World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The American Automobile Association, Inc. v. PrivacyProtect.org/ Domain Tech Enterprises/

and

The American Automobile Association, Inc. v. PrivacyProtect.org/Tarun Kumar

and

The American Automobile Association, Inc. v. Publishier LLC

Case No. D2011-2202

1. The Parties

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

The Respondents in the first set of proceedings before the Panel are PrivacyProtect.org of Nobby Beach, Australia and Domain Tech Enterprises of Santiago, Chile.

The Respondents in the second set of proceedings before the Panel are PrivacyProtect.org of Nobby Beach, Australia and Tarun Kumar of Delhi, India.

The Respondents in the third set of proceedings before the Panel are PrivacyProtect.org of Nobby Beach, Australia and Publishier LLC of Newport Beach, California, United States.

2. The Domain Names and Registrars

The disputed domain name <aaadiscoverbank.com> is registered with Power Brand Center Corp., the disputed domain names <aaanitstravels.com> and <aaatours.net> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2011. At that time, the WhoIs details for the disputed domain names recorded PrivacyProtect.org as the registrant of each of the disputed domain names.

On December 15, 2011, the Center transmitted by email to Power Brand Center Corp. and to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com requests for registrar verification in connection with the disputed domain names. On December 18, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response stating that the registrant of <aaanitstravels.com> was Tarun Kumar of Delhi, India, and that the registrant of <aaatours.net> was Publishier LLC, of Newport Beach, California, United States of America. On December 21, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response stating that the registrant of <aaadiscoverbank.com> was Domain Tech Enterprises, of Santiago, Chile.

The Center sent an email communication to the Complainant on December 23, 2011, providing the registrant and contact information disclosed by the Registrar. That email sought to provide guidance to the Complainant as to what it might do in light of the information provided by the Registrar. In particular, the Center invited the Complainant to either “file a separate Complaint for one of the other domain name associated with its registrant, and file a short amendment to drop said separately-filed domain name from the current Complaint; or provide the Center with a brief amendment to the Complaint, adding the names of the registrar-disclosed registrant(s) as formal Respondents and demonstrating that the registrants are, in fact, the same entity”.

The Complainant replied, on the same day, declining to amend its Complaint based on supplemental information that was provided by the Registrars after the filing of the Complaint, relying on the following arguments:

i) the Complainant correctly identified PrivacyProtect.org as the Registrant/Respondent, consistent with the WhoIs records from December 14, 2011, the date the Complaint was filed; and

ii) PrivacyProtect.org fails to provide a working postal address or contact number in the WhoIs registry and refuses to accept postal mail, in violation of the ICANN Registrar Agreement, which rules that WhoIs information must be usable for communication purposes in a Policy proceeding – even those provided by an entity claiming to be a privacy or proxy registration service – and if they are not, the registrant, whoever they may be, must expect to bear any consequences.

The Center sent an additional communication by email to the Complainant on December 29, 2011, highlighting that:

i) the Center’s current practice with respect to the issue of Respondent’s identity in cases involving registrar disclosures of underlying registrants in cases brought against privacy or proxy registration services is based on Uniform Domain Name Dispute Resolution Policy (the “Policy” or the “UDRP”) panel principles as summarized in paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”);

ii) while it is certainly the case that some panels (in some instances based on the particularity of other provider supplemental rules) have found that the registrant as listed in the WhoIs at the time of filing of a UDRP Complaint may be the proper respondent in certain circumstances, or that a complainant should in certain circumstances in any event be able to elect whether it proceeds against privacy service providers such as PrivacyProtect.org or a so-called disclosed underlying registrant, there have been other circumstances in which panels have found that a complainant’s failure to take appropriate account of seemingly timely, registrar-disclosed information regarding so-called underlying registrant information in their Complaint can prove detrimental to that Complaint;

iii) the situation can also become additionally complex (for parties, providers and panelists alike) where, as in the present case, the registrar appears to be disclosing different underlying registrants, while paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) requires complaints filed in respect of multiple domain names to be brought against the same domain name holder;

