The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling LLP, United States.
The Respondent is Conrad Cook of Boca Raton, Florida, United States.
The disputed domain name <aaaallfloridainsurance.com> is registered with GoDaddy.com, Inc. (“GoDaddy”)
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2009 by email and on February 17, 2009 in hardcopy. On February 13, 2009, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the disputed domain name. On February 13, 2009, GoDaddy 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 11, 2009.
The Center appointed Seth M. Reiss as the sole panelist in this matter on March 18, 2009. 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 Complainant headquartered in Heathrow, Florida, claims exclusive rights in marks that comprise or include the acronym AAA for automobile associations and related goods and services. Among the services the Complainant associates with its AAA marks are brokerage, claims, adjusting, and underwriting services for a wide variety of insurance. Appended to the Complaint are United States Patent and Trademark Office certificates of service mark registrations for the mark AAA dating back to 1967. The Complainant also owns United States (“U.S.”) federal registrations for the marks AAA GUARANTEED LIFE and AAA LIFE INSURANCE COMPANY, for services in the field of insurance; and AAA mark registrations for automobile related services in a variety of countries around the globe.
The Complainant has used its AAA service marks continuously since 1902 and claims common law rights as a result thereof. Also as a result of the long term and widespread use of the AAA marks, and the Complainant's promotion thereof, the Complainant believes its AAA marks are widely recognized by consumers in the United States and abroad and that the AAA marks can be characterized as famous.
The <aaaallfloridainsurance.com> domain name is currently registered to Conrad Cook, an individual listed as having a Boca Raton, Florida address. The <aaaallfloridainsurance.com> domain name was first registered on July 30, 2001.
In January and March 2008, the Complainant wrote letters to the Respondent demanding that the Respondent cease its use of the <aaaallfloridainsurance.com> domain name as an Internet advertising portal and either cancel the disputed domain name or transfer the domain name to the Complainant. The Complainant claims it received no response.
At the time the Complaint was filed, and currently, the <aaaallfloridainsurance.com> domain name is used to point to a GoDaddy parking page containing “sponsored listings” with multiple links to commercial websites. Each link describes some type of insurance offering unrelated to the Complainant.
The Complainant contends that the <aaaallfloridainsurance.com> domain name is substantially and confusingly similar to the Complainant's AAA marks in that the disputed domain name includes the entire AAA mark together with what the Complainant describes as generic terms “all”, “florida” and “insurance”. Because the generic term “insurance” describes a central aspect of the Complainant's business the risk of confusion, according to the Complainant, is increased. As the Complainant is headquartered in Florida, the addition of the geographic term “florida” does nothing to lessen the risk of confusion.
The Complainant next submits that the Respondent has no rights or legitimate interests in respect of the domain name <aaaallfloridainsurance.com> because the Respondent is not authorized by the Complainant to use Complainant's AAA marks and there is no evidence that the Respondent is known by the name “aaaallfloridainsurance” or any distinctive portion thereof. The Complainant further argues that the Respondent's use of the domain name, to point to a parked GoDaddy webpage that advertises and links to commercial websites selling products that compete with the Complainant's insurance offerings, is not a bona fide offering of goods or services, nor a legitimate noncommercial use, or fair use, of the Complainant's mark.
Finally, the Complainant contends that the disputed domain was registered and is being used by the Respondent in bad faith because: there no plausible reason for the Respondent's registration and use of the <aaaallfloridainsurance.com> domain name other than to confuse consumers and profit from the Complainant's famous AAA mark; the Respondent is using the disputed domain to point to a website through which the Respondent earns pay-per-click revenues from advertising insurance businesses that directly compete with the insurance services offered by the Complainant; and the Respondent must have known of Complainant's AAA marks when he registered the <aaaallfloridainsurance.com> domain name and the Respondent certainly knew after receiving the Complainant's cease and desist letters.
Pursuant to paragraph 4(i) of the Policy, the Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs that the “Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant has the burden of establishing the existence of the following three elements:
(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 respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
The Complainant has demonstrated, through U.S. federal registrations and long term, widespread and continuous use, established rights in the AAA mark for insurance related services.
