The Complainant is The American Automobile Association Inc. of Florida, United States of America, represented by Covington & Burling of United States of America.
The Respondent is AAA-Vacationsunlimeted of United States of America.
The disputed domain names
<freeaaavacationsunlimited.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2009. On March 23, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 24, 2009, GoDaddy.com, Inc. 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 March 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2009. The Respondent sent email communications to the Center on March 27, 2009 and April 20, 2009.
The Center appointed Gary J. Nelson as the sole panelist in this matter on April 27, 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.
Complainant is a well known organization that has been offering travel and travel-related services since 1902. Complainant owns numerous trademark registrations for AAA throughout the world for travel and travel-related services. Complainant owns at least two United States trademark registrations for marks containing AAA and VACATIONS. Complainant registered its AAA and AAA VACATIONS trademarks prior to the date Respondent registered the contested domain names (i.e., March/April 2008).
At one time, Respondent appears to have operated a website at <aaavacationsnow.com> with the intent to recruit individuals to become travel agents. Respondents appears to currently operate websites at <freeaaavacations.info> and <freeaaavacations.net> with click through opportunities to other websites dealing with travel and travel-related services, including websites operated by Complainant and websites operated by competitors to Complainant.
Respondent owns, but does not appear to operate, websites corresponding to the remaining contested domain names.
Prior to the filing of the Complaint by Complainant, the parties exchanged correspondence. Complainant consistently demanded that Respondent relinquish ownership of the contested domain names. Respondent replied by refusing to relinquish ownership, but not directly reply to all of the demands presented by Complainant. Respondent also indicated that it intended to launch websites corresponding to the contested domain names at some point in the future.
Complainant is the exclusive owner of numerous United States trademark registrations for AAA for travel and travel-related services. Complainant also owns United States trademark registrations for AAA VACATIONS and for AAA MEMBER VACATIONS, along with common law rights, for travel and travel-related services. Complainant is also the owner of numerous trademark registrations for AAA in Canada, Benelux, France, Germany, Italy, Norway, Spain, Switzerland, European Community and China.
Complainant has used its AAA marks since 1902, and through its continuous and extensive advertising, promotion and sales of related products and services, the AAA marks have been extremely valuable and famous in the United States and throughout the rest of the world.
When Complainant became aware that Respondent owned <aaavacationsnow.com>, it sent a letter demanding Respondent relinquish ownership of this domain name. At the time the letter was sent, Respondent operated a website that recruited travel agents with the intent the travel agents would work from home. Respondent subsequently shut down the website, but retains ownership.
Respondent also owns all ten of the other contested domain names, eight of which are being held in a passive manner. The remaining two domain names, <freeaaavacations.info> and <freeaaavacations.net> host parked websites with links to Complainant's website, as well as links and advertisements for vacation services that compete with those offered by Complainant.
Respondent intends to bring websites on line for the nine domain names it is currently holding in a passive manner sometime in 2009.
Complainant claims ownership of AAA and AAA VACATIONS trademarks. Complainant claims priority of ownership of these trademarks over the date Respondent registered the contested domain names.
Respondent has no rights or legitimate interests in the contested domain names.
Respondent registered and is using the contested domain names in bad faith.
Respondent submitted a one paragraph defense. In the response, Respondent indicated it wished to oppose the Complaint filed by Complainant. Respondents also stated that it was not a road side assistance company and that every telephone book in the United States has voluminous listings for virtually every product or service beginning with the letters “aaa,” and that the use of the triple “aaa” is simply a way to gain a top position in the yellow page listings for a particular product/service.
Paragraph 15(a) of the Rules instructs the Panel to “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.”
In view of the fact Respondent's submission consists of a one paragraph response, to the extent Respondent's submission does not address most of the allegations made by Complainant, when appropriate, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel will give full consideration to the comments and defenses presented by the Respondent.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) The Respondent has no right or legitimate interest in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Complainant has registered its AAA and AAA VACATIONS trademarks (among others) with the United States Patent and Trademark Office. Complainant also owns AAA trademark registrations in Canada, Benelux, France, Germany, Italy, Norway, Spain, Switzerland, European Community and China. Therefore, Complainant has established rights in the AAA and AAA VACATIONS mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
All eleven of the contested domain names,
are confusingly similar to Complainant's widely-known AAA mark and Complainant's AAA VACATIONS trademark because they incorporate the entirety of Complainant's marks and merely add generic or laudatory terms and the generic top-level “.com,” “.info” or “.net” domain names. Neither the addition of a generic or merely laudatory term to a well-known mark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similarity. See Arthur Guinness Son & Co. (Dublin) Limited. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied). The addition of the words “now,” “online,” unlimited” and “free” are insufficient to over come Complainant's allegation of confusing similarity.