iv) the UDRP does not deal expressly with the issue of privacy and proxy registration services, nor grant providers (placed on notice by registrars of additional registrant identity and contact information) power to do determine respondent identity in cases of uncertainty, tending to mean that the issue of determining the proper identity of the respondent(s) in such cases will often fall to be determined, based on the circumstances and party submissions, to the independent panel on appointment;

v) in so far as panel determinations in cases involving so-called registrar disclosure of multiple underlying registrants, this is a developing area of jurisprudence, and at least at present, it is by no means clear that commonality of private service would always (or even mostly) mean that there will always be a single respondent in such cases;

vi) in view of the Complainant’s below submission that PrivacyProtect.org is the only proper Respondent in this case, and having regard to the cases cited in support of that position, the Center was prepared to provisionally accept the Complaint on that basis, and to put the matter before the independent Panel for its determination in due course;

vii) that Panel would then have appropriate power to rule on the Complainant’s request, to proceed to a decision if it agreed, or otherwise order such steps as it may consider appropriate;

viii) for its part, the Center would (both in light of its obligations under the Rules to take reasonable steps to notify, and being mindful also, whatever the substantive implications of this may be, of the mentioned practical difficulty in contacting PrivacyProtect.org at the available contact information) to notify a copy of the Complaint to all of the available contact information, both for PrivacyProtect.org, and for the registrar disclosed entities, and to place before any appointed Panel any submissions from these which may be received within the specified response.

The Center, in the same communication, invited the Complainant to confirm, within January 3, 2012, that it indeed wished to proceed with the Complaint on this basis, without any further submission or amendments, informing that, in light of the registrar-disclosed information, or not, for the Center’s part there would be no additional cost (in terms of WIPO filing fee) for the Complainant (should it wish to do so) to file an amendment to its Complaint, and highlighting that, however, any domain names removed (“split”) from the present proceeding and made the subject of a separate proceeding would naturally be subject to the requisite filing fees as indicated in the Center’s fee schedule.

The Complainant replied, on the same date, confirming the position expressed in its email of December 23, 2011 and reiterating Complainant’s position that the Complaint submitted on December 14, 2011 correctly identified the Respondent in this case as PrivacyProtect.org and requesting that PrivacyProtect.org be considered as the proper Respondent also to evade delays and additional costs to pursue registrants that choose to hide their identity by using a privacy service that itself has no valid postal address or phone number. The Complainant concluded requesting that, given the unique circumstances of this case, the Complainant be given an opportunity to amend the Complaint or pursue split proceedings if the panel ultimately disagreed with its position on the proper named respondent.

The Center verified that the Complaint satisfied the formal requirements of the 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 Respondents of the Complaint, and the proceedings commenced on January 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 27, 2012.

The Center appointed Luca Barbero as the sole panelist in this matter on February 3, 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.

Since the Panel, based on the registrar-disclosed WhoIs information and on the documents and statements submitted by the Complainant, came to the preliminary view that it was not possible in the circumstances to conclude that the three domain names <aaadiscoverbank.com> , <aaanitstravels.com> and <aaatours.net> were held by the same person or entity (which would have enabled a single Complaint including more than one domain name to be accepted as such under UDRP Rule 3(c)) or otherwise were under common control, that being a circumstance which is generally recognized by panels as required to consolidate complaints brought against multiple respondents in respect of multiple disputed domain names into one single proceeding, as further described under paragraph 4.16 of the WIPO Overview 2.0 and decisions cited therein, issued Administrative Panel Procedural Order No. 1 (“Panel Order No. 1”), on February 23, 2012. The Panel Order requested to the Complainant to a) provide the Panel with evidence of the connections among the disputed domain names (besides the use of the privacy service offered by PrivacyProtect.org), which could be evaluated by this Panel in order to determine whether the proceeding could continue as a single consolidated proceeding; or b) confirm its willingness to continue the present case as three separate sets of proceedings, providing for the payment of the appropriate additional filing fees with the Center.

