The Complainant is The American Automobile Association, Inc., United States of America (“United States”), represented by Covington & Burling LLP, United States.
The Respondent is China Capital Domain Fund Limited, China, represented by Morton & Associates LLP, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2019. On September 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 11, 2019, 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 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2019. The Response was filed with the Center on October 9, 2019. The Center appointed John Swinson as the sole panelist in this matter on October 17, 2019. 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 is The American Automobile Association, Inc., a company incorporated in the United States. The Complainant provides automobile-related products and services in the United States and Canada. The Complainant has been established for over 100 years. The Complainant is the owner of a number of registered trade marks for AAA, including United States registered trade mark number 0829265, registered on May 23, 1967 (the “Trade Mark”). The Respondent is China Capital Domain Fund Limited, a company incorporated in Hong Kong, China. The Respondent is a domain investor. According to the Registrar, the Respondent acquired the Disputed Domain Name on November 30, 2018. According to the Respondent, the Respondent purchased a portfolio of expired domains, which included the Disputed Domain Name, on or around February 15, 2018. At present, the Disputed Domain Name resolves to a parking page containing pay-per-click (“PPC”) links. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions. Identical or Confusingly Similar The Complainant bases this Complaint on its exclusive ownership of United States federal trade mark registrations. It is well settled that the Trade Mark is valuable and famous in the United States and abroad (The American Automobile Association, Inc. v. Spins Unlimited, David Snyder,WIPO Case No. D2013-1827; Am. Auto. Ass’n, Inc. v. AAA Ins. Agency, Inc. 618 F. Supp. 787, 790 (W.D. Tex. 1985); 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)). The Disputed Domain Name is substantially and confusingly similar to the Trade Mark because it contains the entire Trade Mark with the addition of generic terms “auto rental” and “u can rent”. Adding the generic term “auto rental” and including website links related to automobile rental services heightens the likelihood of consumer confusion. The Respondent’s use of the Disputed Domain Name is likely to cause, and may have already caused, consumer confusion as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name. Rights or Legitimate Interests The Complainant has not licensed or authorised the Respondent to use the Trade Mark. This is sufficient to establish a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Respondent is commonly known by the Disputed Domain Name, nor is the Respondent using the Disputed Domain Name to advertise a business with a name containing the Trade Mark. The Respondent’s use of the Disputed Domain Name to host a parking page with PPC links to competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Respondent assuredly was aware of the Complainant and the Trade Mark when the Respondent registered the Disputed Domain Name, and intends to divert Internet users seeking the Complainant’s products and services to the Respondent’s website. Registered and Used in Bad Faith The following factors demonstrate that the Respondent registered and used the Disputed Domain Name in bad faith: - The Respondent registered a domain name confusingly similar to the Trade Mark to divert Internet users to the Respondent’s website. - The Respondent used the Disputed Domain Name to host a parking page with PPC links to competing services (which is prima facie evidence of bad faith), and is disruptive of the Complainant’s business. - The Respondent had actual or constructive knowledge of the Trade Mark and the Complainant’s substantial fame in the United States and abroad. The Respondent registered the Disputed Domain Name over 100 years after the Complainant began using the Trade Mark. - The Respondent offered to sell the Disputed Domain Name for more than its out-of-pocket costs. The Respondent also has a history of cybersquatting. B. Respondent The Respondent makes the following submissions. Identical or Confusingly Similar The Disputed Domain Name is not identical or confusingly similar to the Trade Mark – the terms “aaaautorental” and “ucanrentautorental” result in the Disputed Domain Name being markedly different in sight, sound and commercial impression. The Trade Mark only comprises of a miniscule portion of the Disputed Domain Name, so there is no risk of confusion. The content of the Respondent’s website is irrelevant. Rights or Legitimate Interests The Respondent acquired the Disputed Domain Name on or around February 15, 2018, as part of a portfolio of expired domains, consistent with the Respondent’s business model. The Disputed Domain Name was formally registered by a small automobile rental company in Alabama, United States called “AAA Auto Rental – U Can Rent Auto Rental”. The Respondent’s use in posting parking and landing pages with PPC links is acceptable and permissible, provided the Disputed Domain Name was not registered with a particular trade mark in mind. The Respondent purchased the Disputed Domain Name because it contained the generic terms “auto rental” twice, which boosts search traffic and would enable the Respondent to populate