Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America (“United States”).
Respondent is AAA Auto Find of Bellingham, Washington, United States. 2. The Domain Names and Registrars
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 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.
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 October 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2012. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on November 9, 2012. 1
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 6, 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 has used its AAA marks in commerce for providing automobile-related products and services since at least 1902.
Complainant owns the following trademark registrations:
- United States trademark registration No. 829,265 AAA, registered on May 23, 1967;
- United States trademark registration No. 2,158,654 AAA, registered on May 19, 1998;
- United States trademark registration No. 2,622,335 AAA AUTO GUIDE, registered on September 17, 2002;
- United States trademark registration No. 2,900,596 AAA PREMIER, registered on November 2, 2004;
- United States trademark registration No. 4,081,146 AAA CARFACTS, registered on January 3, 2012;
- Canada trademark registration No. TMA430671 for AAA;
- Mexico trademark registration No. 763123 for AAA, registered on September 27, 2002;
- Benelux trademark registration No. 0534982 for AAA, registered on June 30, 1993;
- France trademark registration No. 93 475288 A-A-A, registered on July 5, 1997;
- Germany trademark registration No. 2086870 AAA, registered on December 12, 1994;
- and others.
The disputed domain names were registered on March 11, 2012, and expire on March 11, 2014. 5. Parties’ Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant owns the AAA trademark and numerous registrations therefor.
The disputed domain names are confusingly similar to Complainant’s AAA marks since they include the entire AAA mark with only the addition of the generic terms “car” and “find” and “auto” and “find”, respectively. Thus, the disputed domain names are identical or confusingly similar to the AAA trademark in which Complainant has rights.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent does not have any rights or legitimate interests with respect to its use of the disputed 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. There is no evidence that Respondent is commonly known by either of the disputed domain names. Although the registrant for the disputed domain names is AAA Auto Find, a registrant cannot establish that it is commonly known by a disputed domain name simply by providing contact information in the WhoIs database that is identical or substantially similar to the domain name. There is no evidence that Respondent was known by the name AAA Auto Find prior to the registration of the disputed domain name.
Respondent’s use of the disputed domain names to attract users to its website by creating confusion with Complainant’s famous AAA marks, is not a bona fide use of the disputed domain names. Further, 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. Respondent must have been aware of Complainant’s AAA marks when it registered the confusingly similar domain names and intended to divert Internet users who were seeking AAA automobile-related products and services to Respondent’s website offering competing services.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Respondent’s offer to sell the disputed domain names to Complaint is evidence of bad faith under the Policy. Respondent registered the disputed domain names to attract Internet users to Respondent’s website. Respondent’s registration and use of the disputed domain names, without any legitimate interest in the disputed domain names, constitutes disruption of Complainant’s business and is further evidence of bad faith registration. Respondent is using the disputed domain names to host a website offering automobile and other vehicle purchasing services in competition with Complainant.
Respondent’s knowledge of Complaint’s marks and the marks’ substantial fame in the United States and abroad, is further evidence of bad faith. Respondent registered the disputed domain names in 2012, well after Complainant began using its AAA marks in 1902.
Further, Complainant requested that Respondent transfer the disputed domain name to Complainant but Respondent ignored the requests. B. Respondent
The Respondent did not respond to Complainant’s contentions. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). 6. Discussion and Findings
Complainant must prove that: (i) the disputed domain names are 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 names; and (iii) the disputed domain names were registered and are being used in bad faith. (Policy, paragraph 4(a).) A. Identical or Confusingly Similar
Given Complainant’s trademark registrations and long use of the AAA marks in the United States and worldwide, the Panel finds that Complainant has trademark rights in the AAA mark.
The Panel also finds that the disputed domain names are nearly identical to or confusingly similar to Complainant’s AAA marks. The disputed domain names incorporate Complainant’s entire AAA mark and differs from Complainant’s registered AAA mark only by adding the generic terms “car” and “find” and “auto” and “find”, respectively, some of Complainant’s trademark registrations include these terms (See United States registrations 2,622,335 AAA AUTO GUIDE and 4,081,146 AAA CARFACTS). Moreover, because Complainant has a well-known reputation as a provider of automobile related services, the terms “autofind” and “carfind” will only increase the likelihood that internet users will be confused. The addition of the “.com” generic top-level domain (“gTLD”) does nothing to avoid confusion. See Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name “.com” is […] without legal significance since use of a gTLD is required of domain name registrants, […]”).
The Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the disputed domain name, it must show:
(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 names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain names. As Complainant states, Registrant cannot establish that it is commonly known by the disputed domain names simply by providing contact information in the WhoIs database that is identical or substantially similar to the disputed domain names. See Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453 (“[W]hat paragraph (ii) requires is evidence that the Respondent has rights prior to and not only following from use of the domain name.”); see also The American Automobile Association Inc. v. AAA-Vacationsunlimeted,WIPO Case No. D2009-0373 (“a registrant cannot establish that it is commonly known by a disputed domain name simply by providing contact information to the WHOIS database that is identical or substantially similar to the domain name.”) There is no evidence in this record in the form of business directories, business registrations or the like, that indicate that the Respondent was known by either of the disputed domain names.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names, and has not used the disputed domain names, or a name corresponding to the disputed domain names, in connection with a bona fide offering of goods or services.
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. See National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The ultimate burden of proof, however, remains with Complainant. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., Supra.
The Panel finds that the above facts establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names. Moreover, Respondent has not rebutted such a prima facie showing and therefore Complainant has succeeded with respect to this Policy element. C. Registered and Used in Bad Faith
Complainant’s allegations of bad faith registration and use are not contested. Also, it is highly unlikely that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain names on March 11, 2012, a date more than 110 years after Complainant’s AAA mark had been in continuous use and more than 45 years after Complainant obtained a United States trademark registration for AAA.
Under the Policy, paragraph 4(b)(iv), it is evidence of bad faith that, “by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, both the disputed domain names and resolve to the “www.” disputed domain name website. The “www.” website states, in part, “AAACARFIND.COM is dedicated to offering you the very best customer service available when purchasing a used car, truck, Boat or RV. LET US SAVE YOU THOUSANDS OF DOLLARS ON YOUR NEXT VEHICLE PURCHASE”. Respondent is obviously using the disputed domain names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to source. Further, it is well-settled that the adoption of well-known trademarks without permission or rights therein, particularly when used to advertise competitive goods/services is evidence of bad faith registration and use. See Six Continents Hotels, Inc. v. Telmex Management Services,WIPO Case No. D2001-0996 (“The deliberate adoption of Complainant’s well-known trademarks 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 [similar] service sites […] demonstrates bad faith use”).
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith. Therefore the Panel finds that Complainant has proven the third and final 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 names and be transferred to the Complainant.
Lawrence K. Nodine
Sole Panelist
Date: December 21, 2012
1 The Panel is satisfied that the Center has employed reasonably available means calculated to achieve actual notice to Respondent in accordance with paragraph 2 of the Rules.
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