World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The American Automobile Association Inc. v. Er Bai Wu/ Above.com Domain Privacy a/k/a Koko Te

Case No. D2011-1668

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 Er Bai Wu of Shanghai, China and Above.com Domain Privacy a/k/a Koko Te of Beaumaris, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <aaany.org> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2011. On October 3, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name on October 6, 2011, Above.com, Inc., transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 6, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On October 10, 2001, the Complainant communicated to the Center its decision to decline this opportunity to amend the Complaint and to maintain the Respondent’s identification and contact information.

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 October 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2011.

The Center appointed J. Nelson Landry as the sole panelist in this matter on November 29, 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, The American Automobile Association, Inc., is the owner and user of the trademark AAA, first registered on May 23, 1967, in association with automobile association services rendered to motor vehicle owners, motorists and travelers generally and the same trademark AAA was subsequently registered on May 19, 1998, in association with different products, such as various documents pertaining to automobile and vehicles travel such as, magazines, pamphlets, booklets and directories in relation to travel information. Furthermore, the Complainant is also owner of the same trademark AAA registered in numerous countries such as Canada, Mexico, Benelux, France, Germany, Norway, Spain and China and some others. (herein the “AAA Trademark”)

The Complainant has used its AAA Trademark since at least 1902.

The Respondent registered the disputed domain name on December 21, 2004 and does use the said domain name as an address to a series of websites which vary with each visit, in such a way that the website is, at some time, associated with the domain name <yellowpages.com> which offers links to automotive products and services in competition with those offered by the Complainant and at other times, the disputed domain name hosts a parking page with pay-per-click advertising links on which there are unauthorized links to the Complainant’s website as well as links to other websites where other automobile, travel and insurance-related products and services are offered by competitors of the Complainant.

On August 20, 2011, the Complainant sent to the Respondent, by email, a cease and desist letter in which the Complainant notified the Respondent of its long standing rights in the AAA Trademark and that it had over 50 millions of members. The Respondent did not respond to the Complainant’s letter.

The Complainant has not licensed or authorized the Respondent to use its AAA Trademark within the disputed domain name nor to use it otherwise in its business.

5. Parties’ Contentions

A. Complainant

The Complainant submits that by the extensive use of its registered AAA Trademark in the United States as well as in several countries in America, Europe and Asia, since 1902, the said Trademark had become highly distinctive and famous. The Complainant further submits that the disputed domain name is confusingly similar with its AAA Trademark in which it has rights since the disputed domain name incorporates the whole of the AAA Trademark along with the geographical descriptive term or letters “ny” corresponding to the city or state of New York and the addition of the gTLD “.org” suffix and that the presence of these additional terms does not reduce the inherent confusion, in this respect the Complainant relies on the findings of earlier UDRP decisions. See The American Automobile Association, Inc. v. Domains By Proxy, Inc., by itself and as proxy for its customers, NAF Claim No. FA1226461; America Online, Inc. v. Dolphin@Hart, WIPO Case No. D2000-0713 and The American Automobile Association Inc. v. Private Whois Escrow Domains Private Limited / K.A.L Services, WIPO Case No. D2009-0822.

The Complainant states that it has not licensed or authorized the Respondent to use its AAA Trademark as part of the disputed domain name and that there is no evidence that the Respondent is commonly known by the disputed domain name. Finally, the Complainant contends that the Respondent is using the disputed domain name to redirect Internet visitors to a commercial website that offers products of competitors of the Complainant and in the alternative uses a parking site offering pay-per-click advertisement for goods and services of competitors of the Complainant. The Complainant contends that the Respondent has engaged in commercial activities, and consequently concludes that the Respondent has no rights or legitimate interests in the disputed domain name. See American Automobile Association Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489 and The American Automobile Association Inc. v. Jack Holder, NAF Claim No. FA1227171.

The Complainant, having noted that the Respondent registered the disputed domain name which it contends to be confusingly similar to its AAA Trademark to attract Internet users to its website, represents that the Respondent is thereby in violation of UDRP Policy section 4(b)(iv). The Complainant further represents that the use of its AAA Trademark in the disputed domain name creates a likelihood of confusion for Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and furthermore that such registration of the disputed domain name and its use for purposes of pecuniary gains through the use of pay-per-click advertisement are all facts which demonstrate a bad faith intention of the part of the Respondent in capitalizing on the AAA Trademark upon registering and using the disputed domain name, the whole done in bad faith. See American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592; and The American Automobile Association, Inc. v. Frederick A. Simpson, CPA, NAF Claim No. FA1105681.

