The Complainant is The American Automobile Association of Heathrow, Florida, United States of America (“United States”), represented by Covington & Burling LLP, United States.
The Respondent is AAAHIRECARS.COM, Privacy Protection Service Inc. d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Prakhar Bindal, Axsiom Domains Pvt Ltd of Haryana, India / Arun Davis, C/o Rakesh Infocom, of Dhampur, India. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2015. On September 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2015, 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 September 7, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 10, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2015. The Respondent Prakhar Bindal, Axsiom Domains Pvt Ltd submitted an informal communication on September 7, 2015 concerning the identity of the registrant. No formal Response was submitted. Accordingly, the Center notified the Respondent’s default on October 2, 2015.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 13, 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.
The Panel has reviewed the procedural history of the matter and the parties’ submissions concerning the identity of the Respondent and is satisfied that all three of the entities collectively referred to as the Respondent are properly included in this proceeding. 4. Factual Background
The Complainant is a corporation organized under the laws of Connecticut, United States with its principal place of business in Florida, United States.
The Complainant is the owner of various United States federal trademark registrations for the mark AAA. These registrations include United States trademark number 829,265 for AAA registered on May 23, 1967 for services rendered to motor vehicle owners, motorists and travelers and related services.
The disputed domain name was registered on December 26, 2014.
According to evidence submitted by the Complainant, the disputed domain name has been used to resolve to an Internet parking page including links to car hire and other services. The web page also offered the disputed domain name for sale. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns unregistered rights in the mark AAA in addition to its trademark registrations referred to above. It submits that its AAA marks have been used in commerce since 1902 and are valuable and famous in the United States and abroad. The Complainant does not provide further details but refers to the findings of several previous UDRP panels in support of this assertion.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant relies on its registered and unregistered rights in the mark AAA and points out that the disputed domain name comprises that mark in its entirety together with the generic phrase “hire cars”. The Complainant states that the addition of this generic phrase does not prevent the risk of confusion between the disputed domain name and the Complainant’s mark and in fact heightens that risk because the Complainant is well known for providing automobile-related services under the AAA mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its AAA marks for the purposes of a domain name or otherwise and that there is no evidence that the Respondent has commonly been known by the disputed domain name. The Complainant further submits that the Respondent’s use of the disputed domain name for the purposes of a parking page is neither bona fide use nor legitimate noncommercial or fair use of the disputed domain name, in circumstances where the Respondent was assuredly aware of the Complainant’s trademark and is seeking to divert the Complainant’s customers to its website.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith.
Concerning the registration of the name, the Complainant relies on the Respondent’s actual or constructive knowledge of its trademarks. The Complainant states that the Respondent registered the disputed domain name more than a century after the Complainant began to use its trademarks in commerce. The Complainant states that given the distinctive nature and reputation of the Complainant’s AAA trademarks it is inconceivable that the Respondent registered the disputed domain name without knowledge of those marks.
The Complainant submits that the Respondent has used the disputed domain name misleadingly to divert Internet users to the Respondent’s website where the Respondent advertises automobile and rental services in competition with the Complainant. The Complainant adds that the Respondent’s actions are disruptive of the Complainant’s business. The Complainant further submits that by offering to sell the disputed domain name the Respondent is attempting in bad faith to profit from the infringing use of the name.
The Complainant states that it wrote to the Respondent concerning the disputed domain name on two occasions in June and July 2015 but that the Respondent failed to reply on either occasion. The Complainant states that this is further evidence of the Respondent’s bad faith and also establishes that the Respondent had actual knowledge of the Complainant’s trademark rights from at least this time. The Complainant also alleges that the Respondent has attempted in bad faith the hide the identity of the registrant of the disputed domain name.
The Complainant requests a transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has not contested the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the mark AAA for services rendered to motor vehicle owners, motorists and travelers. The disputed domain name comprises the term “aaa”, the term “hirecars” and the generic Top Level Domain (“gTLD”) “.com” which is typically to be ignored for the purposes of comparison.
While the Panel does not consider that the term “aaa” would necessarily be understood by Internet users to refer only to the Complainant, the Complainant’s ownership of the trademark AAA satisfies the threshold test of giving the Complainant sufficient standing to bring this proceeding. The Panel agrees with the Complainant’s submission that the addition of the term “hirecars” does not obviate the likelihood of confusion between the disputed domain name and the Complainant’s mark, and in fact makes confusion more likely owing to its reference to an automobile-related service.
In the circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s submissions (which the Respondent has not contradicted) that the Complainant has not authorized the Respondent to use the mark AAA for the purposes of the disputed domain name or otherwise and that the Respondent has not commonly been known by the disputed domain name.
The Panel also accepts that the Respondent has used the disputed domain name for the purposes of a parking page website which offers links to automobile-related services (presumably on a pay-per-click basis) and also offers the disputed domain name for sale. The use of a domain name for a parking page can in certain circumstances give rise to rights or legitimate interests where it is used in connection with the generic meaning of a domain name and without capitalizing on trademark value. In this case, however, the Complainant submits that the Respondent must have been aware of the Complainant’s well-known mark AAA and must have chosen the disputed domain name with that trademark in mind. The Panel accepts the Complainant’s submissions concerning the notoriety of its mark in connection with automobile-related services1 and therefore finds that the Complainant has made out a prima facie case in this respect. While it was open to the Respondent to answer that case by explaining its choice of the disputed domain name and advancing, for example, any of the circumstances set out in paragraph 4(c) of the Policy, the Respondent has failed to file any Response in this proceeding or to challenge the Complainant’s submissions.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The issue of bad faith involves similar considerations as above.
In the absence of any contradiction or explanation on the part of the Respondent, the Panel has accepted the Complainant’s submissions that the Respondent registered the disputed domain name with the Complainant’s AAA mark in mind and with the intention of taking unfair commercial advantage of that mark. The Panel further concludes that the Respondent has taken such advantage of the Complainant trademark by using the domain name for the purposes of a pay-per-click website to which Internet users are likely to be misleadingly diverted by virtue of the combination of the Complainant’s AAA mark with the term “hirecars”. The Panel concludes specifically that, by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website or of a product or service on that website (paragraph 4(b)(iv) of the Policy).
In the circumstances, the Panel finds that the disputed domain name has been 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.
Steven A. Maier
Sole Panelist
Date: October 20, 2015
1 The Panel comments in passing that the Complainant should provide direct evidence of the claimed notoriety of its trademark in each individual proceeding and should not merely rely on the findings of other panels in previous UDRP cases.
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