The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America (“United States”).
The Respondent is Top Business Names of “Grand Cayman (KY), GT”. 2. The Domain Name And Registrar
The disputed domain name is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2012. On November 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2012, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2012. In light of a procedural issue, the Center extended the Response Due Date until January 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Cherise Valles as the sole panelist in this matter on January 10, 2013. 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
The Complainant, AAA, bases its Complaint on its exclusive ownership of United States federal trademark registrations and common law rights in the United States in its AAA and associated trademarks (the “AAA Marks” or “Marks”), which it has used in commerce since 1902 in connection with a broad variety of goods and services, including automotive, insurance, financial, travel, and automobile glass-related goods and services. The Complainant has provided copies of its federal trademark registrations in Annex G.
The disputed domain name was registered on April 10, 2007. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on November 21, 2012, the Complainant asserts that:
-The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar or identical to the Complainant’s registered AAA Marks, in light of the fact that it wholly incorporates the Complainant’s Marks. The disputed domain name differs only from the registered trademark of the Complainant by the addition of the generic terms “auto” and “glass”.
-The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its Marks or to register any domain name that included its Marks.
-The disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent has not filed a formal response to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the domain name; and,
(c) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal response in these proceedings and is therefore in default and the Panel may draw appropriate inferences therefrom. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant submits that AAA has used its AAA Marks in commerce since 1902 and is well-known by the public for providing automotive goods and services, including automobile glass-related goods and services. It further submits that, as a result of AAA’s history and experience providing high quality products and services, as well as AAA and its member clubs’ continuous and extensive advertising, promotion, and sales of such products and services under the AAA Marks, these Marks are valuable and famous in the United States and abroad. See American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489. In addition, the Complainant owns international trademark registrations in Canada, Mexico, Benelux, France, Germany, Italy, Norway, Peru, Spain, Switzerland and China.
The Panel finds that the Complainant’s Marks are distinctive and well-known in the automotive goods and services industry, as evidenced by the Complainant’s Marks for various trademark registrations and by the number of years of use. The disputed domain name is confusingly similar to the AAA Marks. The disputed domain name contains the identical AAA letters. The fact that the disputed domain name wholly incorporates a mark owned by the Complainant supports the conclusion that it is confusingly similar to the AAA Marks in which the Complainant has rights.
In addition, “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446. See also Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423.
The Complainant submits that although the risk of consumer confusion exists any time a mark is combined with a generic or descriptive term in a domain name, that risk is particularly great where the term describes a central aspect of the Complainant’s business, as in this case. Such a combination “in all likelihood heightens the confusion.” The American Automobile Association, Inc. v. PSI,WIPO Case No. D2008-1931; see also The American Automobile Association Inc. v. AAA-Vacationsunlimeted,WIPO Case No. D2009-0373. In this case, the Complainant submits that adding the generic terms “auto” and “glass” to AAA likely heightens consumer confusion because AAA is well-known for offering automobile glass-related products and services to its members. The Panel concurs.
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Complainant submits that AAA has established its rights to the AAA Marks and has not licensed or authorized the Respondent to use the Marks in connection with its business or as part of the disputed domain name. In effect, it asserts that AAA has made a prima facie showing that the Respondent lacks rights in the disputed domain name. See American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489, supra and that this showing shifts the burden to the Respondent to provide evidence of its rights or legitimate interests in the disputed domain name. Id. As noted above, the Respondent has not filed any response and has not provided any evidence of its rights or legitimate interests in the disputed domain name.
The Complainant further submits that there is no evidence that the Respondent is commonly known by the domain name and that the Respondent’s use of the disputed domain name to host pay-per-click advertisements for goods and services that compete with those offered by AAA constitutes “neither bona fide offerings of goods or services” nor “legitimate noncommercial or fair uses” The American Automobile Association, Inc.v. Jack Holder, NAF Case No. FA1227171. Given the notoriety of the AAA Marks, the Complainant submits that the Respondent must have been aware of AAA and its Marks when it registered the confusingly similar domain name with the intention to divert Internet users seeking AAA products and services to its websites hosting pay-per-click advertisements for competing products and services. See The American Automobile Association Inc. v. Private Whois Escrow Domains Private Limited / K.A.L. Services,WIPO Case No. D2009-0822.
The Complainant further submits that the Respondent is making commercial use of the disputed domain name by using it to host parking sites with pay-per-click links for services that compete with those offered by AAA. See Hertz System, Inc. v. D / Compsys Domain Solutions Private Limited,WIPO Case No. D2009-0615.
In the light of the foregoing, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds the 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
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its website or location.
The Complainant submits that the Respondent registered and has used, and is continuing to use, the disputed domain name in bad faith. In particular, the Respondent has registered a domain name confusingly similar to the AAA Marks to attract Internet users to its websites containing pay-per-click advertisements. Use of the AAA Marks in the disputed domain name creates a likelihood of confusion for Internet users as to the source, sponsorship, affiliation, or endorsement of the parking pages associated with the disputed domain name. Indeed, the Complainant notes there is “no plausible reason in the circumstances that the Respondent would add the letters ‘aaa’ to [generic terms] in the domain name at issue here, except that the Respondent desired to confuse Internet users with an association with the Complainant’s famous AAA trademark.” American Automobile Association Inc. v. Texas International Property Associates,WIPO Case No. D2007-0592. Thus, the Complainant submits that the Respondent’s use of the disputed domain name that incorporates the AAA Marks to direct confused consumers to websites with pay-per-click advertisements for AAA’s competitors, without any legitimate interest in the disputed domain name and for purposes of pecuniary gain, is prima facie evidence of bad faith under paragraph 4(b)(iv) of the Policy. See The American Automobile Association, Inc. v. A Domain Privacy / Transure Enterprise Ltd.,WIPO Case No. 2010-0565.
The Complainant further submits that the Respondent’s use of the disputed domain name appears to be an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, Research in Motion Limited v. International Domain Name Inc. / Moniker Privacy Services,WIPO Case No. D2008-0780. In particular, the Complainant submits that the Respondent’s unauthorized use of the Complainant’s trademark to generate pay-per-click revenue or to sell competitive products disrupts the Complainant’s business and thus constitutes bad faith under paragraph 4(b)(iii) of the Policy. See Hoffmann-La Roche Inc. v. Kevin Chang,WIPO Case No. D2008-1344.
The Complainant further submits the Respondent has a history of registering domain names that infringe trademark rights of both AAA and third parties. Since 2009, Top Business Names has been a Respondent in nine UDRP proceedings before WIPO and the National Arbitration Forum, and it has been ordered to transfer the disputed domain names to the Complainants in all but one of those proceedings. See e.g., The American Automobile Association, Inc. v. BWI Domains, Top Business Names, World Idea Business,WIPO Case No. D2010-0319.
Lastly, the Complainant submits that the Respondent had actual or constructive knowledge of the AAA Marks, based on United States and international registrations and the Marks’ substantial fame in the United States and abroad, and this is further evidence of bad faith. See American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489. In particular, the Respondent first registered the disputed domain name in 2007, well after AAA began using its famous AAA Marks in commerce in 1902. Moreover, the Respondent failed to withdraw its infringing registration and continued to use the disputed domain name after AAA gave the Respondent written notice of its rights in December 2010 and thereafter.
In the light of the foregoing, the Panel finds that the Complainant’s AAA trademarks are well-known in connection with automotive goods and services, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has registered and maintained the domain name in bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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.
Cherise M. Valles
Sole Panelist
Date: January 23, 2013
Full & Egal Universal Law Academy