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 Whoisguard, Inc. of Panama, Panama / Andrei Sasinovich of Limassol, Cyprus. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2016. On October 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2016, 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 October 6, 2016, 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 amended Complaint on October 7, 2016.
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 October 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2016. The Respondent sent an email communication to the Center on October 31, 2016.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 7, 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. 4. Factual Background
The Complainant was established more than a century ago and now has more than 50 million members in the United States and Canada. It offers to its members automobile-related products and services, in particular automobile buying, repair, and insurance, and providing information relating to these products and services.
The Complainant is the owner of the following trademark registrations in the United States protecting the abbreviation “AAA” (collectively the “AAA trademark”):
- the word trademark “AAA” with registration No. 0829265, registered in the United States on May 23, 1967 for services in International Classes 35, 36, 37, 39, 41 and 42; and
- the combined trademark “AAA” with registration No. 2158654, registered in the United States on May 19, 1998 for goods and services in International Classes 16, 35, 36, 37, 39 and 42.
The disputed domain name was registered on February 23, 2005. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is well settled that the AAA trademark is well-known in the United States, citing various court judgments and decisions under the Policy.
According to the Complainant, the disputed domain name is confusingly similar to the AAA trademark. The disputed domain name includes the entire AAA trademark, with the addition of the term “git,” which has no apparent meaning other than as a misspelling of the generic word “get.” The addition of the “git” element heightens the likelihood of consumer confusion because to the extent that it appears to be a misspelling of “get,” it suggests that consumers would be able to purchase the Complainant’s products and services from the website at the disputed domain name and that the website is associated or affiliated with the Complainant. The Respondent’s use of the disputed domain name is likely to cause, and may have already caused, consumers to become confused as to the source, sponsorship, affiliation, or endorsement of the Respondent’s domain name.
The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has not licensed or authorized the Respondent to use the AAA trademark in connection with its business or as part of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent’s use of the disputed domain name to provide information relating to automobile buying, repair, and insurance in competition with the Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent registered a domain name that is confusingly similar to the AAA trademarks with the intention to divert Internet users seeking the Complainant’s services to the Respondent’s website. The Respondent has used of the disputed domain name to provide information relating to automobile buying, repair, and insurance in competition with the Complainant for the purposes of a pecuniary gain. This conduct of the Respondent is disruptive to the Complainant’s business.
In or around August 2016, the Complainant learned that the Respondent was using the disputed domain name to host a website purporting to provide information generally relating to automobile buying, repair, and insurance as well as an entire page specifically devoted to the “American Automobile Association” and its products and services, which consisted of text copied from the Wikipedia entry for the Complainant. The website also contained a link to an automobile repair shop located in Fort Worth, Texas.
The Complainant sent two letters to the Respondent in September 2016, demanding that the Respondent cease all use of the disputed domain name and immediately transfer its registration to the Complainant.
The Respondent has not replied to either of these letters and continues to use the disputed domain name to host a website purporting to provide information generally relating to automobile buying, repair, and insurance. The website’s subpage devoted to the “American Automobile Association” was removed following the receipt of the Complainant’s letter, but the Respondent’s website continued to feature posts relating to the Complainant and its products and services as well as the link to the automobile repair shop in Fort Worth. B. Respondent
The Respondent did not file a formal Response in this proceeding. It submitted an informal email message in the following terms:
“I’m an EU citizen and when I registered the domain name I didn’t not have an idea that such organization as American Automobile Association even exist. So I didn’t register it with intent to use against AAA. Also I was not able to find that the AAA has registered their brand name in the EU as well.
The domain name was never used used (sic) in bad faith of American Automobile Association. We had some information about AAA just as an info article (information was from wikipedia) and it was removed.” 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the AAA trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD part of the disputed domain name.
In view of the above, the relevant section of the disputed domain name is “git-aaa”. This section contains two distinguishable elements – “git” and “aaa”. The “git” element does not appear to have any meaning or distinctiveness and may be regarded as a misspelling of the word “get”, as the Complainant suggests, while the “aaa” element is identical to the word element of the AAA trademark. The Complainant’s AAA trademark is the disputed domain name’s distinctive element. Moreover, the combination of these two elements is likely to appear to Internet users as representing an online location connected to the Complainant where they can “get” products and services originating from the Complainant.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the AAA trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the AAA trademark and has not been authorized by the Complainant to use it. The Respondent has not carried out a bona fide activity through the disputed domain name, but has used the disputed domain name for offering information relating to automobile buying, repair, and insurance in competition with the Complainant with the intention to divert Internet users seeking the Complainant’s products and services to the Respondent’s website. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
There is no evidence in the available record that the Respondent is commonly known by the disputed domain name. The Respondent alleges that it did not know of the Complainant when it registered the disputed domain name and did not register it with intent to use against the Complainant. At the same time, the Respondent admits that the website at the disputed domain name included information about the Complainant, which the Respondent later removed.
The disputed domain name incorporates the AAA trademark of the Complainant in its entirety and it is its distinctive element. The Respondent’s website associated to the disputed domain name has offered information and contained links relating to automobile buying, repair, and insurance in competition with the Complainant, and has for a certain period of time contained a separate section dedicated to the Complainant. Taking this into account, the Panel finds the Respondent’s denial of knowledge of the Complainant unconvincing. It appears more likely to the Panel that the Respondent must have been aware of the AAA trademark when it registered the disputed domain name, and that it chose a domain name that is confusingly similar to the AAA trademark because of the likelihood that it will attract traffic to the Respondent’s website.
In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, 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.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed in section 6.B above, the facts of this case satisfy the Panel that the disputed domain name was registered with knowledge of the AAA trademark. The website associated with the disputed domain name has offered information and contained links relating to automobile buying, repair, and insurance in competition with the Complainant, and has contained a separate section containing information about the Complainant. In view of this, the Respondent’s denial of having acted in bad faith does not appear to be supported by the facts of the case. In these circumstances, the Panel is prepared to accept that, by registering and using the disputed domain name, the Respondent has intentionally attempted to exploit the goodwill of the Complainant’s AAA trademark to attract, for commercial gain, Internet users to the website associated to the disputed domain name by confusing them that this website and the products and services offered on it are related to or approved by the Complainant. This conduct of the Respondent supports a finding that the disputed domain name has been registered and is being used in bad faith.
Therefore, 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.
Assen Alexiev
Sole Panelist
Date: November 29, 2016
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