The Complainant sent a communication by email to the Center on February 28, 2012, in response to the Panel Order, requesting to continue the present case as three separate proceedings and indicating that the Complainant would, if necessary, make the payment of the supplemental fees for such additional separate proceedings. The Complainant highlighted that it is also the owner of valid trademark registrations in Chile, the country were the underlying registrant for the domain name <aaadiscoverbank.com> is located.

The Complainant noted what it considered to be “the inconsistent application of paragraph 4.9 of the WIPO Overview 2.0, permitting discretion in determining the appropriate Respondent in UDRP proceedings initially filed against a privacy service. Two days before the Panel issued its Order in this proceeding rejecting Complainant’s argument that the proper Respondent in this case is the registrant listed in the Whois records at the time the Complaint was filed, Complainant received a separate panel decision in which the panel reached the opposite conclusion. See The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, et al., WIPO Case No. D2011-2069 (Feb. 8, 2012) (citing WIPO Overview 2.0, paragraph 4.9 and finding that a privacy service listed in the Whois database as of the date that the Complaint was filed was the proper registrant). These differing outcomes under similar facts leave Complainants with little guidance on how to proceed, resulting in increased costs both for Complainants and WIPO.”

The Complainant also commented that although it “appreciates that these inconsistent decisions underscore a broader policy deficiency beyond the Panel’s control, Complainant sees no substantive benefit to requiring separate proceedings here, where the substantive arguments related to each of the disputed domain names have been articulated in the single Complaint, notice has been given to all interested parties, and the allegations remain uncontested (all parties are in default). Indeed, as the Panel’s Order suggests, a consolidated decision should be more than adequate to address the allegations with respect to each domain name in this case. Complainant therefore does not appreciate why it is required to submit an additional $3,000 in fees for what appears to be a pro forma separation of proceedings.” inviting the Panel to reconsider the matter.

In light of the Complainant’s reply to the Panel Order No. 1, the Panel deemed it appropriate to issue Administrative Panel Procedural Order No. 2 (“Panel Order No. 2”), on March 27, 2012, stating that:

1. “Whereas the Panel issued Administrative Procedural Panel Order No 1 in the above- referenced UDRP proceeding dated February 23, 2012, to which the Complainant replied on February 29, 2012, including with a citation to a recently decided case of The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, et al., WIPO Case No. D2011-2069 (Feb. 8, 2012).

2. Whereas the Panel has reviewed that cited decision, in which the concerned panelist found two proper Respondents, one being the concerned privacy service (Privacy--Protect.org), the other being an identified registrant (Isaac Goldstein), both of which co-Respondents that panelist found on the record in that case to be related. In particular, this Panel has noted the findings in that cited decision concerning the proper respondents, as follows:

‘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 Center 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 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.’

3. Whereas the Panel in the present case notes that the Complainant and the privacy service (PrivacyProtect.org) are the same, the registrants as identified by the responsible registrars apparently differ, as do the responsible registrars. In particular, the Panel notes the responsible registrars in this case (being Power Brand Center Corp. in respect of <aaadiscoverbank.com> and Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com in respect of <aaanitstravels.com> and <aaatours.net>) have identified the following (apparently different) registrants for each of domain names under dispute in the present case:

a. Domain Tech Enterprises of Santiago, Chile (<aaadiscoverbank.com>);

b. Tarun Kumar of Delhi, India (<aaanitstravels.com>); and

c. Publishier LLC of Newport Beach, California, United States of America (<aaatours.net>).

These identified registrants appear to be different from those which were at issue in the earlier cited case of WIPO Case No. D2011-2069.

4. Whereas the identified registrants in paragraph 3 above did not appear in the WhoIs at the time the Complaint was filed (the privacy service, PrivacyProtect.org, appearing in the WhoIs at that time), each such registrant was identified by the responsible registrar in reply to the Center’s standard registrar verification request (which information was then appropriately communicated by the Center to the parties), and was subsequently identified in the public WhoIs, including on:

i. the date the proceedings were commenced by the Center;

ii. the date of the Panel’s earlier administrative panel order No. 1;

iii. the date of this administrative panel order No. 2.

