World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein

Case No. D2011-2069

1. The Parties

The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America (“US”), represented by Covington & Burling, United States of America.

The Respondents are aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, and aaanetacceess.com Privacy--Protect.org, of Shanghai, China, and Isaac Goldstein of Hong Kong, China (“Hong Kong”) (collectively the “Respondents”).

2. The Domain Names and Registrars

The disputed domain names <aaaaautoinsurance.com>, <aaanetacceess.com>, and <aaa-netaccess.com> are registered with Hebei Guoji Maoyi (Shanghai) Ltd aka Hebei International Trading (Shanghai) Co. Ltd dba HebeiDomains.com;

the disputed domain name <aaacarolinamortgage.com> is registered with Domain Rouge, Inc;

the disputed domain name <aaahouseinsurance.com> is registered with OregonEU.com LLC;

the disputed domain name <aaahouserentals.com> is registered with eNom;

the disputed domain name <aaakentucky.com> is registered with Network Solutions, LLC; and

the disputed domain name <allaaa.com> (each a “Disputed Domain Name” and collectively / in any combination the “Disputed Domain Names”) is registered with Melbourne IT Ltd (collectively / in any combination the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2011. On November 24, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names.

On November 24, 2011, November 25, 2011, November 28, 2011, and November 30, 2011 each of the relevant Registrars transmitted by email to the Center their verification response confirming that the Respondents are listed as the registrants and providing the contact details for such registrants in respect of the Disputed Domain Names <aaacarolinamortgage.com>, <aaahouseinsurance.com>, <aaahouserentals.com>, <aaakentucky.com>, and <allaaa.com>.

In respect of the Disputed Domain Names <aaa-netaccess.com>, <aaaaautoinsurance.com>, and <aaanetacceess.com>, on November 24, 2011, the registrar Hebei International Trading (Shanghai) Co. Ltd dba HebeiDomains.com transmitted by email to the Center its verification response disclosing registrant and contact information for these Disputed Domain Names as Milan Kovac, which registrant differed from the Respondent and contact information identified in the Complaint. The Center sent an email communication to the Complainant on December 5, 2011 providing the registrant and contact information disclosed by the registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 6, 2011, the Complainant declined to amend the Complaint (as discussed under Proper Respondents below).

On December 5, 2011, the Center also transmitted an email communication to the parties in both English and Slovak regarding the language of the proceeding. On December 6, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 December 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2012.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 20, 2012. 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. Language of Proceedings

No issues arise as to the proper language of the proceedings in respect of the Disputed Domain Names <aaacarolinamortgage.com>, <aaahouseinsurance.com>, <aaahouserentals.com>, <aaakentucky.com> and <allaaa.com>, which language is, according to the verification responses of the relevant registrars and/or the relevant domain name registration agreements, English.

In respect of the Disputed Domain Names <aaaaautoinsurance.com>, <aaanetacceess.com>, and <aaa-netaccess.com>, the domain name registrar (Hebei International Trading (Shanghai) Co. Ltd dba HebeiDomains.com) alleged in its verification response to the Centre on November 24, 2011 that the registrant is an individual named Milan Kovac and that the language of the relevant registration agreements, and thus the proper language of the present proceedings in respect of these three domain names, is Slovak.

On December 6, 2011, the Complainant transmitted an email communication to the Centre requesting the present proceedings be conducted in English.

In light of the Panel’s findings on the proper registrant of the foregoing Disputed Domain Names and the credibility of their registrar (as discussed under Proper Respondents below), to the effect that the underlying registrant of the foregoing three Disputed Domain Names is more likely than not the Respondent Isaac Goldstein (as can be seen from the discussion under Factual Background and under Proper Respondents below) and given that numerous UDRP proceedings have been conducted against Isaac Goldstein in English, and also given that the contents of the websites to which the Disputed Domain Names resolve (collectively the “Websites”) are displayed largely in English, the Panel finds that the circumstances of the present case are such as to warrant the exercise of its discretion under paragraph 11 of the Rules to determine the language of these proceedings, which language the Panel determines is English.

