Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America (“USA”), represented Covington & Burling LLP, USA.
Respondent is Diane Robinson of Chicago, Illinois, USA. Respondent has failed to respond or appear with or without representation. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed 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 March 10, 2014. On March 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 10, 2014, the Registrar, transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which matched the named Respondent and contact information in 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”).
On March 11, 2014, the Complainant transmitted a Request to Suspend the UDRP Proceeding to the Center asking for a suspension of fifteen (15) days in order to allow the parties to pursue settlement. On March 11, 2014 the Center confirmed that the proceeding would be suspended until March 26, 2014 unless the Complainant transmitted a signed request to proceed before that date. On March 11, 2014 the Registrar acknowledged the suspension of the proceeding and confirmed that the Disputed Domain Name would remain locked.
On March 21, 2014, the Complainant transmitted a signed request to reinstitute the UDRP proceeding to the Center. On the same date, the Center sent a communication to the Parties and to the Registrar confirming the re-institution of the proceedings.
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 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2014. Respondent failed to comply with the deadline for submission of a Response and was notified of such default by the Center on April 16, 2014.
On April 1, 2014 the Center received an informal communication from the “Chief Operating Officer of National Motor Club”, which contact details appeared on the website at the disputed domain name. On April 10, 2014, National Motor Club filed a formal Response.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on April 29, 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 Disputed Domain Name was registered on May 14, 2013with GoD, LLC. The registration was set to expire on May 14, 2014, but GoD, LLC confirmed on March 25, 2014 via transmittal to the Center that, in accordance with ICANN’s Expired Domain Deletion Policy, paragraph 3.7.5.7, the Disputed Domain Name would remain locked pending the outcome of this proceeding.
Complainant has numerous trademark registrations including, but not limited to:
AAA, registration number 829,265, filed in USA on May 23, 1967;
AAA, registration number 2,158,654, filed in USA on May 19 1998;
AAA. EVERY DAY., registration number 2,456,403, filed in USA on May 29, 2001;
AAA. USE IT FOR ALL IT’S WORTH., registration number 2,846,491, filed in USA on May 25, 2004;
AAA, registration number 3,316,227, filed in USA on October 23, 2007; and
AAA, common law trademark usage 5. Parties’ Contentions A. Complainant
Complainant alleges that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant, a Connecticut corporation, holds several USA trademark registrations for standard-character marks based on the acronym for the name of Complainant’s corporation “AAA” (the “AAA Marks). In addition, Complainant contends that it has common law trademark protection and cites US case law in support of this contention: American Automobile Association, Inc. v. AAA Ins. Agency, Inc., 618 F. Supp. 787, 790 (W.D. Tex. 1985) (“AAA is a widely known organization that has been extensively advertised and promoted throughout the United States… [T]he ‘AAA’ name has come to be relied upon by a significant segment of the public as indicting AAA and its services.”). Complainant’s AAA Marks are used in relation with automobile association services rendered to motor vehicle owners, motorists, and travelers; arranging for discount purchases for members of an automotive club; administration of a discount program for enabling participants to obtain discounts on goods and services through use of a discount membership card; automobile club services in the nature of providing state vehicular registration and title transfer, rating tourist accommodations, and providing political action committee services, namely advocating legislation favorable to safe and economical motor vehicle transfer, operation and maintenance; indicating membership in an automobile club.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name and that Respondent is neither affiliated with Complainant nor licensed to use Complainant’s AAA Marks.
Complainant alleges that in or around November 2013, Complainant learned that Respondent was using the Disputed Domain Name and that the website listed contact information for the National Motor Club of America. Complainant sent a letter on December 19, 2013 to Respondent demanding that Respondent cease use of the Disputed Domain Name and transfer registration to Complainant. Complainant sent a second letter on January 27, 2014. Respondent never responded to either letter and never contacted Complainant regarding the Disputed Domain Name.
Complainant alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant alleges that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant alleges that, for these reasons, Respondent’s use of the Disputed Domain Name is in bad faith. B. Respondent
The Respondent has failed to file a Response or to appear with or without representation. Service of notice of this proceeding to the address listed in the Complaint and listed in the Registrar’s records was not returned as undeliverable.
The Panel notes that a Response was filed by the National Motor Club on April 10, 2014 stating that it was unaware that the Disputed Domain Name was registered and that it does not own or have any control over the website and that it did not commission or request registration of the Disputed Domain Name. Correspondence from the Center on April 11, 2014 to the National Motor Club indicates that the National Motor Club was notified of this proceeding because its contact information appeared on the website at the Disputed Domain Name. The National Motor Club is not a party to this proceeding and was not named as a Respondent. The only Respondent in this proceeding is Diane Robinson. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s trademark AAA. Complainant rightly notes that it is well established that a domain name is confusing similar to a trademark when the domain name includes the entire mark, even if the domain name also includes one or more generic terms or numbers in addition to the mark (citing American Automobile Association, Inc. v. A Domain Privacy/Transure Enterprise Ltd.,WIPO Case No. D2010-0565).
The Disputed Domain Name uses the Complainant’s well-known AAA Marks in its entirety and is therefore likely to cause customer confusion with Complainant’s trademark. B. Rights or Legitimate Interests
Complainant has presented evidence of its rights in the AAA Marks referencing several federal registrations in the USA and pre-existing usage sufficient to warrant common law trademark protection.
Complainant alleges, and Respondent has not disputed, that Respondent is not affiliated with Complainant nor is Respondent licensed to use Complainant’s trademark. There is no evidence that Respondent is commonly known by the Disputed Domain Name and Respondent has no connection or affiliation with Complainant. Finally, Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Respondent cannot be unaware of Complainant or of the AAA Marks.
The Panel finds that Respondent does not have a right to use Complainant’s AAA Marks either as fair use or otherwise. Respondent has never been authorized or licensed to use Complainant’s trademark.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Disputed Domain Name not only uses the entirety of Complainant’s AAA Marks, but also lists contact information for a competitor of Complainant which offers products and services which directly compete with and are confusingly similar to Complainant’s products and services. Complainant rightly points out that registration of domain names which are used to host a sales page for a competitor of Complainant, without any legitimate interest in the name and for purposes of pecuniary gain, is prima facie evidence of bad faith under the Policy, paragraph 4(b)(iv). In support of its argument, Complainant cites American Automobile Association, Inc. v. A Domain Privacy/Transure Enterprise Ltd.,WIPO Case No. D2010-0565.
Although the competitor named on the website at the Disputed Domain Name, the National Motor Club, is not named as Respondent in this case, and although they filed a Response indicating that they had no knowledge of or association with Respondent’s actions and registration of the Disputed Domain Name, the fact that the Disputed Domain Name is apparently used to advertise the Complainant’s competitor cannot be overlooked.
In addition, Respondent cannot be ignorant of Complainant’s AAA Marks based on Complainant’s established fame in the US and internationally (see American Automobile Association, Inc. v. Sompop Padungkijjaroen,WIPO Case No. D2012-2168 (“Given the distinctive nature of the Complainant’s 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 or without the intention of targeting the Complainant…”).
Therefore, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 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.
Maxim H. Waldbaum
Sole Panelist
Date: May 6, 2014
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