and service marks:
Complainant contends that the first letters AAA of the disputed domain names are identical to its marks. Addition of generic term suffixes such as “personal car shopper” and ”car care personal car shopper” do not change this fact.
(ii) Lack of legitimate interest by Respondents in the disputed domain names:
Complainant did not license or otherwise authorize Respondents to use its mark AAA.
(iii) Bad faith registration and use of the disputed domain names:
Complainant alleges bad faith registration of the disputed domain names, largely based on the fact that its marks are so well-known as to be famous marks. It also argues that Respondent Arkady Dorf purposely attempted to conceal his identity by re-registering the domain names anonymously with co-Respondent Domains by Proxy, LLC after Complainant sent him cease and desist letters.
Complainant also alleges bad faith use of the disputed domain names based on screen shots of the websites to which the disputed domain names resolve. These websites are claimed to offer products and services which compete with those of the Complainant. B. Respondent
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Numerous UDRP decisions have concluded that mere addition of generic prefixes or suffixes to a mark do not dispel the similar look and feel of a disputed domain name to a complainant’s trade or service mark.
Furthermore, a domain name which entirely incorporates a trade or service mark will look even more similar to that mark. And when the mark is at the very beginning of the domain name, the confusion only increases in the mind of an Internet user.
Therefore this Panel finds the disputed domain names to be confusingly similar to Complainant’s mark. B. Rights or Legitimate Interests
Complainant states flatly that it has granted no rights or interests to Respondents in its AAA mark. The Panel considers that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. The burden therefore shifts to Respondents to show that such interests do indeed exist. Since Respondents have not answered the Complaint, this Panel finds that they have no such interests. C. Registered and Used in Bad Faith
Respondents have offered no explanation for their behavior with respect to the registration of the disputed domain names. Complainant, on the other hand, has made out a strong case showing that the AAA mark is indeed famous and that Respondent Dorf may well have attempted to conceal his identity after cease and desist letters were sent. Therefore, this Panel finds that registration of the disputed domain names was done in bad faith.
On the issue of bad faith use of the disputed domain names, this Panel visited the websites to which the disputed domain names resolve and found home pages almost identical to the screenshots included in annexes to the Complaint. These pages do indeed advertise and promote products and services which look to compete with those of Complainant. Not only that, these pages also have links to the AAA’s own websites, carrying an implication that the AAA has approved these sites, especially in light of the fact that there is no disclaimer that these sites are not in any way affiliated with the AAA
This is the core of bad faith use of a disputed domain name – to promote products or services competing with those of the legitimate trademark owner. Therefore this Panel does conclude that the disputed domain names were registered and used in bad faith by Respondents. 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 the Complainant.
Paul E. Mason
Sole Panelist
Dated: June 15, 2012
Full & Egal Universal Law Academy