The Complainant is The American Automobile Association, Inc. (“AAA”) of Heathrow, Florida, United States of America represented by Covington & Burling, United States of America.
The Respondent is Spins Unlimited, David Snyder of Sacramento, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2013. On October 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 November 7, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2013.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 12, 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 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, transportation, insurance, financial, discount, and travel-related goods and services. The Complainant has provided copies of its federal trademark registrations in Annex H.
The Complainant is well-known by the public for providing travel services, including making reservations and bookings for lodging and arranging tours and vacations. As a result of the Complainant’s history and experience providing travel related services, as well as the Complainant and its member clubs’ continuous and extensive use of the AAA Marks in the advertising, promotion, and sales of those services, the AAA Marks are widely recognized by consumers in the United States and abroad. The Panel accepts that the AAA Marks are well-known trademarks.
The disputed domain name was registered on August 20, 2012. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s AAA Marks and AAA Domains. The Respondent has no legal rights to or legitimate interests in the disputed domain name. The Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004. Insofar as the Respondent has defaulted, it is therefore appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent 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. 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 travel services, including making reservations and bookings for lodging and arranging tours and vacations. 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.
The Panel finds that the Complainant’s Marks are distinctive and well-known by the public for providing travel services and the disputed domain name is confusingly similar to the AAA Marks. The disputed domain name contains the identical “AAA” letters. It is well established that a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation.” Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; see also Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249. Furthermore, the disputed domain name incorporates the dominant portion of the AAA Marks and simply adds the descriptive terms “travelers” and “guide.” 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 non-distinctive 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 also 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 “travelers” and “guide” to “AAA” likely heightens consumer confusion because AAA is well-known for offering travel 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 Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the term “AAA.” Thus, the Complainant has successfully presented a prima facie case, which the Respondent has not rebutted. The Respondent has filed no response. There have been no other communications from the Respondent in connection with this case. Without a response, there is nothing in the case file that indicates that the Respondent has a right or legitimate interest in the disputed domain name. Further, as discussed below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent's use of the disputed domain name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the disputed domain name.
The Panel finds that the requirements of Paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
It is unrebutted that the Respondent is using a confusingly similar domain name to the Complainant’s AAA Marks in connection with a website that offers competing services to those of the Complainant. Further, as established above, there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the term “AAA.”
The Complainant submits that the Respondent had both constructive and actual notice of AAA’s Marks when registering the disputed domain name because AAA is well-known by the public, based on U.S. and International registration and the Marks’ substantial fame in the United States and abroad. See The American .Automobile Association, Inc. v. Sompop Padungkijjaroen,WIPO Case No. D2012-2168 (“[g]iven the distinctive nature of the . . . AAA Marks and the reputation of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant . . . .”). The Respondents’ first registration and use of the disputed domain name occurred in 2012, well after AAA began using its AAA Marks. Further, prior to filing its Complaint, the Complainant notified the Respondent of its senior rights in the AAA Marks in several letters and emails. The Respondent took no action in response to the Complainant’s concerns and refused to cease use of the disputed domain name.
Thus, on the record before it the Panel finds that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the AAA Marks as to the source, sponsorship, affiliation, or endorsement of the website. Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been satisfied. 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.
Kimberley Chen Nobles
Sole Panelist
Date: December 19, 2013
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