WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. Domains by Proxy - Niche Proxy Account / Virtual Services Corporation
Case No. D2011-1039
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 Domains by Proxy - Niche Proxy Account of Zurich, Switzerland, and Virtual Services Corporation of Nassau, Bahamas.
2. The Domain Names and Registrars
The disputed domain name <aaaautomaker.com> is registered Name.com LLC. The disputed domain names <aaaautorental.com> and <tripleavacations.com> are registered with Fabulous.com. The disputed domain names are referred to collectively in this decision as the “Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2011. On June 20, 2011, the Center transmitted by email to Name.com LLC and Fabulous.com a request for registrar verifications in connection with the Domain Names. On June 21, 2011, Fabulous.com and Name.com LLC transmitted by email to the Center their verification responses, providing contact details for the Domain Names and advising that the Registrants of the Domain Names are as follows:
<aaaautorental.com> Domains by Proxy – Niche Proxy Account
<tripleavacations.com> Virtual Services Corporation Domains by Proxy – VSC Proxy Account
<aaaautomaker.com> Virtual Servicers Corporation, Nassau, Bahamas
The addressees and contact details provided by Fabulous.com for the disputed domain names <aaaautorental.com> and <tripleavacations.com> were identical. The address was an address in Zurich, Switzerland.
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”).
The Center formally notified the Respondent of the Complaint, stating a date for the commencement of the proceeding of June 23, 2011. The due date for Response in accordance with the Center’s notice, was July 13, 2011. The Respondent did not submit any response by that date. Accordingly, the Center notified the Respondent’s default on July 14, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on July 19, 2011. The Panel had submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Shortly before the date by which the Panel was due to give his decision in the case, the Panel noted that the fax number to which the Notification of the Complaint to the Respondent had been (unsuccessfully) transmitted, differed by one digit from the number contained in the Whois particulars notified by Fabulous.com to the Center. The Panel did not note anything in the record which he regarded as sufficient evidence that the Respondent had actual notice of the Complaint.
In those circumstances, the Panel formed the view that formal Notification of the Complaint had not been completed in accordance with the Rules, Paragraphs 4(a) and 2(a), and that the notification process would have to be completed by transmitting notice of the Complaint to the correct facsimile address. By Procedural Order No. 1 made on August 8, 2011, the Panel requested the Center to complete the notification of the Complaint by transmitting the required Notice documents to the correct facsimile number as provided to the Center by Fabulous.com, and also to any other facsimile number which may in the meantime have been substituted for that number in the Whois particulars for the relevant domain names.
The Center carried out that step on August 8, 2011. In accordance with the Panel’s request in his Procedural Direction No. 1, the amended Notice of the proceeding stated an amended date for the formal commencement of the proceeding (August 8, 2011), and allowed the Respondent until August 28, 2011 to submit a Response.
By an unsolicited supplementary filing dated August 16, 2011, the Complainant contended that the Panel’s decision to request the Center to complete notification of the Complaint as described above was based on an erroneous premise, namely that the Respondent had not received actual notice of the proceeding. The Complainant contended that the Respondent did have such notice, and requested that the Panel continue with the proceeding and issue a decision on the merits.
The Respondent submitted a Response on August 29, 2011, offering a defense in respect of only one of the Domain Names (<tripleavacations.com>).
On August 31, 2011, the Center confirmed the Panel’s appointment as sole panelist in this matter.
By further supplementary filing made on September 1, 2011, the Complainant objected to the filing of the Response, contending that even if its submissions made on August 16 in response to the Panel’s Procedural Order No. 1 were not accepted, the Response was submitted one day after the amended period allowed by the Center, and should be rejected.
4. Factual Background
The Complainant is a corporation organized under the laws of Connecticut, United States. For many years, it has provided motor vehicle owners, motorists, and travelers, with the kinds of services typically associated around the world with automobile associations. The Complainant’s services have included the provision of emergency road service, providing advice to motor vehicle owners, motorists, and travelers, rating tourist accommodations, arranging for discount purchases, placing insurance with underwriters, disseminating travel information, and making travel arrangements.
