WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Automobile Association Inc. v. Texas International Property Associates
Case No. D2007-0592
1. The Parties
The Complainant is American Automobile Association Inc., United States of America, represented by Covington & Burling, United States of America.
The Respondent is Texas International Property Associates, United States of America, represented by Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mapsaaa.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2007. On April 19, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On May 11, 2007, Compana LLC 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2007. The Response was filed with the Center on June 8, 2007. The Panel has decided to accept the one-day late Response (per paragraph 6(d) of the Rules).
The Complainant submitted a Supplemental Filing on June 11, 2007.
The Center appointed Dennis A. Foster as the sole panelist in this matter on July 30, 2007. 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. Per paragraph 12 of the Rules, the Panel has decided not to request or allow Supplemental Filings by either party. The Complainant’s Supplemental Filing was not considered for this Decision.
4. Factual Background
The Complainant is a large organization founded in the United States of America in 1902 that provides a variety of services under the mark AAA. Among the travel services it provides are the designing and distribution of road maps. In 1960, the Complainant obtained from the United States Patent and Trademark Office (“USPTO”) a registration for its mark (Registration No. 703,556; August 30, 1960).
The Respondent is listed as the registrant of the disputed domain name and the record of registration was created on February 15, 2005. The Respondent uses the name to operate a website which links Internet users to third party companies.
5. Parties’ Contentions
- Founded in 1902, the Complainant, American Automobile Association, Inc. (“AAA”), is one of the world’s premier automotive clubs. Operating through local automobile clubs throughout the United States of America, the Complainant has grown beyond its initial goals of combating unfair automobile laws and campaigning for better roads and more reliable vehicles. It now also offers a wide range of products in the areas of automotive services, insurance and finance.
- The Complainant has also been a forceful advocate for travel safety and road improvements.
- The Complainant has become a source of travel assistance including customized directions, maps, and travel planning.
- The Complainant has invested enormous resources to develop and foster the reputation, recognition, and goodwill of itself and its member clubs’ products, services, and public interest efforts.
- Since 1956, the Complainant has registered with the United States Patent and Trademark Office several trademarks relating to its AAA mark. Also, the Complainant maintains several websites on its nearly 100 domain names, including <aaa.com> and <aaa.biz>.
- The disputed domain name is confusingly similar to the Complainant’s marks. The name includes the entire AAA mark and the corresponding website offers products similar to some of those offered by the Complainant.
- The Respondent has no legitimate interests in or rights to use the disputed domain name. The Respondent is neither commonly known by the name nor is it making a noncommercial or fair use of the same. The Respondent uses the disputed domain name to earn revenue from “click-throughs” to third parties.
- The Respondent registered and is using the disputed domain name in bad faith. The Respondent offers on the website connected to the domain name products and services that compete directly with Complainant’s.
- The Respondent’s website even includes references to Complainant’s offerings – thus the Respondent has actual knowledge of the Complainant’s trademark. Furthermore, the Respondent must have known of that trademark due to the Complainant’s size and scope.
- The Respondent is attempting to mislead consumers as to the source, sponsorship, affiliation or endorsement of the domain name in question, and to frustrate Internet users who seek the Complainant’s websites.
- By letter, the Complainant has made the Respondent aware of the Complainant’s senior rights in the AAA mark. The Respondent failed to respond, other than to re-register the disputed domain name, further evidence of its bad faith.
- The Respondent concedes that the Complainant is well-known for providing roadside assistance to motorists. Even though the Complainant might provide other products and services, that does not entitle the Complainant to exclusive use of the three-letter combination “AAA”.
- The word, “maps”, is the first word in the disputed domain name, and that word is a common word to which no one owns exclusive rights.
- The letter combination, “aaa”, is in use by hundreds of companies in the United States of America because companies know that consumers will look at the alphabetical start of a category in a telephone directory for products or services in that category.
- The Complainant has registered two trademarks for use in marketing maps, MAP-PAK and CITIMAP, neither of which incorporated the AAA mark.
- The United States allowed the registration of the trademark AAA ARBITRATION ROADMAP by a third party, demonstrating that the Complainant does not have exclusive rights to the AAA mark.
- There is nothing at the website located at the disputed domain name that would in any way indicate that it was connected with the Complainant.
- Internet users are aware that small differences in domain names matter when attempting to locate a website, and in the instant case the difference is too great between the disputed domain name and the Complainant’s trademark.
- Through agreement with a third party, the Respondent has given up control of the advertising links which appear in connection with the disputed domain name. Those links allow the Respondent to provide legitimate offerings to the public when used with respect to a domain name composed of generic terms, which is the case here.
- The Respondent has rights in the disputed domain name simply because it is made up of generic or descriptive terms.
- A purveyor of locator services, the Respondent is not attempting to pass itself off as affiliated with the Complainant but is attempting to help consumers locate goods or services related to generic or descriptive terms.
- Since the Respondent is neither trying to confuse consumers nor offering the disputed domain name for sale, bad faith on the part of the Respondent cannot be established.