5. Factual Background

The Complainant is a US company that operates as an association of numerous regional automobile clubs that provide goods and services in various industry sectors, including the automobile, insurance and travel sectors. The Complainant owns numerous registrations for the AAA mark in the US and other various countries across the world, including China, which registrations date from at least 1967. The Complainant also holds the registration for the domain name <aaa.com>, which domain name resolves to the Complainant's main website and was registered on August 3, 1990.

The Respondent Isaac Goldstein appears to be an individual residing in Hong Kong.

The Respondents aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, and aaanetacceess.com Privacy--Protect.org appear to be privacy services located in Shanghai. A search for the <privacy--protect.org> domain name on the public WhoIs database reveals as the registrant, an individual likewise named Isaac Goldstein and residing in Hong Kong with the same telephone number as is listed for the Respondent Isaac Goldstein. The organisation listed in the WhoIs record for the <privacy--protect.org> domain name is also “Isaac Goldstein”. The Panel is thus prepared to accept the Complainant's contention, on the balance of probabilities and in the absence of any contentions to the contrary by the Respondents, that the Respondents relate in fact to one and the same person (as discussed further under Proper Respondents, below).

The Disputed Domain Names were registered on the following dates: <aaaaautoinsurance.com> (February 8, 2011), <aaanetacceess.com> (June 7, 2006), <aaa-netaccess.com> (December 22, 2009), <aaacarolinamortgage.com> (January 13, 2011), <aaahouseinsurance.com> (September 20, 2010), <aaahouserentals.com> (October 17, 2002), <aaakentucky.com> (June 15, 1998), and <allaaa.com> (April 2, 2010).

As at the date of this decision, all of the Websites host (pages linking to) various sponsored links and/or advertising related to various services, including automobile-related and roadside assistance services, insurance services, travel services, mortgage services, credit cards services, and accommodation rental services, displayed largely in the English language.

The Panel also notes that according to screenshots of the Websites provided by the Complainant together with the Complaint dating between August to November 2011, the Websites, during that period, contained numerous links related to the services offered by the Complainant, namely roadside assistance and various services related to cars / automobiles, in addition to links that appear to refer directly to the Complainant, namely “Aaa Com” (which is the URL address to the Complainant's main website), “Aaa Motor Club” and links incorporating the words “Aaa Auto” or “Aaa Automobile”.

6. Parties’ Contentions

A. Complainant

The Complainant's contentions can be summarised as follows:

(a) Isaac Goldstein is the true registrant of all the Disputed Domain Names:

(i) the Complainant learned, in related litigation, that Isaac Goldstein is the true registrant of the Disputed Domain Name <aaaaautoinsurance.com>;

(ii) according to the relevant WhoIs record, the domain name associated with the privacy service Privacy--Protect.org (which is the registrant of the Disputed Domain Names <aaaaautoinsurance.com>, <aaa-netaccess.com> and <aaanetacceess.com>) is registered by Isaac Goldstein; and

(iii) the Complainant believes that Mr. Goldstein owns and operates Privacy--Protect.org and used that entity as a proxy when he registered the Disputed Domain Names <aaaaautoinsurance.com>, <aaa-netaccess.com> and <aaanetacceess.com>.

(b) the Disputed Domain Names are confusingly similar to the Complainant's AAA mark, in which the Complainant has rights:

(i) the Complainant has exclusive ownership of US federal trade mark registrations and international trade mark registrations for, and common law rights in, its AAA mark and marks incorporating AAA;

(ii) the Complainant has used its AAA marks in commerce since at least 1902;

(iii) as a result of the Complainant's history and experience providing high quality products and services, its member clubs' continuous and extensive advertising, promotion and sales of such products and services under the AAA marks, its AAA marks are famous in the US and abroad, as recognised in previous domain name dispute proceedings involving the Complainant;

(iv) each of the Disputed Domain Names includes the entire AAA mark, with the addition of terms that relate to services for which the Complainant is well known and/or geographic terms referencing locations where the Complainant and its member clubs operate in the US, such as to heighten the risk of consumer confusion, as recognised in a previous domain name dispute proceeding involving the Complainant (Am. Auto. Ass'n, Inc. v. AAA-Vacationsunlimted, WIPO Case No. D2009-0373), where the domain name <aaaautorewards.com> was found to be confusingly similar to the Complainant's AAA marks for automotive services;