The Complainant is the proprietor of a number of registrations of the word mark AAA on the principal register maintained by the United States Patent and Trade Mark Office (“USPTO”). These registrations cover a variety of goods and services, and the earliest of them dates from May 23, 1967.
The Complainant also holds certain other marks registered on the principal register of the USPTO:
1. TRIPLE A, registered in respect of automobile association services namely, promoting the interests of motor vehicle owners, motorists and travelers, registered with effect from February 1, 1980.
2. AAA VACATIONS, registered in respect of “arranging travel tours and vacations; making reservations and bookings for temporary lodging”, registered with effect from August 22, 1995 (with a disclaimer in respect of the use of the word “vacations” apart from the mark as registered).
3. AUTOMAKER, registered in respect of the provision of “consumer information in the field of automobiles, namely providing an online automobile database featuring automobile information based on consumer preferences” with effect from April 29, 2003.
In addition to those United States registrations, a stylized version of the Complainant’s AAA mark has been registered in Switzerland in respect of insurance, automobile rental services, and various other goods and services, with effect from October 21, 2003.
The Complainant says that it has also registered its AAA mark in numerous other jurisdictions around the world, including in the European Union.
According to the Complaint, the Complainant has used its AAA mark in commerce since at least 1902. It says that that mark has become famous, particularly in relation to the provision of vacation and automobile-related services. The Complainant also offers its members access to its online “AutoMaker” database, which allows users to research and review automobiles based on the user’s preferences.
The Respondent and the Domain Names
The Domain Names were registered on the following dates:
1. <aaaautorental.com> March 15, 2006
2. <aaaautomaker.com> July 5, 2006
3. <tripleavacations.com> February 19, 2007
As noted by the Complainant, the contact details for the <tripleavacations.com> and <aaaautorental.com> domain names are identical, and the registrant of each of the domain names <tripleavacations.com> and <aaaautomaker.com> is “Virtual Services Corporation”. The registrants of the Domain Names have also retained the same legal adviser to respond to certain pre-commencement correspondence sent by the Complainant and its representatives: on April 26 2011, the law firm “Law.es” wrote to the Complainant’s representative, rejecting a demand which the Complainant had made for a transfer of the Domain Names to it, and stating inter alia, that “our client is convinced of its rights and legitimate interest in and to tripeavacations.com, aaaautorental.com, and aaaautomaker.com”. The Complainant’s (unopposed) position is that the Respondent is in reality a single entity.
The Complainant produced screenshots taken from the websites to which the Domain Names have resolved. These websites appear to be fairly typical “landing page” – type websites, containing sponsored links to various third party websites, and a search engine function. The website to which the Domain Name <tripleavacations.com> resolved on August 9, 2010 contained a sponsored link to the Complainant’s official website, but also contained sponsored links to a number of other websites (unrelated to the Complainant) offering vacation services. Similarly, a copy of the website to which the domain name <aaaautorental.com> resolved on June 17, 2011 provided a link to the Complainant’s official website, but also provided links to the websites of other companies which then provided or arranged for the provision of rental car services.
A copy of the website to which the domain name <aaaautomaker.com> resolved on June 17, 2011, showed that there was then a link to the Complainant’s official website. However, there were also sponsored links to the websites of companies selling used cars, or offering free quotes on new cars. One link entitled “Car Reviews”, advertised “research, reviews, pricing & more”.
In its Complaint, the Complainant asserted that the Respondent has a history of registering, under aliases, domain names that infringe third parties’ trademark rights and/or are in violation of the Policy. The Complainant referred to four separate proceedings since 2008 under the UDRP in which the Respondent has been ordered to transfer domain names to complainants. Those cases are Viking Range Corporation v. Domains By Proxy, WIPO Case No. D2008-0332, Exxon Mobile Corporation v. Domains by Proxy – NA Proxy Account c/o Niche Domain Proxy Manager, NAF Claim No. 1247242, Vivo S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy – NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925, and Vivo SA Portelcom Participações S.A. v Protected Domain Services – Customer ID: NNP – 4713284/Domains By Proxy – NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-1058. In each case, the panel found that the Respondent’s intentional use of the complainant’s trademarks to attract users to its pay-per-click advertising websites, demonstrated the Respondent’s lack of rights or a legitimate interest in, and its bad faith registration and use of, the disputed domain names.