The domain name <aaaallfloridainsurance> is not identical with Complainant's AAA mark. The disputed domain name includes the additional descriptive term “all”, the additional geographic term “florida”, and the additional generic term “insurance”. The question posed is therefore whether the disputed domain name, viewed in its entirety,1 is confusingly similar with Complainant's AAA mark.
This Panel agrees with the Complainant that the addition of a generic term describing the goods or services for which a mark is protected does nothing to lessen the likelihood of confusion and may increase that likelihood. See American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592 (<mapsaaa.com> domain name confusingly similar to AAA marks for maps); American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489, (<aaaautomotive.com> domain name confusingly similar to AAA marks for automotive services); see also The American Automobile Association, Inc. v. Frederick A. Simpson, CPA, NAF Case No. FA1105681 (<aaafastravel.com> and <aaa-fasttravel.com> domain names confusingly similar to AAA marks for travel services). The Panel also agrees with the Complainant that the addition of a geographically descriptive term generally will not serve to distinguish or reduce the likelihood of confusion. See Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363, (citing Bloomberg L.P. v. Sein M.D., NAF Case No. FA0101000096487); eBay Inc., v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd., WIPO Case No. D2000-1463. 2
While the Panel regards the term “all” as descriptive, not generic, the Panel agrees with the Complainant that “all” fails to distinguish Respondent's domain name or lessen the risk that Respondent's domain name will be associated in the minds of the public with the Complainant or Complainant's AAA marks.
On balance3, given the notoriety of Complainant's AAA mark, the addition of the generic term “insurance” a service for which Complainant's mark is specifically protected, and the inability of the terms “all” and “florida” to distinguish or lessen the probability of public confusion, this Panel is satisfied that disputed domain name is confusingly similar to the mark AAA in regard to which the Complainant has rights.
The consensus view of UDRP panelists concerning the burden of establishing lack of a respondent's rights or legitimate interests in respect of a domain name is that:
[w]hile the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case the Complainant has alleged that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent is neither licensed nor otherwise authorized by the Complainant to use Complainant's AAA marks. This establishes a prima facie case and shifts the burden to the Respondent to demonstrate rights or legitimate interests in the domain name.
By not submitting a response, the Respondent has failed to invoke any circumstances that might demonstrate, pursuant to paragraph 4(c) of the Policy that the Respondent holds some right or legitimate interest in the disputed domain name. See Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323.
Additionally, the Complainant's rights in respect of its AAA marks predate by many years the Respondent's registration and use of the disputed domain name. Given the wide spread use and renown of the AAA marks, it is unlikely that the Respondent would not have not known of the rights held by the Complainant in the AAA marks at the time the Respondent registered the disputed domain name. Such awareness on the part of a respondent may be inconsistent with the possibility of some right or legitimate interest in the respondent in respect of the domain name. See Pfizer Inc. v. Websites, WIPO Case No. D2004-0730. The panel in American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592, for example, concluded it was “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 notes that the Respondent, like the Complainant, resides in Florida. But this alone would be insufficient to establish some right or legitimate interest on the part of the Respondent in respect of the <aaaallfloridainsurance> domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant first asks this Panel to find bad faith registration and use based upon the Respondent's presumed awareness of Complainant's AAA marks at the time the Respondent registered the disputed domain name.
Other panels considering Complainant's AAA mark have concluded the mark is “widely recognized in the United States and abroad” in relation to the Complainant's automobile, travel, financial and insurance related products and services. See The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931: “It is a reasonable inference from the circumstances of this case that the Respondent knew of and had in mind the Complainant and the Complainant's AAA mark when registered the disputed [<aaaautorewards.com>] domain name.” American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252: “Given the evidence fame of the Complainant in the automobile fraternity in the United States, it seems inconceivable that the Respondent cannot have been aware of the Complainant and its trade mark.” See also quotation from American Automobile Association Inc. v. Texas International Property Associates, supra. Awareness of Complainant's AAA marks on the part of the Respondent at the time the Respondent registered and made use of the disputed domain name is at least likely.