The Complainant further claims that the Respondent is using the disputed domain name in bad faith by reason of the confusing similarity with the AAA Trademark which causes disruptions of the Complainant’s businesses. Finally the Complainant submits that by reason of the registration in United States of America of the AAA Trademark and their substantial fame in United of America and in other countries and continents, the Respondent most likely was aware of the AAA Trademark when it registered the disputed domain name. According to the Complainant, all these facts demonstrate that the disputed domain name was used in bad faith and, in this respect, relies on earlier UDRP decisions. See American Automobile Association Inc. v. Texas International Property Associates, WIPO Case supra; American Automobile Association Inc. v. Nevis Domains LLC, WIPO Case supra and also The American Automobile Association Inc. v. PerkinsPestControl c/o Del Rich and 1 & 1 Internet Inc., WIPO Case No. D2009-1379.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has clearly demonstrated that it has rights in the AAA Trademark which it had used since 1902 and furthermore is registered in the United States since 1967 in association with automobile association services rendered to motor vehicles owners in 1998 in association with various documentations such as magazines, pamphlets, booklets and directories in the field of travel information amongst other documents.

The disputed domain name does incorporate the whole of the AAA Trademark with the addition of the term “ny” presumably for New York and the gTLD suffix “.org” and as indicated in the earlier decisions cited by the Complainant, which this Panel adopts, these additions do not reduce the inherent confusion. See America Online Inc. v. Dolphin @Hart, WIPO Case supra. The Panel finds that the disputed domain name was registered and used in bad faith.

The Panel finds that the first criterion under the Policy has been met.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name and is not making a legitimate non-commercial or fair use of the disputed domain name.

Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of its AAA Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the disputed domain name.

The Panel finds that the Complainant has established the prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in establishing its own rights in the AAA Trademark and stating that it has not licensed or authorised the Respondent to use the said Trademark as an element of the disputed domain name.

Furthermore, the Complainant has stated that the Respondent in not commonly known by the disputed domain name whether as Koko Te or through Above.com Domain Privacy since neither of these parties has any connection to or affiliation with the Complainant. Finally, the Complainant has demonstrated as it will be determined under the next criterion that the Respondent is using the disputed domain name to redirect Internet visitors to a commercial website that offers products and services in competition with those of the Complainant or operates a pay-per-click website which is a commercial and profitable activity.

The Respondent has not filed any response or evidence and consequently has not rebutted the prima facie evidence adduced by the Complainant.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panels finds that the second criterion under the Policy has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain name was registered and used in bad faith.

The Complainant has well established that the disputed domain name is confusingly similar to the AAA Trademark and thereby attracts Internet visitors to its website and that such use of the AAA Trademark creates a likelihood of confusion for Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant furthermore established that the Respondent’s registration of the disputed domain name was made for the purpose, amongst others goals, of making pecuniary gain through the use of pay-per-click advertisement which, according to the earlier UDRP decisions, demonstrated a bad faith conduct in capitalizing on the AAA Trademark.

The Panel has considered an earlier decision cited by the Complainant, American Automobile Association Inc. v. Texas International Property Associates, WIPO Case supra, where the panel stated that there is “no plausible reason in the circumstances that the respondent would add the letters AAA to [a geographically descriptive term] in the disputed domain name at issue here, except that the respondent desires to confuse Internet users with an association with the complainant’s famous AAA trademark ”. The Panel finds this statement applicable to the present proceeding and same.

The Panel therefore finds that the Respondent registered the disputed domain name in bad faith.

To this Panel, the way in which the Respondent uses the disputed domain name to offer in its website links to competitors of the Complainant is evidence of use in bad faith. This continuing use of the disputed domain name notwithstanding the cease and desist notice of its AAA Trademark in the letter sent by the Complainant’s counsel and ignoring the request to cease using the disputed domain name and continue the use thereof is further confirmation of the bad faith behavior of the Respondent and does constitute the use of its AAA Trademark in bad faith as already decided in the UDRP decision American Automobile Association Inc. v. Nevis Domains LLC, supra, cited by the Complainant and adopted by the Panel.

The Panel finds that the disputed domain name has been used and is still used in bad faith.

The third criterion under the Policy has been met.

7. Decision

The Panel concludes that:

(a) the disputed domain name <aaany.org> is confusingly similar to the Complainant’s Trademark;

(b) the Respondent has no rights or legitimate interests in the disputed domain name;

(c) the disputed domain name in has been registered and is being used in bad faith.

Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aaany.org> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist
Dated: December 12, 2011

 

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