Further, the addition of the term “unlimeted” (i.e., a misspelling of the word “unlimited”), is also insufficient to over come a finding of confusingly similarity. See Washington. Mutual., Inc. v. Phayze., Inc., Peter Carrington and Party Night, Inc., WIPO Case No. D2003-0283 (finding that the misspelling of the descriptive term “account online” in the <wamuacountonline.com> domain name was insufficient to distinguish the domain from complainant's famous “WAMU” mark).
Confusing similarity is especially acute in this case where a generic term (i.e., “vacations”), in regards to the rights Complainant has in the AAA mark alone, tagged onto Complainant's AAA mark relate to the services provided by Complainant. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark”).
Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondent has no rights or legitimate interests in the contested domain names.
Respondent has filed a one paragraph response indicating its desire not to concede to the allegations made by the Complainant. However, Respondent has only alleged that it is not a road side assistance company (i.e., presumably implying that Complainant only uses its AAA and AAA VACATIONS marks in association with road side assistance services), and that every telephone book in the United States has voluminous listings that utilize the letters “aaa” as a way of ensuring advertisers will have their listing printed near the top of each particular product or service category.
By filing such a sparse response, Respondent has not provided any evidence that it is commonly known by the any of the eleven contested domain names, or that it is commonly known by any name incorporating the terms “aaa” or “aaa vacations” or “aaa-vacationsunlimited” or “aaa-vacationsunlimeted.” In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of complainant; (2) complainant's rights in its related trademarks precede Respondent's registration of the contested domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that all three of these conditions apply to the present case.
In regard to the issue of whether the Respondent is commonly known by the contested domain names, a registrant cannot establish that it is commonly known by a disputed domain name simply by providing contact information to the WHOIS database that is identical or substantially similar to the domain name. See Paula Ka v. Paul Korenek, WIPO Case No. D2003-0453 (“what paragraph 4(c)(ii) envisages is a situation where a person or business is commonly known...prior to the registration of the disputed domain name”); American. International Group, Inc. v. AIG, NAF Claim No. FA 1060803 (registrant's identification as “AIG” in the WHOIS database was insufficient, standing alone, to demonstrate registrant was commonly known by the <aigprivatequity.com> domain name). Here, while Respondent has listed its name as AAA-Vacationsunlimeted when registering the contested domain names, Respondent has not provided any actual evidence that it is commonly known by this name.
Respondent is currently operating websites at <freeaaavacations.info> and <freeaaavacations.net> that are merely advertising portals and parking pages that offer pay-per-click advertisements. This type of website, in such circumstances as in this case, does not constitute a bona fide offering of goods or services under the UDRP Policy paragraph 4(c)(i). See The American. Automobile. Association Inc. v. Jack Holder, NAF Claim No. FA1227171.
In regard to the remaining nine contested domain names, Respondent is maintaining passive and undeveloped websites. Respondent's failure to develop active websites corresponding to the remaining nine contested domain names is evidence supporting the conclusion that Respondent has no right or legitimate interest in these domain names. See Pharmacia & Upjohn AB v. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the Complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
The Panel finds that Respondent registered and is using the contested domain names in bad faith.
With the exception of <freeaaavacations.info> and <freeaaavacations.net>, Respondent is maintaining the remaining nine contested domain names as passive websites. Because the Panel cannot conceive of how Respondent could legitimately use these domain names in light of how it is using the other two disputed domain names (i.e., click-through websites to Complainant's competitors) and how it previously was using <aaavacationsnow.com> (i.e., for the solicitation of work from home travel agents), the Panel finds this action is sufficient evidence that Respondent registered and is using the remaining nine domain names in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose). See also, Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766 (finding that respondent's expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with complainant, and thus is the equivalent to bad faith use).
In regard to <freeaaavacations.info> and <freeaaavacations.net>, Respondent maintains corresponding websites hosting pay-per-click advertisements for entities competing directly with Complainant. This activity constitutes evidence of bad faith registration and use of the domain names. See McDonald's Corporation. v. ZusCom, WIPO Case No. D2007-1353 (“the use of another's trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy...”); see also SAFE Credit Union v. Mike Morgan, WIPO Case No. D2006-0588 (bad faith found where respondent received a commercial benefit from using the domain name as a pay-per-click site with advertisements for competing services).
The Panel also finds that Respondent likely chose the disputed names with full knowledge of Complainant's rights in the AAA and AAA VACATIONS trademark. Respondent's awareness of Complainant's AAA and AAA VACATIONS trademarks may be inferred because the marks were registered with the USPTO prior to Respondent's registration of the contested domain names and since the marks are well known in the travel and travel-related industries. See Kraft Foods (Norway) v. Fredrik and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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 names <aaavacationsnow.com>, <aaavacationsonline.com>, <aaavacationsunlimeted.com>, <aaavacationsunlimited.com>, <aaavacationsunlimited.info> <aaavacationsunlimited.net>, <aaavacationsunlimitednow.com>, <freeaaavacations.com>, <freeaaavacations.info>, <freeaaavacations.net> <freeaaavacationsunlimited.com> be transferred to the Complainant.
Gary J. Nelson
Dated: May 3, 2009