the Disputed Domain Name with PPC links related to automobile rentals. The Disputed Domain Name was also appealing because it was an expired domain of a defunct and rebranded business, which minimized the probability the Respondent could be infringing on third party rights. The parking page does not refer to the Complainant. The Respondent did not have actual or constructive knowledge of the Complainant or the Trade Mark. The Respondent has legitimate rights and interests in the Disputed Domain Name which it acquired as part of its business operations without any intent to capitalise on the Complainant’s reputation and goodwill. The Complainant has not provided any evidence to the contrary. Registered and Used in Bad Faith The Complainant relies on previous UDRP decisions involving the Complainant to establish the fact that the Trade Mark is well-known, and this is not an issue that should be decided by a UDRP Panel. Additionally, those Panels made this finding in the context of the United States and Canada only, not Asia where the Complainant is not well known. The Respondent is not incorporated in the United States and does not have a principal place of business there. The Complainant has not provided proof of trade mark registrations or business activities in Asia or Hong Kong, China, where the Respondent is based. AAA is a common acronym. The Respondent did not have actual knowledge of the Complainant or the Trade Mark at the time it acquired the Disputed Domain Name. In Hong Kong, China, the acronym “AAA” is most associated with the Asia Art Archive. The Respondent is in an entirely different industry on the other side of the world to the Complainant, so it would be inequitable to impose actual knowledge. Knowledge is not sufficient to establish bad faith. The Complainant was the first to approach the Respondent, and the Respondent only offered to sell the Disputed Domain Name for the purposes of a harmonious resolution to the matter. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark. The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of a hyphen and the words “autorental” (twice) and “ucanrent”. The first element of the Policy functions primarily as a standing requirement. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element (see section 1.8 of WIPO Overview 3.0). In this case the added terms do not dispel such a similarity or change the overall impression of the Disputed Domain Name as being connected to the Trade Mark (see The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314,WIPO Case No. D2016-1671). The Panel acknowledges that the acronym “AAA” does not always refer to the Complainant. However, the words used in the Disputed Domain Name are directly related to services provided by the Complainant. The Panel considers that this case is distinguishable from The American Automobile Association, Inc. v. Domains by Proxy, LLC a/k/a Tamir Zaid, aaa locksmith services,WIPO Case No. D2014-0122, where it was found that the domain names in question were not similar to the Complainant’s marks. In those decisions, it was highly relevant to the panels’ findings that the Complainant was not well-known for locksmith services. In contrast, the Complainant is well-known for travel-related services (including car rental services), and these services are among the class of services provided under its trade marks (see The American Automobile Association, Inc. v. Wesley Cao, aaainsurancefreequote,WIPO Case No. D2014-0169). The Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. The Panel considers the Complainant has made out a prima facie case. This finding is based on the following: - The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name features a PPC link page. These links relate to automobile services, including links to the Complainant’s competitors. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy. - The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name. - There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name. - The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. It is likely that the Respondent is receiving click-through revenue from the PPC links on the website at the Disputed Domain Name. As the Complainant has established a prima facie case, the burden of production on this element shifts to the Respondent (see section 2.1 of WIPO Overview 3.0). The Respondent submits that the circumstances of this case fall within paragraph 2.9 of WIPO Overview 3.0: Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark. The Respondent argues that the Respondent chose the Disputed Domain Name with someone other than the Complainant in mind (namely the defunct business “AAA Auto Rental – U Can Rent Auto Rental”) and because of the generic terms “auto rental” contained within, which boosts search traffic. According to the Respondent, this was done in furtherance of its legitimate business operations, which from time to time involve the purchase of domain names in bulk. The Respondent denies that it was aware of the Complainant or the Trade Mark at the time of acquiring the Disputed Domain Name. The Panel does not decide whether or not Respondent’s business is legitimate, because the issue before the Panel is whether the Respondent has rights or legitimate interests in the Disputed Domain Name per se (see Goodr LLC v. Michael Rader, Brandroot, WIPO Case No. D2018-1171). The Panel accepts that some of the terms within the Disputed Domain Name are dictionary terms – namely “autorental” and “ucanrent”. The Panel also accepts that the acronym “AAA” may be a common acronym in