(v) the Disputed Domain Names <aaaaautoinsurance.com>, <aaacarolinamortgage.com>, <aaahouseinsurance.com> and <aaahouserentals.com> include generic terms relating to the Complainant's insurance or mortgage and home equity business, and the Disputed Domain Name <aaacarolinamortgage.com> and <aaakentucky.com> incorporate the terms “Carolina” and “Kentucky” respectively, which are two of several locations within the US where the Complainant maintains active local member clubs and where its AAA mark is well known to consumers;

(vi) the Disputed Domain Names <aaa-netaccess.com> and <aaanetacceess.com> include the Complainant's AAA mark and the combination of the terms “net access” and are identical, or nearly identical, to the <aaanetaccess.com> domain name owned by the Complainant (the Panel notes that this domain name is in fact held by Bank of America but acknowledges that there appears to be some business relationship between Bank of America and the Complainant);

(vii) the Respondents' use of a dash or the addition of an "a" or "e" to differentiate the Disputed Domain Names <aaa-netaccess.com> and <aaanetacceess.com> constitutes typosquatting, a practice regularly found to constitute confusing similarity, and does not mitigate the confusion caused; and

(viii) the Respondents' use of the Disputed Domain Names is likely to cause, and may already have caused, consumers to become confused as to the source, sponsorship, affiliation, or endorsement of such Disputed Domain Names.

(c) The Respondents do not have legitimate rights or interests in the Disputed Domain Names:

(i) the Complainant has established rights to the AAA mark and has not licensed or authorised the Respondents to use such mark in connection with their business(es) or as part of the Disputed Domain Names;

(ii) there is no evidence that the Respondents are commonly known by the Disputed Domain Names. Five of the Disputed Domain Names are registered under the name of Isaac Goldstein and the remainder are registered to a privacy service, and these names and aliases bear no relation to the AAA mark;

(iii) the Respondents' use of Disputed Domain Names that are confusingly similar to the Complainant's AAA marks is neither a bona fide offering of goods or services nor legitimate noncommercial fair use; and

(iv) the Respondents were aware of the Complainant and its AAA marks when registering the Disputed Domain Names based on the Complainant's various US federal registrations for the AAA marks as well as its foreign trade mark registrations for marks incorporating AAA.

(d) The Disputed Domain Names have been registered and are being used in bad faith:

(i) the Respondents intentionally registered multiple domain names that are confusingly similar to the Complainant's AAA mark to capitalise on the reputation and goodwill of the AAA mark and to attract Internet users to the Respondents' pay-per-click ("PPC") advertising Websites, and the intentional use of the Complainant's AAA mark in the Disputed Domain Names creates a likelihood of confusion for Internet users as to the source, sponsorship, affiliation, or endorsement of the Websites;

(ii) the Websites direct Internet users to the services of potential competitors of the Complainant, which constitutes a disruption of the Complainant's business and is evidence of bad faith;

(iii) the Respondents' actual or constructive knowledge of the Complainant's AAA mark, based on the Complainant's registration of the mark with the US Patent and Trademark Office (“USPTO”) and the substantial fame of such mark in the US and abroad, is further evidence of bad faith, as supported by Am. Auto. Ass'n, Inc. v. AAA v. Vacationsunlimited, supra, in which the panelist found that the respondent's knowledge of the Complainant's AAA mark may be inferred because the mark was registered with the USPTO and well known in the industry;

(iv) the Respondents continue to maintain the Disputed Domain Names and Websites despite receiving actual notice that use of the AAA mark is unauthorised;

(v) the Respondents' practice of typosquatting strengthens the inference of bad faith;