However, passing oneself off as the Automobile Association of America, the American Arbitration Association, or some other entity who in acronym terms is spelled AAA is not the only motivation for selecting a triple A prefix. Many nondescript businesses select the prefix AAA to be first among alphabetical listing services, or to signify that they offer the highest grade of goods or quality of service. A triple A search of the WIPO's UDRP precedent reveals, not only cases in which three contiguous “A”s are included within a disputed domain, but also those in which one of the parties prefixes its name with AAA. E.g., Telstra Corporation Limited v. Mikhail Doubinski and Yury Sharafutdinov trading as AAA Marketing World, WIPO Case No. DAU2006-0008; Apartment Temporaries, Inc. v. AAA Staffing, Ltd., WIPO Case No. D2001-0810; Roanoke Technology Corporation v. AAA Website, Inc., WIPO Case No. D2001-0453; Greenigans Lawn Care Inc. v. AAA Graphics, WIPO Case No. D2004-0247; and Driver and Vehicle Licensing Agency v. AAA AAA and Ash Manek, WIPO Case No. D2004-0176. The mere selection of a triple A prefix for a domain name should not compel a conclusion that mischief is afoot. See, for example, American Automobile Association, Inc. v. A A A Transmission, Inc. a/k/a AAA Transmission Center & Auto Repair, Inc. d/b/a A+A+A+ Transmission Center & Auto Repair, NAF Case No. FA0204000109481, denying the Complainant's claim for bad faith registration and use where respondent was reflecting its A+A+A+ Transmission Center & Auto Repair name in the disputed <aaatransmission.com> domain name and had included disclaimers to prevent confusion on its website.
But the Complainant also claims that the Respondent is generating pay-per-click revenues from his parked <aaaallfloridainsurance.com> domain name. The “www.aaaallfloridainsurance.com” webpage advertises and provides links to Complainant's competition in the field of insurance. At the top of the parked page is the text “This Web page is parked Free, courtesy of GoDaddy.com.” The slightest investigation reveals that GoDaddy offers a “Turn your parked domain into Cash!” service.4 For a fee, a “parked free” domain name can generate click-through revenues for the domain name owner.
“Domain name parking services will usually allow users to choose ‘keywords' to associate with a domain name so that the sponsored links that appear on the page are better aligned with the domain name in the hope that more ‘click through' revenue will be generated.” Owens Corning v. NA, supra. Moreover, it is widely accepted by UDRP panels that a domain name registrant is responsible for the content of its website even if engineered and placed there automatically by a third party service provider. See, e.g., Allianz SE v. Yi Qin, WIPO Case No. D2008-1502.
Other panels reviewing domains utilizing the GoDaddy parking page click-through advertising revenue service under particular circumstances have found bad faith on the part of the domain name registrant. Allianz SE v. Yi Qin, supra; Fiat S.p.A. and Fiat Group Automobiles S.p.A. v. Antonio Esposito, WIPO Case No. D2007-1868; Sports Saddle Inc. v. Johnson Enterprises, WIPO Case No. D2006-0705; Owens Corning v. NA, WIPO Case No. D2007-1143.
A panel may draw logical negative inferences from the Respondent's default. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 4.6.
Where it appears, as it does here, that the Respondent is utilizing a domain name parking service to park his confusingly similar domain name thereby to earn money whenever a visitor clicks through to a competitor of the Complainant, Respondent's silence in light of the present record leaves this Panel with little choice but to find bad faith registration and use. As such, the third element of the Policy is met.
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 <aaaallfloridainsurance.com> be transferred to the Complainant.
Seth M. Reiss
Dated: March 29, 2009
1 The “.com” TLD suffix is ignored for purposes of determining identity or confusing similarity. Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464.
2 The Complainant goes further contending that, as Complainant is headquartered in Florida, the addition of the term “florida” actually increases the risk that the public will associate the disputed domain with the Complainant. While this may be true, the Respondent also resides in Florida.
3 At some point the string of generic and descriptive words preceding and/or following a protected mark may dilute the mark's prominence to the point that the domain name, viewed in its entirety, is no longer confusingly similar to the mark. The facts of this case approach, but in this Panel's opinion do not meet this point.
4 The Panel may undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 4.5.