The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America (“United States”), represented by Covington & Burling LLP, United States.
The Respondent is Cameron Jackson of Kingston, Australia / PrivacyDotLink Customer 2440314 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Names and Registrars
The disputed domain name is registered with Uniregistrar Corp. The disputed domain name is registered with Instra Corporation Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2016. On August 19, 2016, the Center transmitted by email to the Registrar Instra Corporation Pty Ltd. a request for registrar verification in connection with the disputed domain name . On August 19, 2016, the Registrar Instra Corporation Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Complainant filed an amended Complaint on September 2, 2016, requesting the addition of a domain name . On September 5, 2016, the Center transmitted by email to the Registrar Uniregistrar Corp. a request for registrar verification in connection with the disputed domain name . On August 6, 2016, the Registrar Uniregistrar Corp. 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 together with the amended 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 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2016.
The Center appointed Marilena Comanescu as the sole panelist in this matter on October 5, 2016. 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 language of the proceeding is English. 4. Factual Background
The Complainant, founded more than a century ago, is currently offering its products and service in a variety of fields, including automotive, travel and insurance to its more than 50 million members in the United States and Canada.
Complainant has provided evidence that it is the owner of numerous registered trademarks, inter alia:
- Word mark AMERICAN AUTOMOBILE ASSOCIATION, United States Patent and Trademark Office (“USPTO”), Registration No. 3852689, Registration Date: September 28, 2010;
- Word mark AAA, USPTO, Registration No. 0829265, Registration Date: May 23, 1967; and
- Mark with device AAA, USPTO, Registration No. 2158654, Registration Date: May 19, 1998.
Previous UDRP panels have found the Complainant’s marks as being famous or well-known in the United States and internationally, particularly in the automobile industry. See The American Automobile Association, Inc. v. Charles Franklin, The Freedom Law Firm, P.A.,WIPO Case No. D2016-1439; The American Automobile Association, Inc. v. Domain Administrator / Fundacion Private Whois,WIPO Case No. D2014-0502; or The American Automobile Association, Inc. v. Spins Unlimited,WIPO Case No. D2013-1827.
On August 8, 2016, prior to commencing the present proceeding, the Complainant sent a cease-and-desist letter to the Respondent under the WhoIs contact details provided for the disputed domain name , to which the Respondent reacted by offering to sell the disputed domain name for the amount of USD 300, and afterwards lowering the offer to USD 250. On August 25, 2016 the Respondent sent an email to the Complainant stating that it is the owner of the disputed domain name and to contact him if the Complainant was “interested”. The Complainant refused to accept such proposals and submitted the present UDRP Complaint.
The disputed domain name was registered on June 30, 2016 and the disputed domain name was registered on August 25, 2016. At the time of filing the Complaint, the disputed domain name was used to redirect Internet users to a casino website at “” and the disputed domain name resolved to a landing page.
The Respondent has been involved in more than twenty past URDP disputes involving third-party trademarks. See previous cases involving the Respondent as “Cameron Jackson” in cases Statoil ASA v. Cameron Jackson,WIPO Case No. D2016-1649 (for the domain name ); Chocoladefabriken Lindt & Sprüngli AG v. Cameron Jackson,WIPO Case No. D2007-1290 (for the domain names , , ); Pfizer Inc. v. Cameron Jackson,WIPO Case No. D2005-0909 (for the domain name ); or as “Cameron David Jackson” Compagnie Générale des Etablissements Michelin v. Cameron David Jackson,WIPO Case No. D2015-1671 (for the domain name ); Dollar Bank, Federal Savings Bank v. Cameron David Jackson,WIPO Case No. D2016-1276 (for the domain names , , , and others). 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are substantially and confusingly similar to its marks AMERICAN AUTOMOBILE ASSOCIATION and AAA, that the Respondent has no rights or legitimate interests in the disputed domain names; and that the Respondent has registered and is using the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant holds registrations for the AMERICAN AUTOMOBILE ASSOCIATION and AAA trademarks, as set out in section 4 above.
The disputed domain names include the Complainant’s trademarks together with generic non-distinctive terms such “the” in the disputed domain name , respectively “club” in the disputed domain name .
Adding a generic term is not sufficient to escape a finding of confusing similarity and does not change the overall impression of the disputed domain name as being connected to the Complainant’s trademark. See paragraph 1.9 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Further, it is well established in decisions under the UDRP that indicators for generic Top-Level Domains (“gTLDs”) (e.g., “.xyz”, “.com”, “.net”, “.org”) are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain names and are confusingly similar to the Complainant’s trademarks AMERICAN AUTOMOBILE ASSOCIATION and AAA, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services. In line with the approach adopted by panels in previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain names, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts the Complainant’s reasonable arguments as facts.
Further, in the correspondence between the Parties prior to commencing this proceeding and provided as Annex C to the Complaint, the Respondent alleges to be involved in the business of buying and selling domain names. The business of buying and selling domain names can be a legitimate enterprise particularly when it involves dictionary word domain names, but it does not necessarily confer rights to use for that purpose a domain name identical or confusingly similar to another party’s trademark. In the present case, the Respondent has registered the disputed domain names including Complainant’s marks without the consent of their rights holder. The Panel further notes that the Respondent has been involved in several past UDRP disputes decided in the favor of complainants. Therefore, this Panel concludes that the disputed domain names were registered by the Respondent for the value of the marks contained therein.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds trademark registrations for AMERICAN AUTOMOBILE ASSOCIATION and AAA for decades and has been using such marks in commerce since 1902.
The Respondent registered the disputed domain names incorporating the Complainant’s marks together with a generic word in 2016 and failed to provide any arguments or reasons in response to the Complaint supporting its choice in these names.
For the above, the Panel finds that the disputed domain names were registered in bad faith, targeting the Complainant’s trademarks.
According to the case file evidence, at the time of filing the Complaint the disputed domain name was used to divert Internet users to a website for an online casino. Registering and using a domain name that reproduces without authorization the Complainant’s mark, using such domain name for a webpage which promotes third party’s goods and services, diverting Internet users searching for the Complainant to the Respondent’s website dilutes the value of the Complainant’s mark, potentially generates unfair revenues for the Respondent and ultimately constitutes bad faith under paragraph 4(b)(iv) of the Policy.
The disputed domain name is held as a parking page.
In the present case, the Complainant’s trademarks are widely known, the Respondent did not provide any response to the Complaint, and the Complainant registered the disputed domain name using a privacy shield. Given all the other circumstances of the case, such behavior may be considered as evidence of bad faith.
Further, the Respondent made a selling offer to the Complainant for the disputed domain name for the price of USD 300 and USD 250 which is more than the out-of-pocket costs for registering a domain name in the gTLD “.xyz” which varies from USD 0.74 to USD 19. Also, the Respondent contacted the Complainant, on its own initiative, for a potential resale of the disputed domain name . These constitute bad faith under paragraph 4(b)(i) of the Policy.
In addition, paragraph 4(b)(ii) of the Policy lists another bad faith attitude: the situation when the respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. Paragraph 3.3 of the WIPO Overview 2.0 explains that a pattern of conduct involves multiple UDRP cases with similar fact situations. Here, the Respondent has been involved in more than twenty other similar UDRP cases involving third-party trademarks and decided in the favor of complainants, as listed in the Complaint and Section 4 above.
For the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 the Complainant.
Marilena Comanescu
Sole Panelist
Date: October 11, 2016
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