(vi) the Respondent, Isaac Goldstein, is a known cybersquatter with a history of registering and profiting from domain names that incorporate famous and well known trade marks. Since 2010, Isaac Goldstein has been ordered to transfer disputed domain names to complainants in at least eight different UDRP proceedings (Sharekhan Ltd. v. Isaac Goldstein, WIPO Case No. D2011-1232 (September 23, 2011); Rocket Publishing Co. v. Isaac Goldstein, WIPO Case No. D2011-0578 (May 24, 2011); Bayer HealthCare LLC v. Isaac Goldstein, WIPO Case No. D2011-0581 (May 16, 2011); VIRBAC v. Isaac Goldstein, WIPO Case No. D2011-0026 (February 23, 2011); Scripps Networks, LLC v. Isaac Goldstein, WIPO Case No. DCO2010-0026 (November 18, 2010); L.A. Fitness Int’l, LLC v. Isaac Goldstein, WIPO Case No. DCO2010-0007 (September 15, 2010); General Motors LLC v. Isaac Goldstein, WIPO Case No. D2010-0450 (May 11, 2010); and ChemRite CoPac, Inc. v. Isaac Goldstein, WIPO Case No. D2010-0279 (May 3, 2010). In each case, the panel found that Isaac Goldstein's intentional use of the complainant's trade marks to attract Internet users to its PPC advertising websites demonstrated his lack of rights or legitimate interests in, and bad faith registration and use of, the relevant disputed domain names; and

(vii) the Respondent Isaac Goldstein has registered and continues to use numerous domain names that include other famous third party trade marks, including, amongst others, AARP, HOME DEPOT and GOOGLE, to host PPC advertising websites that contain links to the relevant trade mark owner's goods and services and/or goods and services that compete with the trade mark owner. This continued pattern and practice of registering and using infringing domain names to host PPC advertising websites is a model of bad faith.

B. Respondents

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

The fact that the Respondents have not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondents to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

7. Discussion and Findings

Prior to addressing its main findings under paragraph 4(a) of the Policy, the Panel will address the issue of the proper respondent(s) of the present proceedings.

A. Proper Respondents

According to the registrar verification response transmitted to the Centre on November 24, 2011 by Hebei International Trading (Shanghai) Co. Ltd dba HebeiDomains.com, the registrant of the Disputed Domain Names <aaa-netaccess.com>, <aaaaautoinsurance.com>, and <aaanetacceess.com> is an individual named Milan Kovac residing in Slovakia, and not the Respondents identified by the Complainant in the Complaint.

As discussed under Procedural History (above), the Centre sent an email communication to the Complainant on December 5, 2011 providing the registrant and contact information for Milan Kovac as disclosed by the registrar, and inviting the Complainant to amend the Complaint accordingly. On December 6, 2011, the Complainant transmitted an email communication to the Centre, declining to amend the Complaint on the grounds that the relevant WhoIs records relied upon by the Complainant (dated November 16, 2011 and November 18, 2011) indicated aaa-netaccess.com Privacy--Protect.org, aaaaautoinsurance.com Privacy--Protect.org, and aaanetacceess.com Privacy--Protect.org, as the respective registrants and not Milan Kovac.

The Panel notes that as at the date of this decision, the WhoIs database records indicate that the common registrant of the Disputed Domain Names <aaaaautoinsurance.com>, <aaanetacceess.com>, and <aaa-netaccess.com> is, as the Complainant contends, Privacy--Protect.org. In the circumstances of this case, the Panel finds that Privacy--Protect.org and not Milan Kovac is a proper Respondent for such domain names on the basis that: (i) Privacy--Protect.org is the registrant listed in the WhoIs database as at the date of this decision and was so as at the date that the Complaint was filed (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9, which recognises the WhoIs-listed registrant of record for the relevant domain name as the proper respondent for domain name dispute proceedings); (ii) the WhoIs history records do not indicate Milan Kovac as the registrant of any of the aforementioned Disputed Domain Names at any time between November 24, 2011 (the date of the relevant registrar verification response) and the present date; and (iii) the Panel finds the identity and credibility of the relevant registrar, and thus any information provided by it regarding registrant details or otherwise, to be dubious (as discussed below).

