The Complainant is The American Automobile Association, Inc. (“AAA”) of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
The Respondent is Above.com Domain Privacy / Transure Enterprise Ltd of Beaumaris, Victoria, Australia and Tortola, Virgin Islands, Overseas Territory of the United Kingdom and Northern Ireland.
The disputed domain name <aaatravelclub.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2010. On April 15, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 19, 2010, Above.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 April 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2010.
The Center appointed Hugues G. Richard as the sole panelist in this matter on May 20, 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 Complainant is based in the United States and has been trading under the acronym AAA since at least 1902 in connection with, in particular, automotive, travel and insurance services.
It is the proprietor of numerous U.S. federal trademark registrations for AAA in plain and stylized forms, including registration nos. 829265, 2158654, 3162780 and 3110510, dating from as early as 1967 and all pre-dating the registration of the disputed domain name, details of which were annexed to the Complaint. The Complainant also referred to its ownership of numerous foreign registrations for AAA, including in Canada, Mexico, the Benelux, France, Germany, Italy, Norway, Spain, Switzerland, Peoples Republic of China and the European Union.
The disputed domain name was registered on December 22, 2008. It has been used and is still used to host pay-per-click advertisements for inter alia travel services that compete with those offered by the Complainant.
The Complainant wrote to Respondent Above.com on June 30, 2009 asking to cease infringing activities. It responded the same day giving the name of the true registrant “Transure Entreprise Ltd” and giving its email address. The Complainant then wrote to Respondent Transure Enterprise Ltd. on July 1, 2009 asking to cease all infringing activities. After receiving no response to the first letter, it wrote back to Respondent Transure Entreprise Ltd. on October 5, 2009, again demanding cessation of infringing activities and the transfer of the disputed domain name. Both letters remained unanswered.
On April 14, 2010, the Complainant filed the Complaint.
The Complainant alleges that the disputed domain name is confusingly similar to its registered trademark. The disputed domain name includes the Complainant's AAA trademark in its entirety, adding only non-distinctive generic elements that are directly descriptive of the Complainant's business in travel-related services. The Complainant submits that its AAA trademarks are well-known and argues that the combination of AAA with generic terms descriptive of a central aspect of the Complainant's business gives rise to confusing similarity.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use its AAA trademarks, and the Respondent is not commonly known by the disputed domain name. The Complainant also mentions the Respondent has not registered the disputed domain name under a name containing the AAA trademark. The Respondent is not using the disputed domain name in connection with a bona fide commercial offering nor for a legitimate noncommercial or fair use, as it is using it to provide pay-per-click links to travel-related third-party websites.
Finally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. Firstly, the Complainant claims that the disputed domain name was registered in order to derive commercial advantage from confusion by Internet users between the disputed domain name and the Complainant's AAA trademark. Secondly, the Complainant alleges that registration of a confusing domain name without any legitimate interest is further evidence of bad faith. Thirdly, the Complainant asserts that the Respondent has actual or constructive knowledge of the AAA trademarks based on their registration with the U.S. Patent and Trademark Office and their substantial fame, and that the Respondent's continued use despite notice from the Complainant is further evidence of bad faith. Finally, the Complainant avers that the Respondent's past history of registering domain names that infringe on the Complainant's AAA trademarks and others' is further evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name 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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
The Complainant has proved ownership of registered trademark rights in AAA in plain and stylized forms. The acronym AAA appears in its entirety in the disputed domain name.
The remaining element in the disputed domain name is “travelclub”. It consists simply of the conjoined words “travel” and “club.” These elements are directly descriptive of the Complainant's business in the travel services sector.
The mere addition of a descriptive term to a trademark does not avoid confusing similarity between the trademark and a disputed domain name, particularly where the descriptor is in some way relevant to the Complainant's business (see inter alia The American Automobile Association, Inc. v. Mike Oglesby, WIPO Case No. D2009-1544; American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489; The American Automobile Association Inc. v. AAA-Vacationsunlimeted, WIPO Case No. D2009-0373).
The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered AAA trademarks.
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on complainants, but panels have long recognised that the information needed to prove such a right or interest is normally in the possession of respondents. 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 (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that the Respondent has used the disputed domain name for pay-per-click landing pages hosting links to third-party commercial websites operating in the travel services field. There is no question that the attractiveness of the disputed domain name as address for pay-per-click landing pages is bound up in its combination of the Complainant's distinctive trademark with descriptive words directly related to the Complainant's business. In the Panel's view, the Respondent's unauthorised use of the disputed domain name incorporating the Complainant's registered trademark and relevant descriptors in order to attract Internet users to pay-per-click landing pages promoting competing businesses is not a bona fide commercial use. (American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489; The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. 1227171).
The Complainant fulfilled its prima facie burden, the Respondent failed to respond and there is nothing in the evidence to suggest that the Respondent has any legitimate right or interest in using a domain name that includes the Complainant's trademark. As such, the Panel finds the Respondent has no rights or legitimate interests in the use of the disputed domain name.
Although the Complainant did not put forward evidence of reputation in this case, it did refer to other decisions in which panelists and courts have found the Complainant's AAA trademark to be well-known in the United States and abroad (American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489, in which the Panel observed, “…Complainant has invested substantial resources in extensive advertising campaigns and promotions of its products and services under the AAA Marks. The result is that the AAA Marks are widely recognized by consumers in the United States and abroad and they have acquired significant goodwill”; see also The American Automobile Association Inc. v. PerkinsPestControl c/o Del Rich and 1 & 1 Internet Inc., WIPO Case No. D2009-1379).
Indeed, it is likely that such knowledge is what prompted the registration of the disputed domain name and the Respondent's use of it to host links to websites of the Complainant's competitors in the travel services field. It is hard to see why else the Respondent would have chosen a domain name including the acronym AAA and descriptive terms directly relevant to the Complainant's travel services business, and the Respondent has offered no alternative explanation (see American Automobile Association, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592: “the Panel is aware of no plausible reason…that the [r]espondent would add the letters “aaa” to the word “maps” in the domain name…, except that the [r]espondent desired to confuse Internet users with an association with the Complainant's famous AAA trademark.”)
Under paragraph 4(b)(iv) of the Policy, the Panel is entitled to find both registration and use in bad faith where there is evidence that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 location or of a product or service on it.
The evidence demonstrates that the pay-per-click website using the disputed domain name also linked to the Complainant's official website “www.aaa.com”. This further supports the likelihood that the Respondent knew of the AAA trademarks and was using them in bad faith to benefit from pay-per-click hyperlinks on his website (see Hertz System, Inc. v. Thomas Roche, WIPO Case No. D2009-0981).
In this case, the Respondent deliberately set out to derive pay-per-click revenue from Internet users by creating a likelihood of confusion with the Complainant's trademark. It adopted confusingly similar domain names and used them to host pay-per-click links to third-party websites offering services in the travel sector, the Complainant's own field of activity. Such conduct is inherently misleading, and the use of a confusingly similar domain name to lure Internet users to a site hosting links to providers of competing products or services is prima facie evidence of bad faith (see inter alia American Automobile Association Inc. v. Texas International Property Associates, supra).
Further, the Panel finds evidence of the Respondent's bad faith through its history of registering domain names that infringe on the trademarks of others. Indeed, out of forty WIPO UDRP Domain Name cases where the Respondent was named, there are none where the complaint was denied.
The Panel finds that the Respondent's conduct constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) 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, <aaatravelclub.com> be transferred to the Complainant.
Hugues G. Richard
Dated: June 1, 2010