a number of industries. Previous panels have found that generic use of a disputed domain name for PPC links by a domainer can amount to a legitimate interest (Havanna S.A. v. Brendhan Hight, Mdnh Inc.,WIPO Case No. D2010-1652). However, in order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trade mark rights (see section 2.10 of WIPO Overview 3.0 and Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093). Here, the PPC links on the Respondent’s website relate to both competitors of the Complainant (who provides various automobile services) and to the generic dictionary meaning of part of the Disputed Domain Name, being automobile rental services. That is, many of the PPC links relate to automobile services which naturally compete with the Complainant’s business, but are also logically connected with the meaning of the words comprising the domain name’s textual string. In these circumstances, it is difficult to determine in which sense the predominate use has occurred (Administradora de Marcas y Franquicias, S. A. de C. V. v. Marchex Sales, Inc./Brendhan Hight,WIPO Case No. D2012-1572). The Disputed Domain Name is not wholly descriptive – it consists of the Trade Mark, together with descriptive terms which Internet users may expect to be used by the Complainant. The Disputed Domain Name includes “AAA” which is the Complainant’s Trade Mark and is not generally regarded as a dictionary word. The Disputed Domain Name is not being used because of any possible dictionary meaning of “AAA”. A simple Internet search for “AAA” would have quickly revealed the Complainant’s use and rights in AAA in the United States. As was the case in Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com,WIPO Case No. D2018-0540, the Respondent has provided no evidence on how the Respondent clears the domain names it acquires, so it appears from the available record before the Panel that the Respondent simply registered the Disputed Domain Name without conducting any due diligence (other than determining that the Disputed Domain Name was once owned by a defunct business). The Respondent’s allegations that “AAA” is a common acronym, like for example “Asia Art Archive”, is irrelevant noting the composition of the Disputed Domain Name. For these reasons, the Panel finds that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Panel also considers that this case is again distinguishable from the The American Automobile Association, Inc. v. Domains by Proxy, LLC a/k/a Tamir Zaid, aaa locksmith services, supra, because the Respondent has not used the Disputed Domain Name for a bona fide offering of auto-rental services. The Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Respondent asserts that the Respondent was not aware of the Complainant or its rights in the Trade Mark when the Respondent acquired the Disputed Domain Name, and should not have been so aware because the Complainant’s use of the Trade Mark was limited to the United States and Canada, and because the Respondent operates within Hong Kong. It is not a requirement of the Policy for the Complainant to succeed that the Complainant must demonstrate that the Respondent registered the domain name with the Complainant in mind or to trade off the reputation of the Complainant. If the Complainant so demonstrates, that may be evidence of bad faith. But there may be other bases on which the Complainant can demonstrate bad faith. The Policy simply requires that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. In the circumstances of this case, the Panel considers that the Respondent has an affirmative duty to conduct searches to determine whether registration of the Disputed Domain Name will infringe on the trademark rights of a third party. The Respondent’s website is accessible outside of Hong Kong, China. The links on the website at the Disputed Domain Name include links to businesses operating in the United States and other jurisdictions outside of Hong Kong, China, and the website appears to be directed at least in part to consumers in the United States. Even though the Respondent is located in Hong Kong, China, some of the links target United States consumers and therefore it was appropriate for the Respondent to consider United States trade mark rights. Furthermore, even if the Respondent’s business was limited to a single jurisdiction in which the Complainant did not have a trade mark registration, “it does not follow that the Respondent is absolved from responsibility for an abusive domain name registration” (see Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, supra). The Panel considers that the panel’s comments in Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, supra are instructive here: The Respondent’s claim to ignorance of the Complainant’s trademark rights may, or may not, be true. The fact is, however, that it is simply not possible for the Panel to know what was the Respondent’s subjective state of mind, assuming that it actually had one. Given that the Respondent is a corporation and registered the disputed domain name through automated means (“drop-catching” the disputed domain name upon the accidental failure of the Complainant to renew its more than 14-years long previous registration of it), the reality is that the Respondent really had no subjective state of mind – other than that it is was registering a domain name that began with the word “super” and that immediately prior had been held by another person. In situations such as this, where the registration is automated, previous panels in cases under the Policy have approached the issue