WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. New Cars Lowest Prices
Case No. D2011-0337
1. The Parties
The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America represented by Covington & Burling, United States of America.
The Respondent is New Cars Lowest Prices of Long Beach, California, United States of America, internally represented.
2. The Domain Names and Registrar
The disputed domain names <aaacertifiedpreownedcars.com>, <aaacertifiedpreownedcars.net>, <aaacertifiedusedcars.com>, and <aaacertifiedusedcars.net> (the “Domain Names”) are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2011. On February 18, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Names. On February 18, 2011, Network Solutions, LLC 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 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2011. The Respondent contacted the Center, requesting a settlement, which the Complainant declined. The Response was filed with the Center on March 29, 2011. The Panel has decided to consider the Respondent’s Response of March 29, 2011.
The Center appointed Michelle Brownlee as the sole panelist in this matter on March 31, 2011. 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.
4. Factual Background
The Complainant owns numerous registrations in the United States and other jurisdictions for trademarks that include the letters AAA in connection with automobile club services and related goods and services. These include United States Registration Nos. 829,265 for the mark AAA in connection with automobile association services, emergency roadside repair services, driving instruction, travel arrangement services and arranging discounts for members, among other services; 2,158,654 for the mark AAA and design in connection with similar services, and also for maps and books; 1,988,918 for the mark AAA RATED in connection with rating accommodations and restaurants and evaluating automobile repair shops; 2,659,703 for credit card and auto loan services; 2,900,596 for AAA PREMIER for a variety of services including providing referrals for auto body repair services, providing information about vehicles for sale, providing information on vehicle pricing, vehicle inspection services, concierge services, fraud detection services in the field of credit card transactions.
The Domain Names were registered on August 20, 2010.
5. Parties’ Contentions
The Complainant has used its AAA marks since at least as early as 1902 and is well known by the public for providing members with discount purchases and low rates on auto loans, offering extended vehicle warranties, publishing vehicle information, and conducting motor vehicle tests. As a result of extensive use and advertising, the Complainant’s AAA marks are famous in the United States and abroad.
In August 2010, the Complainant discovered that the domain names <aaacertifiedpreownedcars.com> and <aaacertifiedpreownedcars.net> were being used to forward consumers to the web site “www.newcarlowestprice.com”. That web site offers used cars at discount rates, extended vehicle warranties, and auto loans and proclaims that it offers “only the Finest ‘5 Star – Triple AAA Quality’ Certified Used Cars.” On August 27, 2010, the Complainant sent the Respondent a cease and desist letter to the email address listed in the WhoIs records for these two domain names and requested that the Respondent cease use of these two domain names. On September 1, 2010, the Respondent replied by email, denying that its use of the domain names violated the Complainant’s rights and refusing to discontinue use of the domain names and the Complainant’s trademarks. The Complainant subsequently discovered that the Respondent had also registered <aaacertifiedusedcars.com> and <aaacertifiedusedcars.net>. On September 21, 2010, the Complainant sent a second cease and desist letter requesting that the Respondent cease use of all of the Domain Names. On October 1, 2010, the Respondent replied that he would consider using disclaimer language to prevent any “unintended interpretations garnered by the public,” and refused to discontinue use of the Domain Names.
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s AAA marks. The Complainant argues that the addition of words such as “certified,” “preowned,” “used” and “cars” is likely to heighten confusion because these words are related to the services provided by the Complainant. The Complainant argues that the Respondent’s offer of a disclaimer proves that the Respondent understands that confusion is likely to result from the use of the Domain Names that include the AAA marks. The Complainant submits that the Respondent has no rights to or legitimate interests in the Domain Names and that the Domain Names were registered and are used in bad faith.
The Respondent is a 26 years-proven Nationwide Professional Car Buying and Leasing Consumer Service providing highly personalized services to its clients resulting in obtaining any make and model vehicle at the absolute lowest price, the lowest interest rate and lowest monthly payment, money-back guaranteed. The Respondent’s services are easy to use. Clients order vehicles over the telephone and delivery of vehicles is made to their homes. The Respondent saves its clients $3,000 or more per transaction and saves its clients’ time and aggravation of visiting multiple dealers to shop for a car.