The Panel notes that, as contended by the Complainant in the Complaint, the Respondent Privacy--Protect.org's domain name <privacy—protect.org> is registered by Isaac Goldstein, the other Respondent to these proceedings, according to the relevant WhoIs record (which also states Isaac Goldstein's organisation name as “Isaac Goldstein”), such as to suggest that the Respondents Privacy--Protect.org and Isaac Goldstein are somehow related, if not one and the same entity / person. The Panel is persuaded that such an inference is appropriate given its further findings that the Disputed Domain Name <aaaaautoinsurance.com> was previously (up until about June 2, 2011) held in the name of Isaac Goldstein as revealed in relevant WhoIs history records, and that Privacy--Protect.org / Isaac Goldstein appears to be related to, if not the same entity as, the registrar of the Disputed Domain Names <aaaaautoinsurance.com>, <aaanetacceess.com>, and <aaa-netaccess.com>, Hebei International Trading (Shanghai) Co. Ltd dba HebeiDomains.com. Specifically, the registrant of <hebeidomains.com>, the registrar’s domain name, shares the same office address in Shanghai as that listed in the WhoIs record for the Respondent Privacy--Protect.org. As such, the Panel considers it more likely than not that the registrar Hebei International Trading (Shanghai) Co. Ltd dba HebeiDomains.com is in fact also related to, if not one and the same entity / person as, the Respondent Isaac Goldstein, such as to render the credibility of the information provided by this registrar, highly suspect.

In further support of the above presumptions, the Panel notes that the domain name for the email address of Milan Kovac as provided in the registrar verification response, namely <worstwineever.com>, is also registered by Privacy--Protect.org under the same Shanghai address, such as to indicate another (concealed) association with Isaac Goldstein.

In light of the above circumstances, the Panel confirms the Respondents to these proceedings as identified by the Complainant, and further finds that both Respondents most likely relate to one and the same entity / individual, Isaac Goldstein.

Accordingly, the Panel will now proceed to address its main findings in these proceedings. Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:

(a) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(b) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and

(c) the Disputed Domain Names have been registered and are being used by the Respondents in bad faith.

B. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in respect of the AAA trade mark on the basis of its registration for such mark in the US and various countries across the world, dating from 1967, more than three decades before the earliest Disputed Domain Name registration (in 1998).

It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain (“gTLD”), in this case “.com”, should be disregarded (Rohde & Schwartz GmbH & Co. KG v Pertshire Marketing Ltd, WIPO Case No. D2006-0767).

Each of the Disputed Domain Names incorporates the Complainant's AAA trade mark in its entirety.

In respect of the Disputed Domain Names <aaaaautoinsurance.com>, <aaanetacceess.com>, <aaa-netaccess.com>, <aaacarolinamortgage.com>, <aaahouseinsurance.com>, <aaahouserentals.com>, and <allaaa.com>, the only difference between each Disputed Domain Name and the Complainant’s mark is the former's inclusion of the respective, descriptive words “auto insurance”, “net access”, “Carolina mortgage”, “house insurance”, and “house rentals” as suffixes, and in one case, the prefix “all”. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only variation is the addition of a generic word, such variation does not negate the confusing similarity between the disputed domain name and the mark. See Oakley, Inc. v. Joel Wong/Blue Host.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. WhoIs Privacy Service, WIPO Case No. D2010-0088. The Panel accordingly finds that “AAA” is the distinctive and prominent component of each of the foregoing Disputed Domain Names, such that the addition of the cited words does nothing to distinguish these Disputed Domain Names from the Complainant’s AAA mark.

The Panel further finds that given that the Complainant offers services related to automobiles, insurance, home equity loans, and temporary lodging, (and owns registrations for marks incorporating AAA in respect of such services) the “auto insurance”, “mortgage”, “house insurance” and “house rental” components of the Disputed Domain Names <aaaaautoinsurance.com>, <aaacarolinamortgage.com>, <aaahouseinsurance.com> and <aaahouserentals.com>, effect to increase the likelihood of confusion that these Disputed Domain Names are somehow associated with the Complainant (see Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd, WIPO Case No. D2001-0110; and Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., WIPO Case No. D2001-0075, which support a finding that a domain name’s incorporation as a suffix, of a word that describes the goods or services in respect of which the complainant’s mark(s) are registered, increases the likelihood of confusion between such domain name and the complainant’s mark(s)).

