The Complainant is The American Automobile Association, Inc., of Heathrow, Florida, United States of America (“U.S.”) represented by Covington & Burling, U.S.
The Respondent is John Costelac of Fort Lauderdale, Florida, U.S. represented by Jacqueline Tadros, Florida, U.S. 2. The Domain Name and Registrar
The disputed domain name (the “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 July 3, 2013. On July 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 4, 2013, the Registrar transmitted its verification response to the Center by email confirming the Respondent as the registrant and provided the registrant’s 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint and the proceedings commenced on July 8, 2013. In accordance with paragraph 5(a) of the Rules, the due date for filing a Response was July 28, 2013. The Respondent filed a Response with the Center on July 28, 2013. On July 31, 2013, the Complainant made an unsolicited supplemental filing (identified as a reply to the Respondent’s Response) with the Center.
The Center appointed Marylee Jenkins as the sole panelist in this matter on August 26, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant bases its Complaint on its exclusive ownership of U.S. Trademark Registration Nos. 829,265 and 2,158,654 for the mark AAA and AAA and design, respectively, and common law rights in the United States in these marks and associated marks (“AAA Marks”), which it has used in commerce for numerous years in connection with a broad variety of goods and services, including automotive, transportation, insurance, financial and travel-related goods and services. The Complainant has provided copies of its federal registrations with its Complaint.
The Domain Name was registered on January 5, 2010 and is set to expire on January 5, 2014. The Domain Name is registered in the name of the Respondent, John Costelac. 5. Parties’ Contentions A. Complainant
The Complainant bases the Complaint on its ownership and long-term use of the AAA Marks for goods and services, including automobile association services rendered to motor vehicle owners, motorists and travelers, and among others, providing emergency road service; magazines, pamphlets, booklets, and directories in the fields of travel information, traffic safety, vehicle information and repair; and driver instruction, emergency road services, and among others, consumer product safety testing and consultation, namely, conducting motor vehicle tests and endurance tests, and making tests of automotive and related products, and cites the above-referenced U.S. Trademark registrations.
The Complainant contends that the Domain Name is confusingly similar to its AAA Marks, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and the Domain Name was registered and is being used in bad faith by the Respondent to create a likelihood of confusion with the AAA Marks with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Particularly, the Complainant alleges that the Respondent is using the Domain Name intentionally to divert Internet users seeking the Complainant’s AAA automobile-related products and services to the Respondent’s website. B. Respondent
The Respondent asserts that it has at no time attempted to pass itself off as the Complainant or to present the website associated with the Domain Name as anything other than what it is, namely, “a website which provides information for, and advertises the Respondent's business, namely, automobile, motor cycle, motor home, etcetera, transport.” The Respondent further asserts that the Domain Name was not registered or acquired with the purpose of selling or transferring it to the Complainant, and that it did not register the Domain Name to prevent the Complainant from reflecting its AAA Marks in a corresponding Domain Name. The Respondent asserts that the letter string “AAA” is generic, that a wide variety of industries use the letter string “AAA” to convey a positive impression of a company with a solid and reliable business practice and that the public has been long acquainted with the “pervasive use of the letters AAA by businesses in every industry.” The Respondent further alleges that its use of “AAA” in the Domain Name was not because of any desire to suggest an affiliation with the Complainant but rather because the letter “A” is the first letter of the alphabet and the letter “A” has a positive connotation, particularly, in the world of the business.
The Respondent further asserts that the Domain Name is not identical or confusingly similar to the Complainant’s AAA Marks. The Respondent contends that the Complainant’s AAA Marks are a short three letter acronym representing a wholly generic mark (American Automobile Association) and is only a small fraction of the characters in the Domain Name. The Respondent asserts that the Domain Name and the Complainant’s AAA Marks are generic and that the Respondent’s use of “AAA” in the Domain Name is generic and colloquial. The Respondent further asserts that the rights/interests inquiry is more likely to favor the domain name owner where the domain name and the trademark in question are generic. The Respondent argues that the Respondent has acquired valuable goodwill in the Domain Name over the course of the past 3.5 years and it should not be denied its legitimate right to continue to use the Domain Name in its business.
The Respondent asserts that the letters “AAA” are used repeatedly by an incalculable number of companies in the automotive and transportation industries as well as other industries and provides examples of websites and information from the Secretary of State for the State of Florida with the Response. The Respondent therefore asserts that the Complainant's allegations of likelihood of confusion are unfounded and that the Complainant is merely seeking to curtail legitimate trade by attempting to deprive the Respondent of its legitimate use of the Domain Name.
The Respondent also contends that it has a legitimate interest in the Domain Name. Particularly, the Respondent argues that the Respondent has a legitimate interest in using the Domain Name since it resolves to an active website that provides information on the “Respondent's services, namely, automobile, motor cycle, motor home, etcetera, transport and has been in continuous use for over three and one half years.” The Respondent further asserts that the website does not imply an affiliation with the Complainant, does not divert consumers or tarnish the Complainant's alleged AAA Marks and is associated with an ongoing business that generates revenue and is self-sustaining. The Respondent states that it is an entrepreneur and not a cybersquatter and did not register the Domain Name to sell it to the Complainant or divert customers from the Complainant. The Respondent asserts that the Complainant is unfairly attempting to selectively enforce its alleged rights.