5. Whereas the privacy service may be a proper Respondent in such circumstances, this does not necessarily mean it is the only potential or proper Respondent, or that other (apparently different) registrants about which the parties, Center and Panel have been made aware by the responsible registrars can be disregarded on this basis. The Panel notes (as indicated also in WIPO Overview 2.0, paragraph 4.9, and cases cited therein) that most panels in cases involving privacy or proxy services in which disclosure of a so-called underlying registrant (or registrants) has occurred to take due account of both, or even to focus solely on the registrar-confirmed registrant. The Panel also notes that, even in cases where panels have upheld complainant elections to proceed in their Complaint formally against the privacy service only (see e.g. Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324), panels have still tended to take substantive account in their decisions of any registrar-confirmed registrants of record.

6. Whereas suspicion may be understandable concerning the privacy service at issue here in light of the findings in the earlier decision of WIPO Case No. D2011-2069, each case does fall to be decided on its own record, and this Panel does not find sufficient evidence of record in this case to support a finding that, for example, the other registrar-identified registrants of record in this case would be mere shams or ciphers of a single controlling registrant (such that, for example, the registrar’s identification of them could in effect be disregarded), or that all of the different registrants identified in this case would otherwise relate to one and the same entity (such as Mr. Goldstein, as was found to be the case in the earlier decision of WIPO Case No. D2011-2069). While this is possible, it is also possible that the three identified registrants in this case could be genuine and genuinely different domain name holders, which are merely using the same privacy service. The Panel finds that the Complainant has not provided evidence sufficient to tilt the balance in favor of either conclusion at this point. In the absence of such evidence, the Panel believes it is appropriate to proceed on the basis that the identified individual registrants are indeed genuine registrants for the purpose of this present dispute. In making this finding here, the Panel is of course mindful that there are many unhelpful uses to which a privacy service may be put, and that such services can greatly complicate the operation of the UDRP. The Panel is also mindful that the Policy was not designed to deal with such services, that there has been an absence of clear guidance from ICANN on their status and treatment for UDRP purposes, in effect leaving the distillation of applicable principles in this still developing area to UDRP parties, providers and panels (See e.g. WIPO Overview 2.0). However, the Panel is also mindful there are possible legitimate users and purposes to which privacy services can be put, and their use today, for better or worse, is wide-spread (e.g. ICANN has estimated the use of such services in up to 25% of domain name registrations). As such, this Panel does not presently see how identified registrants using such services (who have been confirmed by the responsible registrar as the registrant of record) could in the normal course of things be disregarded as interested parties in UDRP proceedings in which their domain names are under dispute. If there would be convincing evidence that such identified registrants were mere shams, and/or that the nominally different domain name registrations were in fact subject to the common control of a single domain name holder, such course could be considered in circumstances. But, as noted, the Panel sees insufficient evidence of record in this case to draw such a conclusion here.

7. Whereas the Panel can appreciate the potential attractiveness and apparent simplicity of, in effect, limiting the identification of a UDRP respondent to that entity or individual which appeared in the WhoIs at the time of Complaint filing, regardless of whether a privacy service was in use, such approach may present significant complications in practice. It would, for example, make no allowance for corrections, or identification by the responsible registrar of other registrants during subsequent phases of the process. It may contribute to depriving UDRP filing complainants of the benefit of information regarding the substantive identity of registrants about which they are seeking to make a case under the three elements UDRP, and potentially impact the ability of such registrants to receive notice and participate as parties to such disputes. It may contribute to the obscuring in published UDRP decisions of the true identity of registrants found to have engaged in previous instances of cybersquatting, enabling shielding behind privacy services in the published decision base. Arguably, it may come into conflict with section 3.7.7.3 of the Registrar Accreditation Agreement. It could potentially open the flood-gates to UDRP Complaints brought in respect of hundred or even thousands of disputed domain names, on the basis that a single privacy service appeared in the WhoIs on the date that the Complaint was filed, regardless of how many different registrants may in fact be identified by the responsible registrar during verification and in the public WhoIs, and regardless of the potential detriment to any beneficial interest or due process right to be heard such identified individual registrants may have. It may prompt questions about the extent to which a privacy service which the responsible registrar says is not the registrant in fact, would or could be regarded as having entered into the necessary registration agreement with the registrar which incorporates and provides for the application of the UDRP to the dispute. It may also contribute to enforcement difficulties in the event that a successful complainant would seek to implement a transfer or cancelation order against a registrant which the responsible registrar has indicated is in fact a different individual or entity. In any event, this Panel’s view at the present time is that the safer and more appropriate approach in UDRP cases involving privacy services in which the identification of a registrant (or registrants) different from the privacy service has occurred after the filing of the Complaint is generally to take due account of both.