of knowledge objectively, rather than subjectively – that is to say, by considering what the Respondent should have known, rather than what it actually did or did not know. This, in turn, has led panels to recognize that the registrant of a domain name may have a duty to establish whether registration of the domain name will infringe on the trademark rights of a third party. As stated in section 3.2.3 of WIPO Overview 3.0: “Panels have held that especially domainers undertaking bulk purchases or automated registrations have an affirmative obligation to avoid the registration of trademark-abusive domain names. The Panel will look to the facts of the case to determine whether such respondent has undertaken good faith efforts to screen such registrations against readily-available online databases to avoid registration of trademark-abusive domain names.” Although the Panel notes that the previous registrant of the Disputed Domain Name in this case is not the Complainant here, the Panel considers that similar reasoning applies to Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, supra. The Disputed Domain Name consists of the Trade Mark, and descriptive words which Internet users may expect to be used by the Complainant. In this situation, it is correct to say, as did the panel in Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, supra and Pullmantur, S.A. v. Domain Asset Holdings, LLC, Domain Administrator,WIPO Case No. D2015-0053: “[T]he most likely explanation for the registration and holding of the Domain Name was to take some form of unfair advantage of the association of the term embodied in the Domain Name with the Complainant’s trade marks”. The evidence before the Panel does not disclose how the Respondent screens the domain names it acquires or registers. The Respondent claims that it was unaware of the Complainant’s rights. As was found by the panel in Goodr LLC v. Michael Rader, Brandroot, supra the Respondent’s claim is in effect an admission that the Respondent failed to search and/or screen the Disputed Domain Name, as was Respondent's responsibility. This is particularly relevant where the Respondent’s business is to acquire domain names in bulk for either PPC advertising, or to sell to consumers. The Panel concludes that the Respondent, when registering the Disputed Domain Name, acted in disregard of the rights of third parties and therefore registered the Disputed Domain Name in bad faith. It is not sufficient for the Respondent to rely on the fact that the Disputed Domain Name was held by a third party before it expired as evidence of good faith. In the circumstances of this case, if the Respondent did not know of the Trade Mark, it should have known. Paragraphs 2 and 4 of the Policy impose a degree of responsibility even for a business that automates the process of rapidly registering expired or deleted domain names (see Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964). In this case, the submissions and evidence provided by the Complainant supports an inference of bad faith registration, and the Respondent has failed to rebut this presumption (see Yusuf A. Alghanim & Sons W.L.L. v. Anees Salah Salameh,WIPO Case No. D2018-1231). Specifically, the Respondent claims that the Disputed Domain Name was registered because it belonged to a defunct business, and because the Disputed Domain Name is attractive because it contains the words “autorental” twice, which boosts traffic. Merely buying a domain name from a defunct business does not mean that the domain name is clear to use and will not infringe on third party rights. The former business could have had prior use rights, or could itself have been infringing on the Complainant’s rights. Furthermore, the Respondent could just as easily have registered any number of domain names containing the words “autorental” without any reference to AAA or the Complainant, if this was indeed the primary reason for the value in the Disputed Domain Name. For these reasons, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. For completeness, the Panel notes that the Complainant submits that the Respondent has a history of cybersquatting, and points to numerous different actions under the Policy filed with the Center: Philip Morris USA Inc. v. Domain Administrator, Eastern Valley Limited / Domain Administrator, China Capital Investment Limited,WIPO Case No. D2017-1978; Philip Morris USA Inc. v. China Capital Investment Limited / Domain Administrator,WIPO Case No. D2017-0846; Royal Bank of Canada v. China Capital Investment Limited,WIPO Case No. D2017-1025; Partners Group Holding AG and Partners Group AG v. Domain Admin, China Capital Investment Limited,WIPO Case No. D2016-2501; Equifax Inc. v. Domain Administrator, China Capital Investment Limited,WIPO Case No. D2017-1880; Société Air France v. Domain Administrator, China Capital,WIPO Case No. D2018-1220; The Commissioners for HM Revenue and Customs v. Domain Administrator, China Capital,WIPO Case No. D2018-1640; Berlitz Investment Corporation v. China Capital Investment Limited,WIPO Case No. D2016-2197; Philip Morris USA Inc. v. Domain Administrator, China Capital Domain Fund Limited; Domain Administrator, Eastern Valley Limited,WIPO Case No. D2018-1280. The Complainant does not submit that this amounts to a pattern of conduct for the purposes of clause 4(b)(ii) of the Policy, and it is not necessary for the Panel to make a finding on this issue. 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 John Swinson
Sole Panelist
Date: October 31, 2019
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