The Complainant also asserted that the Respondent has registered and continues to use numerous domain names that include other famous third party trademarks, or slight variations thereof. These were said to include, among others, Continental Airlines, Exxon, Ford, HP, Samsung, Sony, and Toshiba. These domain names have also been used to host pay-per-click advertising websites containing links not only to sites featuring the trademark owner’s goods and services, but also to sites of third parties offering goods or services competing with those of the trademark owner. The Complainant produced screenshots showing websites to which these domain names resolve.
Pre-commencement Correspondence between the Representatives of the Complainant and the Respondent
The Complainant produced copies of cease and desist letters sent to the Respondent or its representatives on August 18, 2010, and December 1, 2010. These letters referred to the Complainant’s various trademark registrations, and requested a transfer to the Complainant of the <tripleavacations.com> domain name, and also certain other domain names which are not in issue in this proceeding.
Law.es responded on behalf of the registrant, by email dated August 25, 2010. Law.es referred to a response it had sent on September 30, 2009 to an earlier demand which had been made on behalf of the Complainant in respect of the domain name <tripleavacations.com> and the domain name <aaaautoclub.com>. The September 30, 2009 letter from Law.es advised that the domain names referred to in the letter had been registered for use in their client’s business model, which involved the acquisition and utilization of domain name registrations either for dedicated websites providing goods or services, or as generic popular search terms in a direct navigation. Law.es contended that the domain name <tripleavacations.com> is descriptive, and that the Respondent had registered it because of its descriptive qualities. Law.es further contended that their client was using the <tripleavacations.com> domain name in a manner which was consistent with the name’s descriptive character, namely to provide information related to triple-a (as in “great”) vacations. The website to which the <tripleavacations.com> domain name then resolved was said to contain category links for “Activity Holidays”, “Adventure Holidays” etc., and Law.es argued that that was the kind of information an Internet user would expect to find when performing a search for a “high quality, premier, excellent”, or “triple-a” vacation. The content on the web page was said to correspond perfectly with the subject matter of the Domain Name, and the Respondent’s use of the Domain Name was claimed to be legitimate.
Law.es stated in the September 30, 2009 letter that there was no reference to the Complainant on the web page to which the <tripleavacations.com> domain name resolved, nor any other indication that would associate that website with the Complainant. They denied that their client’s use of that domain name would cause confusion, and they argued that the expression “Triple A” is not generally and primarily associated with the automobile industry or business. They referred to Google searches showing the expression “Triple A” used in a number of other, unrelated contexts, and contended that it could not be claimed that an Internet user searching for “triple-A” would necessarily be looking for the goods and services of the Complainant (and especially not a user searching for “triple a vacations”).
Law.es indicated a willingness to transfer the <aaaautoclub.com> domain name to the Complainant, but they held their ground on the <tripleavacations.com> domain name, saying that they could not see how their client’s use of that domain name could conflict with the Complainant’s asserted rights.
Law.es maintained their stance in a further letter to the Complainant’s representatives dated December 14, 2010. In addition, they pointed out that in the Complainant’s USPTO registration of the mark AAA VACATIONS, the USPTO had required that the Complainant disclaim rights in the expression “Vacations” without the “AAA”. In respect of the Complainant’s registered mark “Triple A”, Law.es pointed out that the USPTO record shows that the mark is registered for use in connection with the promotion and sponsoring of programs for vehicle owners – there is no reference to vacations. They also noted that the Complainant itself points out on its website that it is not primarily known for offering goods and services related to vacations and travel arrangements. They repeated the argument that their client’s use of “triple a” was not a reference to the Complainant, but was a designation of a particular quality of vacation. It was laudatory in nature.
Law.es denied that their client had any knowledge of the Complainant when it registered the <tripleavacations.com> domain name. They pointed out that their client was not located in the United States, and it did not do business in the United States. Law.es went on to argue that their client had held the <tripleavacations.com> domain name since February 2007 without objection or conflict. A prompt reply had been provided when the Complainant first raised the issue in September 2009. Law.es warned that if the Complainant chose to file a proceeding under the UDRP, it would be vigorously defended.