Likewise, the Panel finds that the inclusion of a geographical term in the Disputed Domain Names <aaakentucky.com> and <aaacarolinamortgage.com> does nothing to mitigate the confusing similarity between these Disputed Domain Names and the Complainant’s AAA mark (see Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768; Oakley, Inc. v Joel Wong/Blue Host.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. WhoIs Privacy Service, WIPO Case No. D2010-0088), particularly given that the Complainant maintains active regional automobile clubs in each of Carolina and Kentucky in the US.

The Panel accordingly finds that each of the Disputed Domain Names is identical to the AAA mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview 2.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant contends that the Respondents are not connected or associated with the Complainant’s business and are not on any other basis licensed or authorised to use its AAA mark. Further, the Complainant submits that the Respondents have never been commonly known by the “AAA” name. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondents lack rights or legitimate interests in the Disputed Domain Names and the Respondents have the burden of producing evidence that they do possess such rights or legitimate interests. As no Response has been submitted by the Respondents, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainant's evidence.

The Panel accepts that the Complainant has not licensed or otherwise authorised any of the Respondents to use the AAA trade mark. The Panel also accepts that there is no evidence to suggest that any of the Respondents are commonly known by either the Disputed Domain Names or the AAA mark, and that the use of the Websites to host (links to) sponsored links and/or advertising, for which the Respondents presumably receive revenue on a PPC basis or otherwise, precludes a finding of noncommercial or fair use of the Disputed Domain Names. Accordingly, the Respondents need to demonstrate that they acquired rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Names in connection with a bona fide offering of goods or services. However, given the patent bad faith attributable to the Respondents on the facts of this case (as discussed in relation to bad faith registration and use, below), the Panel is unable to find any such rights or legitimate interests on this basis.

Further, the Panel finds that no rights or legitimate interests are conferred on either of the Respondents by their use of the Websites to display miscellaneous PPC links. The Panel notes that the Respondents’ use of the Websites to host various sponsored links can, in certain circumstances, constitute a bona fide offering of services capable of giving rise to rights or legitimate interests for the purposes of the Policy, provided that the Disputed Domain Names are used in a descriptive (and not trade mark) sense, to describe the sponsored links hosted (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 and paragraph 2.6 of the WIPO Overview 2.0), but finds that in the circumstances of the present case, no such rights or legitimate interests arise. This is so given the numerous instances of the Respondents’ use of the Complainant’s AAA mark and name on the Websites in the trade mark sense and/or to capitalise on its trade mark value, such as the hosting of sponsored links that appear to refer directly to the Complainant, namely “Aaa Com” (which is the URL address to the Complainant's main website), “Aaa Motor Club” (which describes the type of clubs that the Complainant maintains / operates as part of its business), “Aaa Roadside Assistance” (which is the line of business that the Complainant is famous for) and links incorporating the words “Aaa Auto” or “Aaa Automobile” (which incorporates the Complainant’s abbreviated name (“AAA”) and the business it is most famous for and named after (“Automobiles”), even where such links have no apparent relation to the Disputed Domain Name in question, for example in the context of the Disputed Domain Name <aaacarolinamortgage.com>.

The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Names.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondents registered and used the Disputed Domain Names in bad faith.

For the Complainant to succeed in this claim, the Complainant must satisfy the Panel that the Respondents knew or were likely to have known of the Complainant's AAA trade mark at time of registering the Disputed Domain Names. The Panel finds that this is more likely than not to be the case on the following cumulative facts:

(i) the fame of the Complainant’s AAA trade mark, which is well known both inside the US and abroad, as:

(a) accepted by various WIPO panelists in previous domain name proceedings involving the Complainant (see Am. Auto. Ass’n, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489 and Am. Auto. Ass’n, Inc. v. AAA-Vacationslimeted, WIPO Case No. D2009-0373);