8. Whereas in cases involving multiple domain names, where the registrar-identified registrants are themselves different from each other (as the Panel indicated in its earlier administrative panel order No. 1), an issue as to whether the proceeding is appropriate for consolidation will generally arise. In such cases, it generally falls to the complainant to demonstrate that the necessary criteria (see e.g. WIPO Overview, paragraph 4.16) for consolidation of such disputes into a single proceeding have been met. The Panel for its part is not aware of any prior authority for the proposition that merely using the same privacy service (though it may be relevant) would of itself suffice for this purpose.

9. Whereas it appears to the Panel on the present record that there are other parties in interest beyond the privacy service in this case, which the responsible registrar has identified as registrants to the provider and thereby to the parties and Panel and subsequently in the public WhoIs, the Complainant thus far not established any relationship between these identified registrants (other than the use of the same privacy service), or been able to show that each is very likely one and the same with the relevant privacy service (as it was apparently able to do in connection with certain of the different identified registrants in the above-discussed prior decision of WIPO Case No. D2011-2069).

10. Whereas the Panel does not exclude the possibility of such relationship, it is also possible that the apparently different identified registrants in the present case may be distinct and unrelated. The Complainant has not, for example, pointed to evidence of identified registrant commonality (other the use of the same privacy service) such as identical contact details, server location, IP address, website use, offers to sell, registrations in common with other relevant domain names, or the like. Nor is it clear to this Panel that any of the apparently different identified registrants in this present case would have a relationship with PrivacyProtect.org of the sort described by the panelist in the earlier-cited decision. If it would be the Complainant’s contention that this Panel should, in effect, find the privacy service identified in the WhoIs at the time of filing of the Complaint to be the sole proper Respondent, without any procedural or substantive regard to any of the other registrar-identified registrants of record, the Complainant has not identified any case jurisprudence which the Panel believes would support such contention. In any event, it does not seem to this Panel that the mentioned prior case of WIPO Case No. D2011-2069, decided as it was on quite particular facts (in which the privacy service and identified registrant were both considered to be proper Respondents, and were found to be related for quite particular reasons, including the former’s apparent registration of the domain name for the latter), could stand for a proposition of such potentially wide-reaching application. This Panel notes that the overwhelming weight of previous jurisprudence on this still developing subject, including that which is cited in the applicable paragraphs of the WIPO Overview 2.0 on the issue of treatment of privacy services, would appear to favor recognizing both the privacy service, and any timely identified registrants of record, as being appropriate to take into account in deciding the merits of such cases, whether formally named as Respondent(s) in the Complaint or not.

11. Whereas the Panel on the present record is disinclined to exclude consideration of those apparently different registrants who have been identified by the responsible registrar and (now) in the public WhoIs - or at least not to do so in the absence of evidence that these, and the relevant privacy service, are all very likely part and parcel of the same domain name holder - this Panel does not see a basis for finding PrivacyProtect.org to be the sole proper Respondent in these proceedings. This is not simply a pro forma matter, but rather one which could effectively require the Panel to consider the procedural and substantive merits of a single case as against multiple different registrants where no indicia of commonality between them (other than use of a single privacy service at the time a Complaint was filed) is in evidence. The UDRP was simply not designed for this.

12. Whereas the present Complaint does involve multiple disputed domain names, under the UDRP Rules the Complainant would ordinarily need to show that the holder of the disputed domain names is the same. For the reasons mentioned above, the Complainant has been unable to convince the Panel of this. Alternately, the Complainant would ordinarily need to show that (notwithstanding that the holders of record of all disputed domain names may not be the same) the case is nevertheless one that is suitable to be filed and decided on a consolidated basis, which under principles recognized by previous panels in relevant jurisprudence (see also WIPO Overview 2.0, paragraph 4.16, and cases cited therein) typically involves demonstrating that the domain names (or the websites to which they resolve) are subject to common control, and that consolidation of the disputes would be fair and equitable to all parties in the circumstances.