The Complainant’s representatives wrote again to Law.es on April 4, 2011. They disagreed with Law.es’ views expressed in their letter of December 14, 2010 relating to the <tripleavacations.com> domain name, but elected not to argue further the merits of the dispute, or reiterate points made in earlier correspondence. The principal purpose of the April 4, 2011 letter appears to have been to demand the transfer of the two other domain names (<aaaautorental.com> and <aaaautomaker.com>), the registration of which had come to the Complainant’s attention more recently. The Complainant’s representatives demanded the transfer all of the Domain Names, and an additional domain name, <aaaincurance.com>, to the Complainant.
Law.es replied to the Complainant’s representatives of April 26, 2011. They maintained their stance on the domain name <tripleavacations.com>. They rejected the Complainant’s claims in respect of the domain names <aaaautorental.com> and <aaa.automaker.com>, again relying primarily on the claimed descriptive nature of the expression “AAA”. They noted that “AAA” is a commonly used expression, and that it is also commonly used as an acronym, both in the United States and internationally, by parties unrelated to the Complainant (for example, “American Accounting Association”, “American Ambulance Association”, “American Arbitration Association”, and the “Amateur Athletics Association” in the United Kingdom).
Law.es argued that “the descriptive phrase “aaa autorental” may be used for any company offering high quality premier, excellent automobile rental services. They said that the website to which the <aaaautorental.com> domain name resolved contained information directly related to the descriptive meaning of the words used to form that domain name, namely car rentals and “luxury car hire”. That descriptive use of the <aaaautorental.com> domain name was said to be legitimate.
Law.es relied on similar arguments in respect of the domain name <aaaautomaker.com>. The expression “automaker” was said to be a widely used expression, describing automobile manufacturers. Furthermore, there existed third party registered trademarks which incorporated the expression “automaker”. Law.es contended that the web page to which the <aaaautomaker.com> domain name resolved was a page containing information directly related to the descriptive meaning of the term, namely automobiles. That was claimed to be a legitimate use of the <aaaautomaker.com> domain name, which did not cause confusion with the Complainant’s asserted marks. Law.es said that there was no use of the Complainant’s marks on the relevant website, and that the Complainant in any event did not appear to offer car manufacturing services.
Without conceding any liability, Law.es indicated that their client would be prepared, in order to reach a settlement, to transfer the domain name <aaaincurance.com> to the Complainant.
In concluding their letter of April 26, 2011, Law.es noted:
“Our client confirms that it had no knowledge of your client when it obtained the registration of the domain names. Our client is not located in the United States and does not do business in the United States and has held the domain names since February 2007, March 2006 and July 2006 respectively without objection or conflict. Your client’s rights are limited geographically and had your client desired more expansive rights it could have registered its trademark outside of the United States. … If your client chooses to file a UDRP, please know that it will be vigorously defended.”
5. Parties’ Contentions
The Complainant contends:
1. The Domain Names are confusingly similar to the Complainant’s marks. Two of the Domain Names, <tripleavacations.com> and <aaaautorental.com>, include the entire AAA mark owned by the Complainant, with the addition of generic terms that relate to services for which the Complainant is known, namely vacation and car rental services. The domain name <tripleavacations.com> also presents the identical sound and idea as the Complainant’s AAA VACATIONS mark. Replacing “AAA” with the phonetically identical “TRIPLE A”, for which the Complainant also possesses a United States trademark registration, fails to distinguish this domain name from the Complainant’s AAA VACATIONS mark. The Respondent’s use of the combination of the TRIPLE A and AAA marks with the generic terms “vacations” and “auto rental”, which relate to popular services offered by the Complainant, will cause heightened confusion for consumers who are directed to the Respondent’s websites associated with those Domain Names.
The domain name <aaaautomaker.com> is comprised entirely of two of the Complainant’s United States-registered marks, namely AAA and AUTOMAKER. The combination of the Complainant’s AAA and AUTOMAKER marks in the <aaaautomaker.com> domain name results in a domain name that is identical to the Complainant’s marks.
2. The Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant relies on the following matters:
(i) The Complainant has not licensed or authorized the Respondent to use its marks, whether in the Domain Names or otherwise.
(ii) There is no evidence that the Respondent is commonly known by any of the Domain Names.
