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 Ryan G Foo, PPA Media Services of Santiago, Chile; Fundacion Private Whois of Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2014. On March 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint chose not to amend the Complaint.
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 March 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 3, 2014. 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, a corporation organized under the laws of Connecticut, is the owner, amongst others, of the United States Patent and Trademark Office Registration No. 829,265 for the AAA trademark dated May 23, 1967 (Annex G to the Complaint).
The disputed domain name was registered on February 6, 2006 and the website to which it resolves displays sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant has used its AAA trademark in commerce in the United States since at least 1902, being it currently well known by the public for, among other things, its automobile membership clubs and automobile-related services.
According to the Complainant, in or around November 2013, it learned that the Respondent was using the disputed domain name to host a parking page with pay-per-click advertisements and links to webpages offering insurance and automobile-related products offered by the Complainant’s competitors.
On December 27, 2013, the Complainant sent a letter to the Respondent demanding that it cease all use and transfer the disputed domain name to it. The Respondent did not reply to the warning letter which was reiterated on January 30, 2014, and which was also not replied to (Annex C to the Complaint).
On the Complainant’s view the disputed domain name is substantially and confusingly similar to its AAA trademarks given that it reproduces the AAA trademark in its entirety merely adding the generic, geographic term “nm” which is a common abbreviation for “New Mexico”, what does not alter the underlying mark, leading consumers to assume, incorrectly, that the disputed domain name is associated with or sponsored by the Complainant.
As to the absence of rights or legitimate interests, the Complainant argues that:
(i) no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain name;
(ii) there is no evidence that the Respondent is commonly known by the disputed domain name;
(iii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services given that it has intentionally chosen such domain name based on the Complainant’s trademark in order to direct Internet users to sponsored links which relate to advertisements of competing products and services.
Lastly, the Complainant points out that given the existence of pay-per-click advertising links that relate to the Complainant’s competitors the Respondent cannot claim good faith or “no actual knowledge” of the Complainant’s trademark and, on the contrary, is misleadingly diverting consumers for its own commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark AAA (Annex G to the Complaint).
The Complainant’s mark is entirely reproduced in the disputed domain name and the addition of the letters “nm”, in this Panel’s point of view, does not sufficiently distinguish the disputed domain name from the trademark. This Panel considers that the disputed domain name can possibly lead a certain portion of Internet users into thinking that the website relating to it might refer to the Complainant and its local units in the state on New Mexico.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108). Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that no authorization or license was granted for the use of the trademark AAA in the disputed domain name.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, corroborate with the indication of the absence of a right or legitimate interest.
Another element to be taken into account is the absence of any reply to the warning letter and respective reminder sent to the Respondent.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 website or location.
In this case, the use of the disputed domain name in connection with a parked website that displays pay-per-click advertisements related to the Complainant’s business characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the advertisements and links that solely exist in view of the association with the Complainant’s trademark.
Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s well-known trademark, thus capitalizing on the fame of the Complainant’s AAA mark by creating a likelihood of confusion in Internet users who likely believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, the use of a privacy service by the Respondent may further support, in the circumstances of this case, the Panel’s finding of bad faith.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: April 17, 2014
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