13. Whereas the Panel is not satisfied, for the reasons mentioned above, that the Complainant has succeeded in this respect either, or that the Complainant’s response to the Panel’s earlier order provides the Panel with a sufficient basis to find that the domain names or websites are in fact subject to common control, this Panel has taken judicial notice of an earlier panel decision, in the case of RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894.

14. Whereas this Panel finds the reasoning and approach described by the panelist in WIPO Case No. D2010-0894 in connection with privacy services and mitigation to be apt to the circumstances of the present dispute, and this Panel shares that earlier panel’s recorded concern about the risks of opening up “the prospect of a single set of proceedings being allowed to transform into what are in reality multiple proceedings against multiple parties. The UDRP is simply not designed to cope with this.”

15. Whereas this Panel finds - in the absence of evidence of connections among the disputed domain names (other than the use of a privacy service at the time of filing), or that the domain names are, in effect all held by the same domain name holder, or at least that the domain names (or websites) are subject to common control - that it would be appropriate, in the ordinary course of things, to order the present single proceedings to be “split”, such that there would need to be, in effect, a separate proceeding brought by the Complainant in connection with each of the three apparently different identified registrants of each of the three disputed domain names (the Complainant may also wish to include the relevant privacy service in connection with each such case).

16. Whereas this Panel finds circumstances of mitigation similar to those described by the panelist in WIPO Case No. D2010-0894, including in particular the inconvenience which may be caused by requiring the “splitting” and commencement of three fresh and separate proceedings, the work already invested by the Complainant, the Center, and the Panel in this matter, and the Panel’s assessment that, notwithstanding the lack of evidence of common control, it may in any event be procedurally efficient and fair to decide all three cases on an exceptional consolidated basis, provided that, as was the case in the earlier decision of WIPO Case No. D2010-0894, the Complainant (and the Respondents, should they now wish to comment) would be agreeable to the presently appointed Panel to decide the merits of the Complainant’s case as against each different Respondent, in what would for convenience remain formally a single set of proceedings.

17. The Panel hereby orders:

a. The Complainant shall by no later than 6:00 pm GMT on April 2, 2012, indicate the Complainant’s preference for, either:

i. the present proceedings to be formally “split” into three separate sets of proceedings, one each in respect of each disputed domain name, with the substantive merits of one to be decided by the presently appointed panel, and the other two by panels to be appointed for that purpose; or

ii. the present proceedings to remain formally as a single set of proceedings, with the presently appointed Panel proceeding to decide the substantive merits in respect of each of the three different Respondents, in a single issued decision covering all three cases.

b. Either party is permitted, but (other than in connection with paragraph a. above) is not required to file a submission by email with the Center by no later than 6 pm GMT on April 2, 2012, addressing any of the matters identified in the recitals to this order.

c. If any party would have any objection it wishes to be taken into account in connection with the option contemplated in paragraph a.ii above, it should be lodged by email with the Center by no later than 6 pm GMT on April 2, 2012.

d. The Panel hereby extends the time by which a decision (or, if necessary, any further order that may be required, for example in connection with giving effect to the option contemplated in paragraph a.i. above) shall be issued in these proceedings until April 9, 2012.”

The Complainant sent its response to Panel Order No. 2 on March 30, 2012, confirming its willingness to go forward with the matter as three separate proceedings, with the appointed Panel issuing a single decision to resolve the dispute concerning the three disputed domain names. The Complainant also submitted that i) the proper Respondent for purposes of determining whether to proceed as a single proceeding is the party listed as the registrant at the time the Complainant is filed, not that which is substituted by the registrars post-filing; and ii) the Complainant has never objected to PrivacyProtect.org’s underlying client’s appearance and has copied those clients on all correspondence relating to this proceeding since their identities were revealed; notably, notwithstanding having been given repeated notice of this proceedings, none of PrivacyProtect.org’s clients have elected to submit a response or otherwise appear.