(iii) The Respondent’s use of the Domain Names to attract users to its websites by creating confusion with the Complainant’s famous AAA marks, is not a bona fide use of the Domain Names.
(iv) The Respondent’s use of confusingly similar domain names to host pay-per-click advertising websites offering goods and services that compete directly with those of the Complainant, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
(v) The Respondent was assuredly aware of the Complainant and its marks when registering the Domain Names. The Complainant refers to its United States Federal registrations, as well as to its registrations in other jurisdictions, including Switzerland where the Respondent is located.
3. The Domain Names were registered and are being used in bad faith. The Complainant relies on the following:
(i) The Respondent has registered multiple domain names that are confusingly similar to the Complainant’s AAA marks, in order to capitalize on the Complainant’s reputation and goodwill in its AAA marks and to attract Internet users to the Respondent’s pay-per-click advertising websites. The use of the Complainant’s marks in the Domain Names creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
(ii) The Respondent’s registration of the Domain Names, without any legitimate interest in any of them, constitutes a disruption of the Complainant’s businesses, and is evidence of bad faith registration and use under paragraph 4(b)(iii) of the Policy.
(iii) The Respondent’s prior knowledge of the Complainant’s AAA marks confirms its bad faith. The Respondent’s bad faith is demonstrated by the fact that it received actual notice of the Complainant’s trademark rights on several occasions, but failed to take any action, and continues to use the Domain Names to host pay-per-click advertising websites.
(iv) The Respondent has a history of registering domain names under aliases that infringe third parties’ trademark rights, in violation of the Policy, paragraph 4(b)(ii).
(v) The Respondent has registered and continues to use numerous domain names that include other famous third party trademarks, or slight variations thereof, to host pay-per-click advertising websites. The Respondent’s continued pattern and practice of registering and using infringing domain names to host pay-per-click advertising websites, is a model of bad faith.
Substantive arguments on behalf of the Respondent were made in the correspondence from Law.es, and those arguments are described in section 4 of this decision. The Respondent made the following additional submissions in the Response dated August 29, 2011:
(i) AAA VACATIONS is neither identical nor confusingly similar to the domain name <tripleavacations.com>.
(ii) Third party use of the term “triple a” is very extensive (69.2 million hits on a Google search). Taking into account that widespread third party use, it cannot be said that an Internet user searching for the term would necessarily be looking for the goods and services of the Complainant.
(iii) Similarly, third party use of the term “vacations” is widespread (170 million Google hits).
(iv) The combination of the terms “triple a” and “vacations” is a logical one, used to denote “excellent vacations”. “Triple a” is used in combination with many dictionary terms, including “vacations”, by millions of third parties.
(v) There is no evidence that the Complainant’s mark is famous [apparently a reference to the Complainant’s AAA mark].
(vi) The Respondent has a legitimate interest in a generic or descriptive domain name such as <tripleavacations.com>, when that domain name is used to provide information related to the subject matter of which the name is descriptive. In this case, the Respondent has consistently used the domain name <tripleavacations.com> in connection with categorized information related to the promotion of vacation packages.
(vii) Nothing on the website at “www.tripleavacations.com” suggests that the Respondent or the goods and services offered on the website are in any way related to the Complainant.
(viii) The Respondent has been making a “fair” use of the domain name <tripleavacations.com>, under paragraph 4(c)(iii) of the Policy. It has not been targeting the Complainant or its marks. “Commercial or not, Respondent’s use constitutes a “fair” use in every sense of the word”.
(ix) The Respondent has not been guilty of bad faith registration and use of the domain name <tripleavacations.com>. Bad faith would require evidence of intended exploitation of the Complainant (or its marks) of some sort, and that has not been the Respondent’s intention. If there has been any confusion caused by the every day use of a descriptive expression in this domain name, the Complainant has only itself to blame for choosing such a mark.
(x) The Respondent did not have the primary intention of disrupting the Complainant’s business, and did not intend to create any likelihood of confusion. There is no evidence of any actual consumer confusion.
(xi) “The Complainant provides no facts that would infer that Respondent, a Switzerland based company, should have had any knowledge of Complainant or its asserted trademarks.”
