Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America (“United States”), represented by Covington & Burlington, United States.
Respondent is Joe Kazemi of Tustin, California, United States.1 2. The Domain Names and Registrar
The disputed domain names , , and are 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 December 17, 2014. On December 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent Joe Kazemi is listed as the registrant and providing the 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 9, 2015.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on February 18, 2015. 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
Complainant The American Automobile Association, Inc. is a corporation organized under the laws of Connecticut, United States. Complainant is a membership organization that recommends and provides a variety of goods and services, such as, by way of example, membership plans and automobile repair services. Complainant is the exclusive owner in the United States of federal trademark registrations in and to the AAA mark and associated trademarks. Complainant has submitted as Annex G to the Complaint copies of its United States federal trademark registrations for the mark AAA and associated marks, the earliest of which is from May 23,1967.
The disputed domain names were registered on or about August 17, 2013. Currently, the disputed domain names resolve to placeholder web pages.
On or about March 10, 2014, Complainant sent a demand letter to Respondent demanding that Respondent cease use of and transfer the disputed domain names. On April 1, 2014, Respondent replied via email advising that he had not “used” the disputed domain names and would transfer them if Complainant would pay for Respondent’s expenses in registering and transferring the disputed domain names. On April 9, 2014, Complainant sent an email response to Respondent advising that Complainant would pay for Respondent’s costs for registering and transferring the four disputed domain names in the amount of USD 10 per disputed domain name. Respondent does not appear to have responded to this communication or to further communications from Complainant regarding the disputed domain names. Following this sequence of events, Respondent nevertheless renewed three of the four disputed domain names in or about August 2014. 5. Parties’ Contentions A. Complainant
Complainant asserts that its AAA mark is well-known in the United States and that it has obtained in the United States a number of federal trademark registrations for the AAA mark and variants thereof for a variety of goods and services, including automobile membership clubs, automobile repair services, and a number of automobile related services for vehicle owners, motorists and travelers.
Complainant contends that the disputed domain names are identical and confusingly similar to Complainant’s AAA mark because each contains the AAA mark in its entirety. Complainant also contends that the addition of generic terms such as “preferred,” “member,” “services,” and “repair” with respect to the disputed domain names heightens the confusion because AAA is well known as a membership organization that recommends and provides a variety of services to its members.
Complainant argues that because it has established prior rights in and to the AAA mark, and has not licensed or authorized Respondent to register the disputed domain names, Respondent lacks any rights or legitimate interests in the disputed domain names. Complainant further contends that Respondent is not commonly known by the disputed domain names, has not used the disputed domain names for a bona fide offering of goods or services or for a legitimate noncommercial or fair use, and has merely used the disputed domain names with a web page that states that a website is “coming soon.”
Finally, Complainant asserts that Respondent registered and has used the disputed domain names in bad faith since Respondent had actual prior knowledge of Complainant’s well-known AAA mark. Complainant also contends that Respondent registered the disputed domain names without any authorization from Complainant and has passively held the disputed domain names since registering them in August 2013. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) states:
“4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent’s default does not automatically result in a decision in favor of the complainant… the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”
Thus, although in this case Respondent has failed to respond to the Complaint against him, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it owns a number of federal trademark registrations in the United States for the AAA mark and formatives thereof, the earliest of which is dated May 23,1967.
With Complainant’s rights in the AAA mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domains “.com” and “.net”) are identical or confusingly similar with Complainant’s mark. B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The disputed domain names are confusingly similar to the AAA mark as each incorporates the AAA mark in its entirety at the head of each disputed domain name. The addition of generic terms such as “preferred,” “member,” “services,” and/or “repairs” after AAA is of no import and does not distinguish the disputed domain names from Complainant’s AAA mark. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488. The Panel therefore finds that Complainant has satisfied the requirements of 4(a)(i) in establishing its rights in the AAA mark and in showing that the disputed domain names are identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is clear that Respondent was well aware of Complainant’s prior rights in the AAA mark when he registered the disputed domain names. In Respondent’s April 1, 2014 email response to Complainant’s March 10, 2014 demand letter, Respondent acknowledged that he registered the disputed domain names in connection with an unspecified “proposal with AAA of So. Cal for a company joint venture for co-branding of our companies.” See Annex C to the Complaint.
As to whether Respondent could be deemed to have a right or a legitimate interest in registering the disputed domain names for an alleged proposal for “AAA of So. Cal,” the record is devoid of any evidence establishing that Respondent had any contact with or connection with Complainant or any of its regional member clubs. If anything, Respondent’s April 1, 2014 response to Complainant confirms that Respondent has no connection or affiliation with Complainant and that Respondent never obtained any permission to register or use the disputed domain names. Indeed, Respondent offered to transfer the disputed domain names to Complainant in return for payment of the costs for registering and transferring the disputed domain names. When Complainant agreed to reimburse such costs, Respondent not only went silent but never responded to further letters and demands by Complainant or to the Complaint in this proceeding. Following this, Respondent even renewed three of the four disputed domain names in or about August 2014 and has continued to hold the disputed domain names with placeholder web pages that simply state that a website would be “coming soon.”
Given that Complainant has established with sufficient evidence that it owns rights in the AAA mark and that the AAA mark has been recognized as well-known in the United States, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent’s registration and use of the disputed domain names does not constitute a right, legitimate interest or bona fide use and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
In sum, the Panel finds that in this case Complainant has established a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain names. As Respondent, although given an opportunity to present its case, has decided not to submit a response and put forward arguments as to why he should be regarded as having rights or legitimate interests in the disputed domain names, the Panel concludes that, based on the available record, Respondent has not rebutted Complainant’s prima facie case. Complainant thus prevails on this element of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate he registered and is using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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 that 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 web site 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.”
In the present case, Respondent has registered domain names that fully incorporate Complainant’s AAA mark in connection with the common term “preferred member,” along with either the term “services” or “repairs.” Such combination of common terms descriptive of Complainant’s services after the AAA mark creates a likelihood of confusion by suggesting to consumers that the disputed domain names concern special services for premium AAA members. Given that Respondent has acknowledged that he was aware of Complainant and its AAA mark when he registered the disputed domain names, it is inconceivable that Respondent registered such confusing domain names by chance. If anything, the evidence suggests that Respondent specifically targeted Complainant and its AAA mark.
Moreover, given that Respondent has passively held the disputed domain names since August 2013, has ultimately failed to respond to a number of letters sent on behalf of Complainant concerning the disputed domain names, and has chosen to default in this proceeding, the Panel can only infer that Respondent’s actions have been undertaken in bad faith. The Panel also finds that Respondent’s recent renewal of three of the four disputed domain names, and to continue to passively hold the disputed domain names after receiving demand letters from Complainant, is further evidence of Respondent’s continued bad faith in this matter.
Accordingly, the Panel finds that Complainant succeeds under this element 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 names , , and be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: February 26, 2015
1 Although this proceeding includes Domains by Proxy, LLC in the caption, the registrant of the disputed domain names according to Wild West Domains, LLC is Joe Kazemi. Consequently, for purposes of this decision the actual Respondent is only Joe Kazemi.
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