The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling of Washington, United States of America.
The Respondent is Pablo Palermo of San Isidro, Peru.
The disputed domain name <aaatravelreviews.com> (the “Domain Name”) is registered with Backslap Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2009. On December 21, 2009, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the Domain Name. On December 21, 2009, Backslap Domains, 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 January 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 9, 2010.
The Center appointed David Taylor as the sole panelist in this matter on February 10, 2010. 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 factual background is taken from the submissions contained in the Complaint and the exhibits annexed thereto given that there was no Response filed.
The Complainant has been using the trademark AAA in commerce since 1902 in connexion with a variety of goods and services, including automotive, travel, insurance, financial and discount products and services.
The Complainant owns several trademarks in the term AAA, including the following:
- AAA service mark registered on May 23, 1967 with the USPTO under number 829265;
- AAA service mark registered on March 10, 1992 with the USPTO under number 1678804;
- AAA service mark registered on May 19, 1998 with the USPTO under number 2158654; and
- AAA service mark registered on March 23, 1994 with the National Institute for the Defense of Competition and Protection of Intellectual Property – INDECOPI, of Peru, under number 25104.
The Domain Name was registered on September 12, 2002. The Domain Name resolves to a website containing sponsored links to third party websites, mainly relating to the travel business and the car insurance business.
The Complainant asserts that it became aware of the Domain Name in 2008. On March 31, 2008, the Complainant sent a notice to the underlying registrant through the contact information provided by the proxy service, but received no response. The Complainant also contends that thereafter, the underlying registrant changed the registrant information in the WhoIs record, listing Security Shield LLC as a new proxy in lieu of the underlying registrant for the Domain Name. On October 29, 2009, the Complainant sent Security Shield LLC a final notice demanding that the proxy service reveal the underlying registrant of the Domain Name or be listed as the Respondent in a proceeding aimed at protecting the Complainant's trademark rights. Shortly thereafter, according to the Complainant, the WhoIs record for the Domain Name was updated to the Respondent as the true underlying registrant.
The Complainant contends that the Domain Name is confusingly similar to the Complainant's trademarks in the term AAA.
The Complainant asserts that the Domain Name reproduces its trademark entirely and that the addition of the generic terms “travel” and “reviews” are not sufficient to avoid the risk of consumer confusion. In addition, the Complainant submits that adding such generic terms will likely heighten consumer confusion because the Complainant is well known for offering travel products and services to its members. It is the Complainant's view that the Respondent's use of the Domain Name is likely to cause and to have caused consumers' confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant states that it has not licensed or authorized the Respondent to use its trademarks in connection with its business or as part of the Domain Name.
Furthermore, the Complainant submits that there is no evidence that the Respondent is commonly known by the Domain Name. The Domain Name is registered to a Pablo Palermo, name which bears no relation to the AAA trademarks.
Finally, the Complainant states that the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services nor is it being used for a legitimate non commercial or fair use and that the Respondent registered the Domain Name to mislead consumers and to gain profit from pay-per-click targeted advertisements in direct competition with the Complainant.
The Complainant asserts that the Domain Name was registered and is being used in bad faith.
The Complainant contends that:
- The Respondent's history of registering domain names that infringe third parties' trademark rights indicates bad faith registration and use in violation of the Policy.
- The Respondent's use of the Domain Name as a pay-per-click advertising website offering links to third party competitors of AAA “constitutes a disruption of Complainant's business and is thus evidence of bad faith” (referring to Am. Auto. Ass'n, Inc. v. Simpson, NAF Case No. FA1246270).
- The Respondent intentionally registered a domain name confusingly similar to the Complainant's trademarks to generate revenue from third party advertisements on the website associated with the Domain Name.
- Notwithstanding the Respondent's knowledge of the Complainant's trademarks, based on their United States and international registrations and their substantial fame in the United States and abroad, the Respondent continues to maintain the Domain Name and the associated website, despite receiving notice from the Complainant.
- The Respondent's amendments to the WhoIs record of the Domain Name after receiving the cease and desist notices provides further evidence of bad faith.
For all the foregoing reasons, the Complainant seeks the transfer of the Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with Paragraph 10 of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In the case of default by a party, Paragraph 14 of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate.
In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
Taking each of these issues in turn, the Panel decides as follows:
The first element that needs to be established is whether the Complainant has rights in the term AAA.
The Complainant submits evidence that it has many registered trademarks in the term AAA in the United States and worldwide, including in Peru, the Respondent's country of residence according to the WhoIs record of the Domain Name.
