The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America (“United States” or “US”), represented by Covington & Burling, United States.
The Respondent is Cybernet Systech Private Limited of Mumbai, Maharashtra, 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 14, 2018. On September 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2018.
The Center appointed David Stone as the sole panelist in this matter on October 31, 2018. 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 provides a broad variety of goods and services, including insurance brokerage services, to its members, of which there are more than 50 million in the United States and Canada. The Complainant is the owner of the following registered trade marks (the “AAA Marks”) in connection with these good and services:
- AAA: US registration number 829265, registered on May 23, 1967 in Nice classes 35 – 37, 39, 41 and 42;
- AAA: US registration number 2158654, registered on May 19, 1998 in Nice classes 16, 35 – 37, 39 and 42;
- AAA: US registration number 5036379, registered on September 6, 2016 in Nice classes 16, 35 – 37, 39 and 41 – 43; and
- AAA: Indian registration number 1275532, registered on August 11, 2006 in Nice classes 16, 35 – 37, 39 and 42.
Furthermore, the Complainant owns the following related trade marks (together with the AAA Marks, the “Marks”):
- AAA LIFE INSURANCE COMPANY: US registration number 1101726, registered on September 5, 1978 in Nice class 36;
- AAA. USE IT FOR ALL IT’S WORTH: US registration number 2846491, registered on May 25, 2004 in Nice classes 35 – 37, 39, 41 and 43;
- AAA PREMIER: US registration number 2900596, registered on November 2, 2004 in Nice classes 35 – 37, 39, 42, 43 and 45; and
- AAA PREMIER: US registration number 2935481, registered on March 22, 2005 in Nice classes 36, 37, 39, and 45.
The disputed domain name was registered on December 1, 2017. On May 24, 2018 the Complainant wrote to the Respondent, requesting that the Respondent stop using the disputed domain name and transfer it to the Complainant. The Respondent replied with an offer to sell the disputed domain name to the Complainant for a price (USD 155 to 175) approximately five times greater than the fee charged by the Registrar (USD 35). The disputed domain name resolves to a website displaying pay-per-click links. 5. Parties’ Contentions A. Complainant
First, the Complainant contends that the disputed domain name is confusingly similar to the Marks, being marks in which the Complainant has rights. The disputed domain name contains the text of the AAA Marks in its entirety, and differs only in the addition of the generic terms “insurance” and “solutions” and the geographic indicator “carolina”. The presence in a domain name of an entire trade mark is enough to cause confusion between the two, and this confusion is not mitigated by the presence of other terms. The Complainant further contends that the addition of “insurance” and “solutions” in fact serves to increase the likelihood of confusion because the Complainant is well known for providing insurance services.
Second, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or in any other way authorised the Respondent to use the Marks, and there is no evidence that the Respondent is commonly known by the disputed domain name. At the time the Complaint was made, the website to which the disputed domain name resolves contained only pay-per-click advertisements for goods and services similar to those offered by the Complainant. The Respondent is likely to be aware of both the Complainant and the Marks, and so must have registered the disputed domain name with the intention of diverting to its own website Internet users seeking the Complainant’s goods and services. This does not constitute legitimate or fair use of the disputed domain name.
Third, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent registered the disputed domain name to divert Internet users seeking the Complainant’s services to its own website for pecuniary gain, disrupting the Complainant’s business. Given the fame of the Marks, the Respondent must have done so with constructive or actual knowledge of the Marks, and continued to use the disputed domain name after being given written notice of the Complainant’s rights. Rather than transferring the disputed domain name to the Complainant, the Respondent instead offered to sell it for consideration exceeding the original cost of registration. Finally, the Respondent has in at least one other dispute under the Policy been found to have registered a domain name infringing the trade mark rights of a third party. See Morgan Stanley v. Cybernet Systech Private Limited, NAF Claim No. 1760443. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark 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. A. Identical or Confusingly Similar
A domain name containing a trade mark in its entirety is considered to be confusingly similar to the trade mark, regardless of the additional presence of generic or geographically descriptive terms. See The American Automobile Association, Inc. v. Spins Unlimited, David Snyder,WIPO Case No. D2013-1827; The American Automobile Association, Inc. v. Top Business Names,WIPO Case No. D2012-2295; The American Automobile Association, Inc. v. Charles Franklin, The Freedom Law Firm, P.A.,WIPO Case No. D2016-1439. The disputed domain name is therefore confusingly similar to the AAA Marks, in which the Complainant has registered rights in the United States and India, where the Respondent seems to be located. The Panel therefore finds that the condition in paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
On the Complainant’s contentions, the Respondent is not affiliated with the Complainant, authorised to use the Marks or known by the disputed domain name. Furthermore, the website to which the disputed domain name resolves was used to advertise goods and services similar to those provided by the Complainant and, as shown in screen shots provided in evidence, did so using the AAA Marks. This is not a bona fide offering of goods or services nor legitimate or fair use of the disputed domain name (see The American Automobile Association, Inc. v. Top Business Names,WIPO Case No. D2012-2295; The American Automobile Association, Inc. v. Kevin Cruz,WIPO Case No. D2015-1271).
The Complainant thus makes out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It falls to the Respondent to rebut this case (see The American Automobile Association, Inc. v. Go Orange,WIPO Case No. D2012-2169), and as there has been no attempt to do so the Panel concludes that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes registration and use of a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
The evidence and uncontested assertions of the Complainant as to the Respondent’s behaviour, in combination with the fame of the AAA Marks, allows for no conclusion other than that the Respondent registered and used the disputed domain name in bad faith. The advertising links on the Respondent’s website demonstrate the Respondent’s awareness of the Complainant’s business and an intention to target that business by exploiting the Marks, disrupting the Complainant’s business, and diverting Internet traffic for commercial gain (see The American Automobile Association Inc. v. Sompop Padungkijjaroen,WIPO Case No. D2012-2168; 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. A Domain Privacy / Transure Enterprise Ltd,WIPO Case No. D2010-0565; The American Automobile Association Inc. v. Wanjun Li,WIPO Case No. D2010-1481).
Furthermore, the Respondent’s attempt to sell the disputed domain name to the Complainant for an amount (USD 155 to 175) in considerable excess of the standard registration fee (USD 35) is also evidence of bad faith, as is the Respondent’s history of registering domain names making unauthorised use of third-party trade marks (see The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314,WIPO Case No. D2016-1671).
The Panel therefore concludes that the Complainant has satisfied the condition in 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.
David Stone
Sole Panelist
Date: November 12, 2018
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