Due to the current economic downturn, the Respondent’s clients are increasingly interested in acquiring high quality, affordable, used vehicles with low mileage. In particular, the Respondent’s clients are interested in purchasing such used vehicles which are labeled “Certified” as a result of extraordinarily thorough inspections by auto manufacturers and their dealers. Thus the Respondent made the decision to add certified used vehicles to its buying assistance services.
The Respondent contends that businesses commonly create trade names for identifying themselves by strategically utilizing specific letters contained within the alphabet, such as AAA or ABC in order to provide optimal placement positioning in various advertising directory listings which display businesses alphabetically. Generic business names incorporating such alphabetical letters often seem to make it easy for consumers to remember the name of a business. The Respondent registered the Domain Names to implement these methods of promoting its business.
The Respondent disputes the Complainant’s contention that the Domain Names describe a central aspect of the Complainant’s business. The Respondent argues that the Complainant’s business includes roadside assistance, towing, car registration services, and travel and repair recommendation services. The Complainant is not engaged in the business of retail sales of vehicles to purchasers or of certifying used vehicles for resale. The Respondent notes that the Complainant’s web site advertises a member services benefit called a “Car Buying Service.” The Respondent contends that this service is merely a sales lead generator to automobile dealers.
There are numerous other domain names that include the letters “AAA,” including <aaacarrentalfla.com>, <aaabattery.org>, <aaalock.com> and <aaa-airportshuttle.com>, among others. Because there is such widespread usage of trade names that incorporate the letters “AAA,” the Respondent disagrees with the Complainant’s contention that consumer confusion is likely. Nevertheless, the Respondent offers to implement a disclaimer “to prevent any highly unlikely and unintended interpretations garnered by the public.”
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Complainant bears the burden of establishing each of the three elements by a preponderance of the evidence. See, e.g., F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the AAA trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (finding <christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (finding <leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). In this case, the Domain Names pair the AAA trademark with the words “certified used cars” and “certified preowned cars.” Because the Complainant uses its AAA trademark in connection with a wide variety of services related to cars, the addition of the descriptive wording in this case is likely to exacerbate the potential confusion with the Complainant’s mark. Accordingly, the Panel finds that the Domain Names are confusingly similar to the Complainant’s AAA trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent does not argue that its business is commonly known by the Domain Names. The Domain Names resolve to a web site “www.newcarlowestprice.com”, which corresponds to the Respondent’s business name. The name of the site displayed at the top of the page is “NewCars LowestPrice.com.” The phrases contained within the Domain Names do not appear in any prominent way on the Respondent’s web site such that they would be perceived as a trade name.
The Respondent argues that it is making a legitimate fair use of the Domain Names. The Respondent argues that the letters “AAA” are commonly used by businesses so that they can appear at the top of business directories that are organized alphabetically. While this argument could carry some weight if the Respondent had adopted the Domain Names as actual trade names in connection with its business, that is not the case here. Moreover, the argument carries little persuasive value when one considers the Internet, which is not organized alphabetically.
Finally, where the Respondent’s use of the Domain Names is designed to drive traffic to the Respondent’s web site by creating confusion with the Complainant’s well-known trademark, such use is not considered bona fide. See American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489. Accordingly, the Panel finds that the Complainant has demonstrated by a preponderance of the evidence that the Respondent does not have rights to or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.
The Panel finds that the Respondent registered and is using the Domain Names to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s AAA mark. Although the Respondent offers an alternative explanation for use of the letters “AAA” – that these letters are often used by businesses to appear in an alphabetical directory – that explanation is not credible in the circumstances of this case nor in the context of the Internet, as discussed above. It is much more plausible that the Respondent registered and is using the Domain Names to direct traffic to its web site because of their likelihood of creating an association with the Complainant’s well-known AAA mark. Accordingly, the Panel finds that the Complainant has established bad faith under Paragraph 4(b)(iv) of the Policy by a preponderance of the evidence.
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 <aaacertifiedpreownedcars.com>, <aaacertifiedpreownedcars.net>, <aaacertifiedusedcars.com>, and <aaacertifiedusedcars.net> be transferred to the Complainant.
Dated: April 13, 2011