Therefore, based on the evidence produced by the Complainant, the Panel is satisfied that the Complainant has rights in the term AAA.
The second element to be considered is whether the Domain Name is identical or confusingly similar to the term AAA in which the Complainant has rights.
The Domain Name reproduces the Complainant's trademark in the term AAA with the mere addition of the words “travel” and “reviews” and the gTLD “.com”.
With regard to the addition of the gTLD “.com”, it is widely accepted that it is irrelevant in assessing the issue of confusing similarity between a trademark and a domain name.
Numerous prior UDRP panels have held that if a domain name incorporates a Complainant's trademark in its entirety this is enough to establish confusing similarity, despite the addition of other characters.
The words “travel” and “reviews” in the Domain Name are specifically associated with the Complainant's area of business and as such reinforce the connection to the Complainant and its AAA trademarks and therefore the risk of confusion between the Domain Name and the Complainant's trademark.
The Panel finds that the dominant element of the Domain Name is the phrase AAA which is identical to the Complainant's trademark.
The Panel finds that the Domain Name is confusingly similar to the AAA trademark in which the Complainant has rights.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
The second element the Complainant must establish is that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate its rights or legitimate interests in a domain name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service trademark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service trademark at issue.”
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the Domain Name. As a result of its default in filing a response, the Respondent has failed to rebut that evidence.
There is nothing to suggest that the Respondent could satisfy any of the requirements of Paragraph 4(c) of the Policy.
There is no evidence that the Respondent obtained any license or authorisation to use the trademarks of the Complainant in the term AAA nor that the Respondent is commonly known by the Domain Name.
In addition the Panel considers that redirecting Internet users to a web directory offering various links to goods and services that are in competition with the Complainant's goods and services using a domain name confusingly similar to the Complainant's trademark cannot be considered to be a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Domain Name within the meaning of paragraph 4(c)(i) of the Policy.
Finally, the Panel considers that the Respondent's failure to respond to this Complaint is a further element suggesting the lack of rights and legitimate interests in the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph (4)(a)(ii) of the Policy.
The third element that the Complainant must prove is that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of registration and use of a domain name in bad faith, as follows:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service trademark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service trademark from reflecting the trademark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's trademark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In view of the fact that the term AAA was registered as a trademark by the Complainant in the United States and in Peru, and that the Complainant's trademarks have acquired significant goodwill and notoriety, it is highly unlikely that the Respondent would not have been aware of the Complainant's business and trademarks at the time of the Domain Name registration.
The choice by the Respondent of the AAA trademark, plus the descriptive words “travel” and “reviews” which refer to central aspects of the Complainant's business, of itself demonstrates this.
This is further supported by the fact that the content of the website to which the Domain Name points is mainly targeting services and goods which are in competition with the Complainant's activities.
The Panel also believes that the Domain Name was registered and is being used to attract consumers and make a commercial gain by providing links to third parties' websites through a pay-per-click scheme thereby taking advantage of the goodwill and the likelihood of confusion with the Complainant's trademark.
The Panel is of the opinion that the Respondent would in all likeliness have been fully aware that the registration and use of the Domain Name would infringe the Complainant's rights in the AAA trademarks. In view of this and given the other circumstances highlighted above, the Respondent's failure to respond to the cease and desist letters sent by the Complainant is highly suggestive of bad faith conduct.
The Respondent seems to have engaged in a pattern of registering domain names infringing third parties trademarks. This is evidenced by the fact that the Respondent was found to have breached the Policy in no less than ten previous UDRP decisions which can only reinforce a finding of bad faith on the Respondent's part, both in relation to registration and use of the Domain Name.
The Panel finds another suggestion of bad faith in the fact that the Respondent appears to have used a domain privacy service. Whilst such services can serve legitimate and useful purposes such services can and seem to be increasingly used in order to disguise the true identity of the registrant with a view to evading the enforcement of legitimate third party rights which the Panel believes was the case in the present instance.
In addition, the apparent modifications of the Domain Name WhoIs record which followed the respective cease and desist letters from the Complainant are, in this Panel's view, likely to constitute cyberflight which is an attempt to avoid or delay UDRP proceedings by changing domain registration details after learning of a complaint which is an additional and strong indication of bad faith.
Finally, the Respondent's failure to rebut any of the Complainant's arguments is a further element from which the Panel infers bad faith on the Respondent's part.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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, <aaatravelreviews.com> be transferred to the Complainant.
Dated: March 1, 2010