The Complainant is The American Automobile Association Inc., Florida, United States of America, represented by Covington & Burling LLP, United States of America.
The Respondent is InsuranceExpress.com Inc., Gene Graceffo, New Hampshire, United States of America.
The disputed domain name <aaaautoinsurance.com> (“Disputed Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2010. On February 10, 2010, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed domain name. On February 10, 2010, eNom 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 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 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2010. No formal Response was filed with the Center by the deadline for Response. However, on March 4, 2010 a brief email was received by the Complainant from the Respondent.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 17, 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 Center received a Request to File an Additional Submission from the Complainant on March 8, 2010, and an email in response from the Respondent on March 8, 2010.
The Complainant is a well-known provider of services to travelers, including insurance brokerage services. The Complainant has used the AAA mark since 1903. Further, the Complainant has held a United States trademark registration for the AAA mark in connection with a broad variety of goods and services, including placing insurance with underwriters, since 1967. In addition, the Complainant has held a United States trademark registration for the AAA mark in connection with adjusting and collecting insurance damage claims as well as insurance brokerage services since 1998. The Complainant also holds several international trademark registrations for the AAA mark.
Several United States courts have found that the AAA mark is widely known in the United States. 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). Further, a prior Panel has also found that the AAA mark is widely recognized in the United States. American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489.
The Respondent is listed as the current registrant of the Disputed Domain Name in the WhoIs database, which further indicates that the Disputed Domain Name was first registered in January 2002.
The Disputed Domain Name redirects users to the Respondent's website located at <insuranceexpress.com>. The Respondent's website offers automobile and other insurance services.
On July 9, 2008, the Complainant sent the Respondent a letter by certified mail and by email requesting that the Respondent cease using the Disputed Domain Name and transfer it to the Complainant. On September 22, 2008, after receiving no response, the Complainant sent for a second time a similar notice by letter and email. Subsequently, on December 17, 2008, the WhoIs report indicates that the registration for the Disputed Domain Name was renewed.
On February 9, 2010, nearly eight years after the Respondent registered the Disputed Domain Name, and over sixteen months after the Complainant had sent the second notice letter, the Complainant filed the Complaint with the Center.
The Complainant contends that the AAA mark and associated marks (collectively “the Marks”) are valuable and famous in the United States and abroad. The Complainant further contends that the Respondent's website to which the Disputed Domain Name redirects competes directly with the Complainant's insurance-related services.
The Complainant further contends that the Disputed Domain Name is confusingly similar to the Complainant's Marks because it contains the entire AAA mark, with the addition of the generic terms “auto” and “insurance.” The Complainant further contends that the Respondent's use of the Disputed Domain Name is likely to cause consumers to become confused as to source, sponsorship, affiliation, or endorsement of the Respondent's domain name.
The Complainant further contends that the Respondent has no rights to or legitimate interests in the Disputed Domain Name. In particular, the Complainant contends that the Respondent has not been authorized to use the Complainant's Marks. In addition, there is no evidence that the Respondent was commonly known by the Disputed Domain Name. Finally, the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, the Complainant contends that the Respondent is attempting to benefit from the confusing similarity by redirecting consumers to its competing website.
The Complainant further contends that the Respondent registered and is using the Disputed Domain Name in bad faith. Specifically, the Complainant contends that the Respondent's use of the Disputed Domain Name to redirect consumers to the Respondent's website demonstrates a bad faith intent to capitalize on the Complainant's Marks. Further, the Respondent's registration of a confusingly similar domain name constitutes a disruption of the Complainant's business, and thus further evidences the Respondent's bad faith. Moreover, the Complainant contends that the Respondent had actual or constructive notice of the AAA marks due to the fame of these marks, and because the Respondent apparently renewed the Disputed Domain Name's registration after receiving two cease and desist letters from the Complainant.
The Respondent's email of March 4, 2010 contained several contentions, and is reproduced in its entirety:
“What can I do to defend myself in this case? I purchased the name legally and have never used the name to infringe upon AAA.com. I have never used any advertising to refer in any way to AAA.com. Now AAA has decided that they want to take my domain name “aaaautoinsurance.com” and I was told that I can't do anything about this. Please advise what options are available to me.”
The Panel must determine as a preliminary matter whether the Complainant's unsolicited Request to File an Additional Submission on March 8, 2010, should be permitted and similarly whether the Respondent's email in response to the Complainant's Request should be considered.
No provision in the Policy, the Rules or the Supplemental Rules authorizes the filing of supplemental submissions by either party to the administrative proceeding without leave from the Panel. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties.
The Policy, the Rules and relevant panel decisions demonstrate a strong preference for single submissions by the parties absent exceptional circumstances. Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-00427. The Panel finds no such exceptional circumstances to be present here. Accordingly, neither the Complainant's Request nor the Respondent's subsequent email will be considered by the Panel in reaching its decision.
Paragraph 15(a) of the Rules instructs this 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.”
Paragraph 4(a) of the Policy requires that the 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 registered by the Respondent is identical or confusingly similar to a trademark 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 Complainant has provided sufficient evidence showing that it is the owner of the AAA marks. The Complainant, however, does not have a trademark registration of the term “aaaautoinsurance”. Thus, the Disputed Domain Name and the Complainant's trademark are not identical. Therefore, the issue is whether the Disputed Domain Name and the Complainant's trademark are confusingly similar.