6. Discussion and Findings
In order for the Complainant to succeed in this administrative proceeding under paragraphs 4(a)(i-iii) of the Policy and gain possession of the disputed domain name <mapsaaa.com>, the Complainant must prove the following:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
In Annex C of the Complaint, the Complainant has submitted to the Panel conclusive evidence of its registration with the USPTO of the trademark AAA. In line with countless other UDRP case decisions, the Panel finds that this evidence establishes the Complainant’s rights in that mark. See for example, Innomed Technologies., Inc. v. DRP Services., NAF Case No. FA221171 (February 18, 2004) (where the panel found that “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark”); and Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004).
Clearly the disputed domain name <mapsaaa.com> is not identical to the Complainant’s trademark AAA. The Complainant asserts that the disputed domain name is confusingly similar to the trademark, arguing that name incorporates in full the mark along with the descriptive term “maps”. The Complainant contends that, since a primary component of its business involves the marketing of maps, the addition of that descriptive term only heightens the inherent confusion between the name and the mark. The Panel agrees with the Complainant’s analysis, which is consistent with the approach taken in numerous prior UDRP decisions. For supporting cases, see American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489 (June 13, 2006) (finding the domain name <aaaautomotive.com> to be confusingly similar to the trademark, AAA); American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252 (April 27, 2006) (finding the domain name <wwwaaa.com> to be confusingly similar to the trademark, “AAA”); Gillette Co. v. RFK Assocs., NAF Case No. FA 492867 (July 28, 2005) (finding that the additions of the term “batteries”, which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> domain name from the complainant’s DURACELL mark); and United Services Automobile Association v. Ang Wa Assoc., WIPO Case No. 2004-0535 (September 29, 2004) (finding the domain name <fixusaa.com> to be confusingly similar to the trademark, USAA).
For the reasons stated above, the Panel finds that the Complainant has proved that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Though the Policy places the burden on the Complainant to show that the Respondent possesses no rights or legitimate interests in the disputed domain name, the Panel is in full agreement with the long held view articulated in many previous UDRP rulings that, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests in the disputed domain name. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. FA741828 (August 18, 2006); and also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case No. D2000-1228 (Nov. 28, 2000) (where the panel determined that, under certain circumstances, the mere assertion by the complainant that the respondent has no rights or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). In this case, the Complainant has made a sufficient showing to support a prima facie case that the Respondent lacks rights or legitimate interests in the domain name at issue, by, inter alia, demonstrating its ownership of a similar trademark and implicitly disavowing any affiliation with the Respondent.
Paragraph 4(c) of the Policy provides three separate ways in which the Respondent might meet this shift in burden of proof. However, in the present case, the Respondent fails on all three counts. The Respondent puts forth no evidence that it was ever commonly known by any name resembling the domain name in question, so paragraph 4(c)(ii) does not apply. By Respondent’s own admission, it uses the disputed domain name to collect revenues by providing links to advertisers who seek to sell, among other things, products (i.e., maps) similar to those offered by the Complainant. There have been many prior panels operating pursuant to the Policy that have declared this sort of disputed domain name use to fall short of the requirements of both paragraphs 4(c)(i) and 4(c)(iii). See for example, 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, NAF Case No. FA187429 (September 26, 2003) (where the panel, in transferring the domain names <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>, opined that employing those names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); and TM Acquisition Corp. v. Sign Guards, NAF Case No. FA132439 (December 31, 2002). Finally, Respondent’s contention that it has valid rights in the disputed domain name simply because it is composed of generic terms is not persuasive since, as noted above, the name combines a generic term, “maps”, with the Complainant’s registered and widely used AAA trademark The Panel further notes that whatever generic utility the Respondent believes “aaa” may have as an alphabetical prefix for a company name, it is clearly not being used in that way by the Respondent in the domain name at issue here. In conclusion, the Respondent has not met the shifted burden of proof.
Accordingly, the Panel rules that the Complainant has discharged its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent makes much of the word, “maps”, as a generic term that could be registered by anyone as a device to redirect Internet users to products or services related to that term. Certainly, the Respondent would have been free to register that word as a domain name, if available, for that purpose. However, the Panel is aware of no plausible reason in the circumstances that the Respondent would add the letters “aaa” to the word “maps” in the domain name at issue here, except that the Respondent desired to confuse Internet users with an association with the Complainant’s famous AAA trademark. The Panel is aware that the Complainant’s maps are, at least in the United States of America, standard road maps against which other road maps are measured. Thus, in this case, it is not difficult for the Panel to find that the Respondent’s actions fall within the scope of paragraph 4(b)(iv) of the Policy with respect to evidence of bad faith registration and use of the disputed domain name. To wit: by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 products or services at that site.
As a result, the Panel finds that the Complainant has succeeded in showing that the Respondent registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mapsaaa.com> be transferred to the Complainant.
Dennis A. Foster
Dated: August 13, 2007