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 Kevin Cruz of Miami Beach, Florida, United States of America. 2. The Domain Name and Registrar
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 July 22, 2015. On July 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent 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 the Respondent of the Complaint, and the proceedings commenced on July 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2015. Further to the Center’s notification of Respondent default, on August 21, 2015, the Center received an email communication from the Respondent stating “What’s the dispute.”
The Center appointed William R. Towns as the sole panelist in this matter on September 3, 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
The Complainant provides travel, automotive, insurance, financial, and other products and services under its AAA mark. The Complainant owns numerous United States registrations for the AAA and AAA-formative trademarks (hereinafter “Complainant’s AAA marks”), the earliest of which was issued by the United States Patent and Trademark Office (USPTO) on March 7, 1967. The AAA mark, which the Complainant asserts has been used in commerce since 1902, has been recognized as a well-known mark by United States courts1 and also so acknowledged in UDRP decisions.2
The Respondent registered the disputed domain name on December 23, 2014. The disputed domain name resolves to a website purporting to offer identity theft protection services under the name “AAA ID Guard.” The Complainant offers identify theft protection services to its members. On April 22, 2015, the Complainant’s representatives sent a cease and desist letter to the Respondent, followed by a second letter on May 22, 2015. The Complainant received no response to either letter. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s AAA marks, which the Complainant maintains have achieved fame throughout the United States and internationally. The Complainant asserts that its AAA marks are entitled to the greatest degree of protection under U.S. trademark law. The Complainant argues that the addition of the terms “id” and “guard” does not distinguish the disputed domain name from the Complainant’s marks, but heighten the likelihood of confusion, as the Complainant offers identity theft protection services to its members under the AAA marks. The Complainant asserts common law rights in the AAA mark in connection with identify theft protection services, which the Complainant further submits falls within the natural zone of expansion of the Complainant’s AAA marks.
The Complainant maintains that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed or authorized to use the Complainant’s marks, and that the Complainant’s use of its AAA marks in relation to identify theft protection services predates the Respondent’s registration of the disputed domain name. The Complainant contends that the Respondent’s use of the disputed domain name to advertise identity theft protection services competing with those of the Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Further, according to the Complainant, the Respondent’s website most likely is a phishing site. The Complainant asserts that the Respondent’s contact information is the same as that of another entity sued by the Federal Trade Commission for allegedly engaging in a fraudulent telemarketing scheme.
In either event, the Complainant contends that the Respondent unquestionably was aware of the Complainant’s AAA marks when registering the disputed domain name, given the fame of the AAA marks in the United States and internationally. The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith, and that the Respondent is targeting the Complainant by using the disputed domain name to divert Internet users seeking the Complainant’s products and services to the Respondent’s website. The Complainant further asserts that the Respondent’s registration and use of the disputed domain name to advertise identity theft protection services is disruptive of the Complainant’s business and constitutes bad faith under paragraph 4(b)(iii) of the Policy. According to the Complainant, the Respondent’s bad faith is further evidenced by the Respondent’s submission of false contact information when registering the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions, and beyond the non-substantive email communication of August 21, 2015 (discussed supra), did not participate in this proceeding. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s AAA marks, in which the Complainant beyond question has demonstrated rights through registration and long use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is confusingly similar to the Complainant’s AAA marks for purposes of the Policy. The disputed domain name incorporates the Complainant’s AAA mark in its entirety, and the addition of the descriptive terms “ID” (an abbreviation for “identity”) and “guard” do not serve to distinguish the disputed domain name from the Complainant’s mark.
Although the generic Top-Level Domain (“gTLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar to the Complainant’s well-known AAA marks, and is using the disputed domain name with a website purporting to offer identity theft protection services, which is a service the Complainant makes available to its members.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’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 respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent 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 Respondent has not submitted a substantive response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s AAA marks when registering the disputed domain name. In the absence of any substantive reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s well-known AAA marks through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. There is nothing in the record to indicate that the Respondent chose the disputed domain name for reasons unrelated to the Complainant. See The American Automobile Association Inc. v. Private Whois Escrow Domains Private Limited / K.A.L Services,WIPO Case No. D2009-0822.
Accordingly, the record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant’s marks, and has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. Absent any substantive reply by the Respondent, there is nothing in the record to support a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the absence of any substantive reply by the Respondent, the Panel considers that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights. The Panel concludes that the Respondent registered and is using the disputed domain name to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s AAA marks as to source, sponsorship or affiliation within the contemplation of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
William R. Towns
Sole Panelist
Date: September 18, 2015
1 See, e.g., Am. Auto. Ass’n, Inc. v. AAA Auto. Club of Queens, Inc., No. 97 CV 1180, 1999 WL 97918, at *5 (E.D.N.Y. Feb. 8, 1999); Am. Auto. Ass'n, Inc. v. Lodge, No. 1:12-CV-0854 LJO-BAM, 2012 WL 6608600, at *6 (E.D. Cal. Dec. 18, 2012).
2 See American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489; The American Automobile Association, Inc. v. Spins Unlimited, David Snyder,WIPO Case No. D2013-1827; The American Automobile Association, Inc. v. Domain Administrator / Fundacion Private Whois,WIPO Case No. D2014-0502.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
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