The Domain Name combines three elements: (1) the Complainant's AAA trademarks; (2) the term “auto insurance”, which is descriptive of the goods and services that the Complainant provides; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “aaaautoinsurance”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR). Moreover, the addition of the words “auto insurance” as a suffix to the mark does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant's AAA trademarks. Specifically, because the words “auto insurance” are associated with the Complainant and its business, the suffix strengthens rather than weakens the confusing similarity. See e.g., EarthLink, Inc. v. Keith Blatz, WIPO Case No. D2007-1288 (finding <earthlinkwifi.com> and <earthlinkwifi.net> confusingly similar to EARTHLINK, which offered internet services); Microsoft Corporation v. MindKind, WIPO Case No. D2001-0193 (finding <microsofthealth.com> confusingly similar to MICROSOFT, which offered health-related information).
Indeed, prior UDRP panels have found similar domain names confusingly similar to the AAA mark. The American Automobile Association, Inc. v. Rami Smair, WIPO Case No. D2009-0294 (finding <aaa-insurance.info>, <insurance-aaa.com>, and <insurance-aaa.info> confusingly similar to AAA); The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931 (finding <aaaautorewards.com> confusingly similar to AAA); American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592 (finding <mapsaaa.com> confusingly similar to AAA); American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489 (finding <aaaautomotive.com> confusingly similar to AAA).
For the all of the foregoing reasons, this Panel finds that the Disputed Domain Name <aaaautoinsurance.com> is confusingly similar to the Complainant's AAA mark, in which the Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy.
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The Complainant contends that the Respondent has no rights to use the AAA marks, is not commonly known by the Disputed Domain Name, is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, and is misleading customers for commercial gain. In response, the Respondent contends that he purchased the Disputed Domain Name legally and neither refers to nor infringes the AAA marks through advertising.
The Complainant has established rights in the Marks. Further, it is uncontested that the Complainant has not licensed or otherwise authorized the Respondent to use the Marks, or a confusing variation of them, in connection with the Respondent's business or as part of the Disputed Domain Name. This establishes a prima facie showing that the Respondent lacks rights to the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261. This, in turn, shifts the burden to the Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Names. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. “‘Concrete evidence' constitutes more than mere personal assertions. …Evidence in the form of documents or third party declarations should be furnished in support of such assertions”. Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
Even under the most charitable of interpretations, the Respondent's contentions do not address whether the Respondent has been commonly known by the Disputed Domain Name (paragraph 4(c)(ii)) or whether the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name (paragraph 4(c)(iii)). Moreover, even if the Respondent's contentions are extenuatingly construed to imply that bona fide sales were made under paragraph 4(c)(i), the Respondent has provided no evidence to demonstrate such sales.
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent lacks rights to, or legitimate interests in, the disputed domain name. Therefore, the Panel is convinced that the Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy Paragraph 4(b)(iv), occurs when the Respondent attempts to attract, for commercial gain, Internet users to the Respondent's web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or of a product or service on the Respondent's web site.
The Panel finds compelling circumstantial evidence that the Respondent likely knew of the Complainant's Marks when it registered the Disputed Domain Name. The AAA marks have been in use for over a century. In addition, these Marks have been used in connection with insurance for over four decades. As a prior udrp panel and at least two United States district courts have found, the AAA marks are widely recognized within the United States. Taken together, these facts make it unlikely that the Respondent innocently registered the Disputed Domain Name, without knowledge of the AAA marks.
Despite this evidence of bad faith registration, the Panel is somewhat perplexed by the substantial delay between the Respondent's 2002 registration of the Disputed Domain Name and the Complainant's first letter to the Respondent in July 2008 or the filing of the Complaint in 2010. Prior Panels have found that such delay can make it more difficult to establish bad faith registration:
“[I]f a complainant delays in bringing proceedings he will make matters more difficult for himself. First, there is the fact that a complainant must prove not only bad faith use but bad faith registration. Often it is possible to infer bad faith registration from bad faith use, but the longer the delay between registration and the commencement of proceedings, the less likely it is that a panel will be prepared to do so. A complainant may, therefore, need to bring forward direct evidence to address the issue of bad faith registration. Second, there is the possibility that the use that the registrant has made of the domain name since registration may in some cases result in him having developed a right and legitimate interest in the name. …There is also the more general point that extensive delay without explanation may in certain circumstances result in adverse inferences of fact against a complainant.” Francine Drescher v. Stephen Gregory, WIPO Case No. D2008-1825 (quoting HRB Royalty, Inc. v. Asif Vadaria, WIPO Case No. D2007-1658).
Nevertheless, it is well established that the Policy does not recognize laches as a defense. The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057 (“The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.”); Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint); The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes); The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 (finding that laches is an equitable doctrine, the remedy available under the Policy is not equitable, the Policy contains no limitation period, and therefore laches is inapplicable). Thus, a laches defense offers no relief for the Respondent from a finding of bad faith registration.
Therefore, despite the Complainant's unexplained delay in enforcing its rights, and based upon the foregoing circumstantial evidence, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith.
The Panel also finds that the Respondent used the Disputed Domain Name in bad faith. It is well-established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433.
Here, the Respondent appears to have intended to use the Disputed Domain Name to promote products based upon the confusing similarity between the Complainant's AAA marks and the Respondent's <aaaautoinsurance.com> web site. Moreover, the Respondent appears to have renewed the Disputed Domain Name's registration just three months after receiving the second cease and desist letter from the Complainant. This provides sufficient circumstantial evidence to demonstrate that the Disputed Domain Name was used in bad faith. See e.g., The American Automobile Association, Inc. v. Rami Smair, WIPO Case No. D2009-0294 (finding bad faith use where respondent renewed registrations after being put on notice of AAA's trademark rights).
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel is convinced that the Complainant has proven the third and final element 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 Disputed Domain Name, <aaaautoinsurance.com>, be transferred to the Complainant.
Michael A. Albert
Dated: March 31, 2010