The Respondent asserts that it did not register and is not using the Domain Name in bad faith. Particularly, the Respondent asserts that the Respondent did not acquire the Domain Name primarily for the purpose of selling the Domain Name to the Complainant and has never offered to sell the Domain Name to the Complainant. The Respondent asserts that it did not register the Domain Name to disrupt the Complainant's business, create a likelihood of confusion or ever attempt to imply any affiliation or endorsement of the Respondent by the Complainant. The Respondent further asserts that the widespread and long term usage of the letters AAA in domain names used by third parties in all industries, including automotive and shipping, utterly negates the Complainant's allegations of bad faith and highlights the Complainant's selective and arbitrary enforcement of its alleged rights. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Unsolicited Supplemental Submission
Pursuant to the Rules, the Panel has the sole discretion to decide the admissibility of any unsolicited supplemental filings made by the Parties. The Panel finds that the unsolicited supplemental filing by the Complainant is inadmissible. The Panel will not accept or consider this submission of the Complainant in reaching its decision and submits that the Parties will not be prejudiced by this decision. B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the AAA Marks.
The Respondent asserts that the Domain Name is not identical or confusingly similar to the Complainant’s AAA Marks on the basis that the Complainant’s AAA Marks are generic. The Panel does not find the Respondent’s arguments persuasive. The Panel finds that the Complainant has sufficiently established that its AAA Marks are distinctive and well known in the automotive and transportation related products and services industry based on the registrations of its AAA Marks and the number of years of widespread and continuous use of the AAA Marks by the Complainant.
The Panel further finds that the Domain Name includes the Complainant’s AAA Marks in their entirety as a prefix and as such is confusingly similar to the Complainant’s AAA Marks. Coupled with the evidence that the terms “auto” and “transport” are included in the Domain Name and that the Complainant is well known for offering automotive and transportation related products and services for many years prior to the Respondent’s registration of the Domain Name, such additional terms only likely heighten consumer confusion with respect to this Domain Name. See, e.g., American Automobile Association, Inc. v. New Cars Lowest Prices, WIPO Case No. D2011-0337 (the domain names , , and are confusingly similar to the Complainant’s AAA marks); American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489 (the domain name is confusingly similar to the Complainant’s AAA marks).
The Panel therefore finds that paragraph 4(a)(i) has been satisfied based upon the Domain Name being confusingly similar to the Complainant’s AAA Marks. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder’s 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is 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 Complainant has shown that it had long and well-established rights to the AAA Marks at the time of the Respondent’s registration of the Domain Name on January 5, 2010 and that the Respondent nevertheless registered the Domain Name. The Complainant has further shown that it has never authorized or licensed any of its trademarks to the Respondent for registration in the Domain Name or for use on a corresponding website.
The Respondent has asserted that it is using the Domain Name in association with an ongoing business that generates revenue and is self-sustaining and that its use of “AAA” in the Domain Name is a generic use of “AAA” to indicate a good reputation or creditworthiness. However, it is noted that the Respondent also used the phrase “AAA Auto Transport” in the header of the home page and in the copyright notice for the website at the Domain Name for a period of time until it was contacted by the Complainant to remove such uses of its AAA Marks. Additionally, evidence was submitted that the Respondent has been and is doing business as “Direct Auto Transport,”, not “AAA Auto Transport.” Such evidence does not establish that the Respondent was commonly known by the Domain Name or was making a legitimate noncommercial or fair use of the Domain Name. Rather, when the submitted evidence is considered with the Domain Name being confusingly similar to the Complainant’s AAA Marks, it demonstrates that the Respondent was apparently aware of the Complainant’s AAA Marks and registered and has been using this confusingly similar Domain Name with the intent to misleadingly divert Internet users seeking the Complainant’s goods and services to the Respondent’s website for commercial gain. In view of this evidence, the Panel determines that the Respondent’s activities with regard to the Domain Name and its corresponding website only result in confusion with respect to the Complainant’s well-known AAA Marks and cannot be interpreted as the Respondent using or making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name, and that paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 website or location or of a product or service on the holder’s website or location.
Based upon the evidence submitted, the Panel finds that the Respondent must have had knowledge of the Complainant’s AAA Marks and its rights therein at the time the Respondent registered the Domain Name. This finding is supported by the evidence showing that: (i) the Complainant owns trademark registrations for its AAA Marks for automotive and transportation related products and services; (ii) the Complainant has widespread and continuous use of its AAA Marks with such products and services and is widely known; (iii) the Domain Name comprises the Complainant’s AAA mark in its entirety as a prefix along with the terms “auto” and “transport,” which are descriptive of goods and services clearly associated with the Complainant; and (iv) the Domain Name was registered well after the first use in commerce by the Complainant of its AAA Marks. Along with the above finding that the Respondent has no rights or legitimate interests in the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.
The Respondent asserts that none of the examples of bad faith listed in paragraph 4(b) of the Policy apply to the Respondent’s conduct. However, based on the above and review of the submitted evidence, the Panel finds that the Respondent’s activities show that it registered and has been and is using the Domain Name in bad faith to intentionally attempt to attract for apparent commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s AAA Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s site or of a product or service on the Respondent’s site. See paragraph 4(b)(iv) of the Policy. The Panel also finds that the Respondent registered and is using the Domain Name to create initial interest confusion among Internet users who visit the Respondent’s site as to the source, sponsorship, affiliation or endorsement of the site for its own apparent commercial gain also resulting in bad faith registration and use of the Domain Name.
Based on the above, the Panel accordingly finds that the Respondent registered and has been and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Dated: September 10, 2013
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