(b) demonstrated by the numerous cases of domain name dispute proceedings involving the hijacking of the Complainant’s AAA mark; and

(c) suggested by the Complainant’s numerous registrations for the AAA mark in jurisdictions across the world, including in China; and

(ii) that the Respondent Isaac Goldstein (who, as discussed under Proper Respondents above, the Panel considers more likely than not to be related to, if not the same entity / person as, the Respondent Privacy--Protect.org) is an individual who is clearly well-acquainted with trade marks that are famous in the US and in the habit of hijacking / incorporating the same as domain names (see L.A. Fitness Intl’l, LLC v. Isaac Goldstein, WIPO Case No. DCO2010-0007, in respect of the mark LA FITNESS and General Motors LLC v. Isaac Goldstein, WIPO Case No. D2010-0450, in respect of the mark CHEVY CAPRICE).

The Panel finds that bad faith registration can also be inferred from the Respondent Isaac Goldstein's history and pattern of bad faith registration of domain names incorporating the trade marks of third party complainants, as determined by various UDRP panelists in numerous domain name proceedings (see paragraph 6A(d)(vi) above).

In respect of bad faith use of the Disputed Domain Names, this is indicated by the links hosted on the various Websites and consequent use of the Complainant's AAA mark (as discussed in relation to Rights and Legitimate Interests above) as well as the use of the Disputed Domain Names as link farms. Previous UDRP panels have found it proper to infer from the existence of such “link farms” that the relevant website operator collects financial remuneration for every sponsored link that is activated by Internet users, and such panels have established that such practice constitutes bad faith (see Novartis AG v. Jordan Smith / Stanley Pace, WIPO Case No. D2009-1738; and Viacom International Inc. v. Stanley Pace / M Smurth Waite, WIPO Case No. D2010-1149). The Panel concurs with such inferences in finding bad faith on the part of the Respondents, whose minimal use of the Websites beyond hosting (links to pages featuring) sponsored links suggests that the Respondents have primarily used the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the Websites, by creating a likelihood of confusion with the Complainant's AAA mark as to source, sponsorship, affiliation, or endorsement of the Websites and/or the services purportedly offered therein.

Further evidence of bad faith use can be inferred from the choice to register the Disputed Domain Names <aaaaautoinsurance.com>, <aaanetacceess.com>, and <aaa-netaccess.com> using a privacy service. Whereas the Panel accepts that use of a privacy or proxy registration service is not in and of itself an indication of bad faith, it notes that the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith, for example use of a privacy service in combination with provision of incomplete contact information or continued concealment of the “true” or “underlying” registrant (see paragraph 3.9 of the WIPO Overview 2.0 and Fifth Third Bancorp v. Secure WhoIs Information Service, WIPO Case No. D2006-0696). Given that certain registrant contact information provided, per the relevant WhoIs records, is inaccurate (for example the telephone number provided for each of the three Disputed Domain Names is for a number located in Brazil rather than Shanghai, China, which is the location of the stated address) and given the elaborate attempts to conceal what the Panel considers to be at least an association between the Respondent Privacy--Protect.org, the registrar, and the alleged new registrant of the three Disputed Domain Names, Milan Kovac, with the Respondent Isaac Goldstein (as discussed under Proper Respondents above), the Panel considers that an inference of bad faith use on the basis of the Respondents' use of a privacy registration service to be appropriate in the present case.

Finally, bad faith use of the Disputed Domain Names is apparent from the Respondent Isaac Goldstein's continued operation of the Websites in the manner discussed above, despite being given actual notice from the Complainant by way of a cease and desist letter dated August 30, 2011 that such use constitutes an infringement of the Complainant's AAA mark.

In these circumstances, the Panel finds that it is clear that the Respondents have registered and are using the Disputed Domain Names in bad faith, and element 4(a)(iii) of the Policy has been satisfied.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <aaaaautoinsurance.com>, <aaanetacceess.com>, <aaa-netaccess.com> <aaacarolinamortgage.com>, <aaahouseinsurance.com>, <aaahouserentals.com>, <aaakentucky.com>, and <allaaa.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Dated: February 8, 2012

 

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