6. Discussion and Findings
A. Procedural Issues
(i) Should the Panel have asked for the Proceeding to be Re-notified, with a New Commencement Date?
The Complainant contended that there was sufficient evidence that the Respondent had actual notice of the Complaint, and that there was no need for the Panel to concern itself with whether or not the Center had carried out each of the notification steps prescribed at paragraph 2(a)(i), (ii) and (iii) of the Policy. (One of those prescribed steps is the sending of the complaint to all facsimile addresses shown in the registration data in the Registrar’s WhoIs database for the disputed domain name, and that did not occur in this case.)
In arguing that the Respondent had received actual notice of the Complaint, the Complainant emphasized that Law.es had sent emails to the Center after the filing of the Complaint. These emails referenced the correct file number for this proceeding, and thus made it clear that the law firm, at least, was aware of the proceeding. However, by email dated June 25, 2011 Law.es advised the Center that its earlier email correspondence had been sent in error, and related to another Policy proceeding then pending with the Center. The email appeared to imply that Law.es did not then have any instruction from the Respondent to act for it in this proceeding.
The question which arose in those circumstances, was whether the Panel could safely infer from the fact that Law.es had notice of the Complaint, that the Respondent also had notice of it. In considering that question, the Panel noted that the Notice of the Complaint sent by the Center on June 23, 2011 was sent to Law.es, as well as to the email addresses listed in the WhoIs particulars for the Domain Names. (That occurred because the Complainant had provided in the Complaint a Law.es email address as one of the contact addresses for the Respondent.)
In the foregoing circumstances, the Panel was not prepared to infer that the Respondent itself must have had actual notice of the Complaint. Clients can change their lawyers, and a former lawyer might not bother to refer a complaint to his or her former client if the lawyer knew that someone else would be sending the complaint to the former client anyway.
Nor could the fact that some of the other notification steps prescribed in paragraph 2(a) of the Rules were not shown to have failed, elevate the performance of those steps to the status of proof that the Respondent had actual notice of the Complaint. A respondent might no longer be using an email address to which a notification has been sent, and people sometimes change physical addresses, just as they sometimes no longer check old email addresses. Sometimes individuals with no authority to receive documents on behalf of a corporation are the people with whom the relevant documents are left.
It might be said that it is entirely the fault of the respondent if the WhoIs particulars for a disputed domain name are not kept up-to-date. That may be so, but the structure of paragraph 2(a) of the Rules is such that the respondent is only deemed to have notice of a complaint when all of the steps prescribed at paragraph 2(a)(i), (ii) and (iii) of the Rules have been taken by the Provider. In the absence of evidence of actual notice (such as submission of a Response) or clear indicia that the Respondent is in actual possession of the Complaint, apparently successful completion of only some of the prescribed steps is not enough.
Underpinning the Panel’s consideration of this issue, is his view that proof of proper notification of the proceeding to the respondent is fundamental to the integrity of the UDRP process. A disputed domain name may be a very valuable asset for a respondent, and it is important that respondents be given a fair opportunity to tell their side of the story. For this Panel, at least, that means that there should be clear evidence that all of the notification steps prescribed at paragraph 2(a)(i), (ii), and (iii) of the Rules have been taken, or that the respondent (or a responsible officer of a corporate respondent) is actually in possession of the complaint or has had access to it.
No doubt there are many ways in which actual notice may be established. Often it will be established by a respondent communicating with the Provider in such a way that it is clear that he or she has notice of the complaint. But that is just one example – each case will depend on its own facts. On the particular facts of this case, the Panel was not prepared to find that the knowledge of the Complaint which Law.es undoubtedly had, necessarily implied that the Respondent had actual notice of the Complaint.
(ii) Response One Day Late
In the exercise of his discretion, the Panel is prepared to accept and consider the late-filed Response. The Response was filed only one day later than the date prescribed in the re-notification of the Complaint, and it really does little more than expand to some extent on the arguments which had been set out in the Law.es pre-commencement correspondence. It helpfully makes clear that the Respondent is contesting the Complainant’s case in respect of only one of the three Domain Names. In the circumstances, the Complainant will not be prejudiced by the admission of the Response, and the Panel elects to receive and consider it.
