The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
The Respondent is Karen Bell of Wantirna South, Australia / Domains by Proxy, LLC of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Karen Bell is listed as the registrant and providing the contact details. In response to a request for confirmation from the Center, the Complainant filed an amendment to the Complaint on May 30, 2013.
The Center verified that the Complaint together with the amendment to 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 June 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2013.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on July 1, 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
In the absence of a Response, the Panel has had to rely upon the evidence adduced by the Complainant and which the Panel finds to be true.
The Complainant is the owner of a number of United States (“US”) trademarks and common law rights in its AAA and associated trademarks (the “marks”). It has long used the marks in commerce in connection with a broad variety of goods and services, including automotive insurance, financial and travel related goods and services. At Annex H to the Complaint are extracts from the United States Patent and Trademark Office (“USPTO”) website setting out copies of some of these marks as registered. These include the word mark AAA and a logo incorporating AAA.
In particular, the Complainant relies upon two US registrations numbers 829265 for the mark AAA in respect of automobile association services, registered on May 23, 1967, and 2158654 for the mark AAA registered in relation to magazines, pamphlets, booklets, directories, traffic safety information and travel agency services, registered on May 19, 1998.
The Complainant is also the owner of a large number of trademarks registered overseas for AAA including in Canada, Benelux, France, Germany, Italy, Peru, Spain, Switzerland, European Community and China.
The Complainant asserts that the Respondent has used its marks in commerce since at least 1902 and is well known by the public for providing automobile, travel related and discount goods and services. As a result of the Complainant’s history and experience in providing high quality goods and services, as well as AAA’s and its members clubs’ continuous and extensive advertising, promotion and sales of such products and services under the marks AAA, the marks are valuable and famous in the United States and abroad. This has been recognized in a number of court decisions in the United States and also in an earlier UDRP decision.
The disputed domain name was registered on July 1, 2010. The Complainant asserts that the Respondent has continuously used the disputed domain name to host a website with pay per click advertising links which include an unauthorized link to the Complainant’s website and links to, amongst other things, travel related products and services that compete with products and services offered by the Complainant. A screen extract of these is set out at Annex A to the Complaint.
The history of the dispute is that on January 25, 2013 the Complainant sent a letter to the Respondent demanding that she cease all use of the disputed domain name and that she immediately transfer registration of the domain name to the Complainant. In response, the Respondent disclaimed knowledge of the website associated with the disputed domain name. When the Complainant sought clarification from the Respondent as to whether she registered the domain name through Domains by Proxy LLC, she acknowledged paying a “small amount of money to a domain name company online but stated that she had never received information about ownership of a domain name”. Based on its understanding that the Respondent is the true registrant of the disputed domain name, the Complainant then requested that the Respondent contact the registrar to facilitate transfer of the domain name to the Complainant. The Respondent failed to respond to this request. The Complainant again contacted the Respondent on March 6, 2013 to request that she cease all use of the disputed domain name and immediately transfer registration to the Complainant. Again she failed to respond to this request. At Annex E to the Complaint is exhibited the relevant correspondence. 5. Parties’ Contentions A. Complainant
The Complainant submits:
1. That the disputed domain name is confusingly similar to the Complainant’s marks. In particular, it submits that the generic terms “top”, “travel” and “online” when added to AAA heighten customer confusion because of AAA’s own reputation in offering travel related products and services to its members. It relies upon the alleged consumer confusion to show that the disputed domain name is confusingly similar to the Complainant’s marks.
2. The Respondent has no rights or legitimate interest in the disputed domain name. The Complainant points out that it has established rights in the marks and has not licensed or authorized the Respondent to use the marks. There is no evidence that the Respondent is commonly known by the disputed domain name and that there is no bona fide offering of goods or services by the Respondent.
3. The disputed domain name is registered and is being used in bad faith. The Complainant relies upon the activities of the Respondent in registering a domain name confusingly similar to the marks, that it has registered and used the domain name to host a website with pay per click advertisements for products and services that compete with those offered by the Complainant. The Complainant submits that the Respondent’s actual or constructive knowledge of the Complainant’s marks entitles it to show that the Respondent must have acted in bad faith. It submits that the concealment of the Respondent’s identity through use of a proxy service may constitute further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant, in essence, relies upon the submission that the disputed domain name consists of the three letters AAA in conjunction with “toptravelonline”. It submits that these latter terms are generic.
In the absence of submissions to the contrary from the Respondent, the Panel is prepared to accept the submission and find for the Complainant.
The Panel is supported in this view by the Complainant’s submission that the addition of the generic terms “top”, “travel”, “online” to AAA heighten consumer confusion because the Complainant is well known for offering travel related products and services to its members through its websites. An example of such a website is set out at Annex D to the Complaint. The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel therefore finds for the Complainant in respect of this element. B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has not in any way licensed or authorized the Respondent to use the marks. There is no evidence before the Panel that the Respondent is commonly known by the disputed domain name. Moreover, the Respondent’s use of the disputed domain name to host pay per click advertisements for the Complainant’s own website as well as for goods and services that compete with those offered by the Complainant does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The Respondent has not filed a Response. Accordingly, the Panel finds for the Complainant in respect of this element. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith.
The Respondent registered a confusingly similar domain name to attract Internet users to her website containing pay per click advertisements. Given the use by the Respondent of the disputed domain name for her website for the purpose of pay per click links to travel related products and services competing with those offered by the Complainant, the Panel is in no doubt that the use of the disputed domain name creates a likelihood of confusion for Internet users as to the source, sponsorship, affiliation or endorsement of the website associated with the disputed domain name.
There is no evidence before the Panel that the Respondent would have registered or used the disputed domain name other than to confuse Internet users with an association with the Complainant’s marks. The use of the disputed domain name is to direct confused consumers to a website with pay per click advertisements for the Complainant’s competitors. The Panel finds that this is evidence of bad faith registration and use, in accordance with paragraph 4(b)(iv) of the Policy.
Further evidence of the Respondent’s bad faith is set out in the correspondence between the Complainant and the Respondent in which the Complainant notified the Respondent of its rights in its marks in two demand letters and numerous emails and telephone conversations. The Respondent took no action.
It follows that the Panel finds for the Complainant in respect of this element. 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.
Clive Duncan Thorne
Sole Panelist
Date: July 19, 2013
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