Complainant is The American Automobile Association, Inc., of Heathrow, Florida, United States of America (“USA”), represented by Covington & Burling, USA.
Respondent is Emil Cohen, World Marketing of Sherman Oaks, California, USA. 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 August 15, 2012. On August 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 20, 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. On August 17, 2012, the Center received an email communication from Complainant which made reference to an email communication the Complainant received from Respondent on August 15, 2012, as discussed in more detail below.
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 August 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2012. On August 23, 2012, the Center received an information email communication from Respondent, as discussed in more detail below. On August 24, 2012, Complainant forwarded to the attention of the Center an email communication it received from Respondent on August 23, 2012, as discussed in more detail below. Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on September 18, 2012.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 28, 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 states that it has used the AAA Trademark (defined below) since 1902 in connection with “a broad variety of goods and services, including insurance, automotive, financial, travel, and discount goods and services” and that it “is well-known by the public for automobile-related services, including emergency roadside assistance.”
Complainant states, and provides relevant details therefor, that it owns a number of trademarks that consist of or contain the mark AAA in the United States, Canada, Mexico, Benelux, France, Germany, Italy, Norway, Peru, Spain, Switzerland and China, as well as a Community Trademark (collectively, the “AAA Trademark”), the first of which was used in commerce in 1902, including the following in the United States for use in connection with various automotive-related goods and services: U.S. Reg. Nos. 829,265; 1,327,400; 2,158,654; 2,900,596; 2,935,481; and 3,831,880.
Complainant states, and provides evidence to support, the following: the Disputed Domain Name was previously used (in February 2012) by Respondent to advertise a business known as LVH Systems Truck Repair Services, which provides 24-hour emergency roadside assistance for trucks and commercial vehicles. After Complainant contacted Respondent about the Disputed Domain Name, Respondent offered to sell the Disputed Domain Name for USD 20,000. After Complainant rejected Respondent’s offer and sent a demand letter on March 19, 2012, Respondent removed the content from the website associated with the Disputed Domain Name. However, “around July 2012” Respondent resumed use of the website with the previous content.
The Disputed Domain Name was created on November 9, 2011. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the AAA Trademark because it includes the entire mark and adds generic terms that “describe[] a central aspect of Complainant’s business.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Complainant “has not licensed or authorized Respondent to use the [AAA Trademark] in connection with its business or as part of the disputed domain name”; “there is no evidence that Respondent is commonly known by the domain name”; “Respondent’s use of the disputed domain name to attract users to its websites by creating confusion with Complainant’s famous AAA [Trademark]”; and “Respondent assuredly was aware of AAA and its Marks when he registered the confusingly similar domain name and intends to divert Internet users seeking AAA roadside assistant services to Respondent’s website offering competing roadside assistance services.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent offered to sell the Disputed Domain Name to Complainant for USD 20,000; Respondent disrupts Complainant’s business by “using the domain name to host a website offering roadside assistance services in competition with” Complainant; and Respondent had “actual or constructive knowledge of” the AAA Trademark B. Respondent
Although Respondent did not reply to Complainant’s contentions, Complainant forwarded to the Center an email communication it received from Respondent on August 15, 2012, in which Respondent stated: “I understand what you write but i pay lots of money for developing the website and hosting it so if you would like to have it please buy it for me. i all ready offer this domain for sale so why don’t you buy it will cost you $6,500 please make payment so i can tranfer this domian name to you.”
Complainant also forwarded to the Center an email it received from Respondent on August 23, 2012, in which Respondent stated: “Hi there regard WIPO Arbitration for the domain name i want you to buy this domain name from me for $6,500 please provide your respond so we can process this deal.”
And, on August 23, 2012, Respondent sent an email to the Center stating: “Hi there i want AAA to buy the domain name for $6,500 from me, it's for sale, this is my offer since i have no attantion giving it way i invest lots of money building the website and for development. please provide payment method for this domain name.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant it is apparent that Complainant has rights in and to the AAA Trademark. This is consistent with previous decisions under the Policy relating to the AAA Trademark. See, e.g., American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489 (“Complainant has established its rights in the AAA Marks based on its long-standing use of them on products and services that include automotive, insurance, financial, and travel-related and multiple registrations of the AAA Marks with the PTO.”)
As to whether the Disputed Domain Name is identical or confusingly similar to the AAA Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “aaaroadsideassistance”), as it is well-established that the top-level domain name (i.e., “.info”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Further, the addition of certain words, as here (that is, “roadside” and “assistance”), can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill,WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”))).
Here, because the words “roadside” and “assistance” are associated with the AAA Trademark, these words increase the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou,WIPO Case No. D2011-1017 (finding the domain name confusingly similar to the trademark GUCCI).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, “Complainant “has not licensed or authorized Respondent to use the [AAA Trademark] in connection with its business or as part of the disputed domain name”; “there is no evidence that Respondent is commonly known by the domain name”; “Respondent’s use of the disputed domain name to attract users to its websites by creating confusion with Complainant’s famous AAA [Trademark]”; and “Respondent assuredly was aware of AAA and its Marks when he registered the confusingly similar domain name and intends to divert Internet users seeking AAA roadside assistant services to Respondent’s website offering competing roadside assistance services.”
Under the Policy, “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 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Numerous decisions under the Policy have found that using a domain name under the facts here, in connection with a website offering services similar to those offered by a complainant under the relevant trademark, is bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See e.g., American Automobile Association Inc. v. Texas International Property Associates,WIPO Case No. D2007-0592 (finding bad faith where “Respondent offers on the website connected to the domain name products and services that compete directly with Complainant’s”); and Six Continents Hotels, Inc. v. Telmex Management Services,WIPO Case No. D2001-0996 (“The deliberate adoption of Complainant’s well-known trade marks without any apparent right or interest therein, raises a prima facie presumption of bad faith registration, and Complainant’s demonstrated use of the domain names to link to other [competing] service sites… demonstrates bad faith use”)
Accordingly, the Panel finds that Complainant has proven 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 domain name be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: October 5, 2012
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