(iii) Time for Panel’s Decision
It may be that the Panel’s appointment as sole panelist was not effective until it was confirmed by the Center on August 31, 2011, after the time allowed in the re-notified Complaint for the Respondent to file a Response had expired. On that basis, the Panel’s decision would not be due until September 14, 2011. But if the 14 day period for the Panel to give his decision ran from the date of his original appointment by the Center on July 19, 2011, an extension of time for the Panel to give this decision would be necessary.
It is an interesting procedural point, but there is no need for the Panel to resolve it here. The simplest course is for the Panel to extend the time for him to give his decision, to the date appearing at the foot of the decision. That order is made accordingly.
B. What the Complainant must prove under the Policy
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires 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”.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved this part of the Complaint, in respect of all three Domain Names.
The Domain Name <tripleavacations.com> is, in the Panel’s view, confusingly similar to the Complainant’s AAA VACATIONS mark. The word “vacations” is included in full in this domain name, and the expression “triple a” conveys precisely the same meaning as “AAA”. Furthermore in spoken English, many people referring to the Complainant’s mark might say “Triple A vacations”, if only for the slightly greater ease of pronunciation of that expression. That (spoken) version of the Complainant’s mark is of course identical to the <tripleavacations.com> domain name.
It does not matter that the USPTO may have required the Complainant to disclaim any right in the expression “vacations” without the “AAA” – it is the combination of the word “vacations” and the expression “triple a” in this domain name which creates the confusing similarity. Internet users will inevitably assume that any website at this domain name will be concerned with the topic of vacations, and many of them who are familiar with the Complainant and its AAA or AAA VACATION marks will assume that the “triple a” in the domain name signals a website operated or endorsed by the Complainant. The confusing similarity is only likely to be exacerbated by the fact that the Complainant also holds a USPTO principal register registration for the mark TRIPLE A.
The Panel does not accept the argument that “AAA” is a descriptive expression meaning “excellent” or “top quality”, which is commonly used in combination with the dictionary word “vacations”. While the expression “AAA” may be used to describe something of the highest standard, or quality, in some specific fields (e.g., in the ratings of credit rating agencies), the Panel’s impression is that the expression does not normally have the wide common application for which the Respondent contends. By way of example only, the Panel cannot imagine many English speakers, when asked how they had enjoyed their vacation, saying that they had had an “AAA vacation” or a “triple A vacation”. And the Respondent did not produce or refer to any instance of the combination of “AAA” (or “triple a”) and “vacations” being used in normal English usage.
In respect of the domain name <aaaautorental.com>, the Complainant’s AAA mark is included in its entirety in this domain name, together with a generic expression (“auto rental”) which refers to a particular service provided by the Complainant under its AAA mark. The Panel accepts that the Complainant’s AAA mark is very widely known, and as far as the evidence shows, the Complainant is the only significant body known by the abbreviation “AAA” which would be recognized by a significant number of Internet users as a provider of travel-related services, including the arranging of automobile rentals.
As for the domain name <aaaautomaker.com>, that domain name incorporates in full both the Complainant’s AAA and AUTOMAKER marks. That is sufficient for a finding of confusing similarity.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, Second Edition (“WIPO Overview, 2.0”) as follows:
“… 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 burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Domain Names are all confusingly similar to trademarks or service marks owned by the Complainant, and the Complainant has not authorized the Respondent to use its marks, whether in domain names or otherwise. There is nothing in the evidence to suggest that the Respondent, or any business or organization operated by it, is commonly known by any of the Domain Names, and therefore no basis for the Panel to consider the possibility of the Respondent having a right or legitimate interest under paragraph 4(c)(ii) of the Policy. The Respondent’s use of the Domain Names appears to have been commercial in nature (deriving revenue from sponsored links to third party websites), so it does not appear that there could be any argument of noncommercial use of the kind described at paragraph 4(c)(iii) of the Policy.
In their pre-commencement correspondence, Law.es argued that the Respondent registered the Domain Names for their descriptive values, and that it was putting them to uses which were consistent with those descriptive values. Law.es also contended that their client registered the Domain Names without knowledge of the Complainant or its marks. In the Response, the Respondent pursued those contentions only in respect of the domain name <tripleavacations.com>.