Based on the indications provided by the Complainant in its response to Panel Order No. 2, these proceedings continue as three separate sets of proceedings, for which a single consolidated decision shall be rendered.

As a final remark on the procedural issues, the Registrar of the disputed domain name <aaadiscoverbank.com>, Power Brand Center Corp., sent a communication by email to the Center on April 3, 2012, stating that “The domain has been unlocked and moved into our secure registrar holding account pending transfer to the registrar of your choice. This domain is also out of the control of the losing registrant” and providing the information required to start the transfer the domain name. The Center replied to the Registrar, on the same day, stating: “Dear Power Brand Center Corp., We acknowledge receipt of your email communication below of April 3, 2012, which will be forwarded to the Panel for its consideration. We kindly request you to confirm that the domain name is currently under registrar lock and will remain so for the pendency of these proceedings”. Although no such confirmation from the Registrar appears to have been forthcoming, the Panel wishes to make clear that it regards the decision reached in this case and the order made and recorded below under paragraph 7 of this Decision as applicable to <aaadiscoverbank.com> regardless of its present registration or lock status.

4. Factual Background

The Complainant is a United States company which 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 is the owner of several trademark registrations consisting in or including the AAA mark in the United States, including the United States trademark Nos. 829,265 (word), registered on May 23, 1967, in international classes 35, 36, 37, 39, 41 and 42 (covering also “Arranging for discount purchases”; “collecting damage claims”; and “placing insurance with underwriters”); and 2,158,654 (word and design), registered on May 19, 1998, in International classes 16, 35 (for “arranging for discount purchases”), 36 (for many services, including “financial services”, “banking services”, “adjusting and collecting insurance damage claims” and “credit card and auto loan services”), 37, 39 (including “travel agency services”) and 42.

The Complainant is also the owner of national trademark registrations in many countries of the world, including Canada (trademark registration No. TMA430671 for AAA), Chile (trademark registration 767508 and 859785), European Community (trademark registration No. 3821378 for AAA) and India (trademark registration Nos. 1421437 and 1275532 for AAA).

Furthermore, the Complainant owns the United States trademark No. 2,120,266 for AAA VACATIONS, registered on December 9, 1997, in International classes 39 (for “Arranging travel tours and vacations”) and 42 (for “making reservation and bookings for temporary lodging”); and 3,309,836, registered on October 9, 2007, in International classes 39 (for “travel agency services, namely making reservations and bookings for tours and cruises”) and 43.

The disputed domain name <aaadiscoverbank.com> was registered on August 27, 2009 and has been pointed to a parking page displaying pay-per-click advertising credit card, banking, and other financial services.

The disputed domain name <aaanitstravels.com> was registered on April 9, 2011 and has been pointed to a web site advertising travel services apparently offered by an Indian entity allegedly named “New International Travel Services”.

The disputed domain name <aaatours.net> was registered on November 13, 2011 and was pointed to a parking page with pay-per-click advertisements for, among others, vacation packages and travel deals offered by the Complainant’s competitors. At the time of the filing of the Complaint and of the drafting of the present decision, the disputed domain name was and is not pointed to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s AAA Marks, since they are comprised of the combination of the trademark AAA with the addition of generic terms, abbreviations and other registered trademarks which are apt to increase consumer confusion about the source of the services tied to the disputed domain names.

The Complainant highlights that the combination of the terms “travels” and “tours” in the disputed domain names <aaanitstravels.com> and <aaatours.net> heightens consumer confusion about the source of the services tied to the disputed domain names because the Complainant is well known for providing travel and vacation services to its members and the public. The Complainant also informs the Panel that it partnered with Discover Bank to offer consumers investment and banking services through a website hosted by the third level domain name <aaa.discoverbank.com> and states that, by combining the trademark AAA with the words “discover bank”, consumers are mislead into believing that the pay-per-click parking page associated with <aaadiscoverbank.com> is operated or endorsed by the Complainant.