The Complainant’s evidence shows that the Domain Names have all resolved to websites which contain links not only to the Complainant’s official website (showing apparent knowledge of the Complainant), but also to sites of third parties offering services which compete with those of the Complainant. The evidence also shows that the Respondent registered the domain names <aaaautorental.com> and <aaaautomaker.com> over six months before the Respondent registered the domain name <tripleavacations.com>, and that the Respondent had registered the domain names <aaaautoclub.com> and <aaaincurance.com> at some time before the Law.es correspondence was written in late 2010. The Respondent did not oppose the Complainant’s claims to the latter two domain names, and has since elected not to defend the claims relating to <aaaautorental.com> and <aaaautomaker.com>. Three of these domain names contain a combination of the Complainant’s AAA mark and an expression concerned with automobiles, and the fourth combines the AAA mark with a mis-spelt word designating a product normally required by owners of automobiles (insurance).
The evidence further shows that the website to which the domain name <tripleavacations.com> pointed on August 9, 2010, December 1, 2010, March 22, 2011, and June 17, 2011, was an English language website which appeared to have been targeted at a United States audience (e.g., there were links to websites offering, among other things, “weekend getaways in DC”, and “Orlando family vacations”).
In the foregoing circumstances it was quite futile for the Respondent to argue, as it did, that the Complainant had failed to provide facts “that would infer that Respondent, a Switzerland based company, should have had any knowledge of Complainant or its asserted trademarks”. The evidence that the Respondent knew about the Complainant is overwhelming.
Considering the evidence as a whole, the Panel can only sensibly conclude that the Respondent has been trading off the Complainant’s reputation in its marks, by luring to the websites at the Domain Names Internet users looking for websites operated or endorsed by the Complainant. The Respondent’s argument that it registered the domain name <tripleavacation.com> solely for its value as a descriptive term, is simply not plausible. The evidence does not support the Respondent’s argument that “triple A” is commonly used in ordinary English to describe vacations, and the Respondent’s registration of at least two other domain names which are confusingly similar to marks owned by the Complainant, both pointing to “link farm” websites which refer to the Complainant, pushes the boundaries of coincidence too far. The existence of the sponsored links on the Respondent’s websites leaves little room for doubt that the Respondent’s intentions have been to use the Complainant’s marks to generate increased Internet traffic to the Respondent’s websites, and thereby maximize the opportunity to derive pay-per-click revenue from the sponsored links on those websites.
Having regard to those matters, the only reasonable conclusion is that the Respondent was targeting the Complainant or its marks when it registered the Domain Names, and that they were not registered with a view to exploiting any alleged descriptive values they might have possessed. Such use of the Domain Names by the Respondent could never be regarded as “bona fide” within the meaning of paragraph 4(c)(i) of the Policy, nor as “fair” or “legitimate” under paragraph 4(c)(iii), nor as conferring on the Respondent a legitimate interest in the Domain Names on any other basis.
Having regard to the foregoing considerations, the Panel is satisfied on the evidence produced that the Respondent has no right or legitimate interest in any of the Domain Names.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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] website or location or of a product or service on [the respondent’s] website or location.
Substantially for the reasons set out in Section 6D of this decision, the Complainant has also made out its case on this part of the Complaint.
The links on the websites at the Domain Names to the Complainant’s official website, and the fact that the Respondent has registered multiple domain names which are confusingly similar to more than one of the Complainant’s service marks, leave no room for doubt that the Respondent was aware of the Complainant when the Domain Names were registered. The Respondent’s subsequent use of the Domain Names falls squarely within paragraph 4(b)(iv) of the Policy: by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites at the Domain Names, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of those websites.
The facts that the Respondent offered no defense to the Complainant’s claims in respect of the domain names <aaaautorental.com> and <aaaautomaker.com>, and earlier agreed to surrender to the Complainant the domain names <aaaautoclub.com> and <aaaincurance.com>, reinforce that conclusion, and leave no room for doubt that the Respondent’s intention was indeed to exploit for its own commercial benefit the Complainant’s goodwill in its marks.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <aaaautomaker.com>, <aaaautorental.com> and <tripleavacations.com> be transferred to the Complainant.
Dated: September 7, 2011