With reference to rights or legitimate interest in the disputed domain names, the Complainant states that it has not licensed or authorized the Respondents to use its trademarks in connection with its business or as part of the disputed domain names and that the Complainant has made a prima facie showing that Respondents lack rights in the disputed domain names. The Complainant also states that there is no evidence that the Respondents are commonly known by any of the disputed domain names and that the Respondents’ use of the disputed domain names to attract users to its web sites by creating confusion with Complainant’s famous trademarks is not a bona fide use of the disputed domain names.

The Complainant highlights that the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate non commercial or fair use since the Respondents are making commercial use of the disputed domain names <aaatours.net> and <aaadiscoverbank.com> by its past and current use of them to host parking sites with pay-per-click links for services offered by the Complainant and its competitors.

Regarding the disputed domain name <aaanitstravels.com>, the Complainant points out that the associated website appears to advertise a sham business, since eight of the eleven most prominent links on the homepage, including links for descriptions of specific tours, rates for those purported tours, and contact information, resolve to pages that do not exist. Also, a search on the Government of India’s Ministry of Corporate Affairs on-line database did not produce any results for “NITS Travels” or “New International Travel Services,” for which “NITS” purportedly stands. The Complainant also states that, even if the Respondents had rights in “New International Travel Services” or “NITS,” neither their business name or the acronym for their business name legitimately incorporate the Complainant’s trademark. The Complainant concludes that these circumstances suggest that Respondents are using the famous AAA trademark for the sole purpose of driving traffic to its website.

With reference to the bad faith requirement, the Complainant states that the Respondents registered the disputed domain names in bad faith to attract Internet users to websites competing with the Complainant and to websites providing pay-per-click links to other sites promoting also the activity of the Complainant’s competitors, in violation of paragarph 4(b)(iv) of the Policy. The Complainant highlights that the Respondents are creating a likelihood of confusion for Internet users as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites.

The Complainant also states that the Respondents’ registration and use of domain names confusingly similar to the Complainant’s trademarks, without any legitimate interest in the disputed domain names, constitutes disruption of the Complainant’s business and is further evidence of bad faith registration under paragraph 4(b)(iii) of the Policy.

In addition, the Complainant contends that the Respondents had actual or constructive knowledge of the Complainant’s trademarks, based on their United States and international registrations and their substantial fame in the United States and abroad.

The Complainant also indicates that the Respondents’ current passive holding of the disputed domain names <aaatours.net> and the history of registering domain names that infringe third parties’ trademark rights in violation of the UDRP regarding PrivacyProtect.org is a further evidence of bad faith.

B. Respondents

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

6. Discussion and Findings

A. Proper Respondents

As mentioned above, the Complainant identified as Respondent in its Complaint PrivacyProtect.org, which was indicated as the registrant of the disputed domain names at the time of the filing of the Complaint. According to the registrar verification response transmitted to the Center, on December 18, 2011, by Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, the registrant of the disputed domain name <aaanitstravels.com> is Tarun Kumar of Delhi, India, and the registrant of <aaatours.net> is Publishier LLC, of Newport Beach, California, United States of America. On December 21, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response stating that the registrant of <aaadiscoverbank.com> was Domain Tech Enterprises, of Santiago, Chile.

As discussed under Procedural History, the Center sent a communication to the Complainant on December 23, 2011, providing the registrant and contact information for the underlying registrants as disclosed by the registrar, and inviting the Complainant to amend the Complaint accordingly. On the same day, the Complainant transmitted an email communication to the Center, declining to amend the Complaint on the grounds that i) the relevant WhoIs records relied upon by the Complainant (dated December 14, 2011) indicated PrivacyProtect.org, as the respective registrant and ii) PrivacyProtect.org fails to provide a working postal address or contact number in the WhoIs registry and refuses to accept postal mail, in violation of the ICANN Registrar Agreement, which rules that WhoIs information must be usable for communication purposes in a Policy proceeding and if they are not, the registrant, whoever they may be, must expect to bear any consequences.

As highlighted above, the WhoIs database records for the disputed domain names as shown after the Center’s request for registrar verifications indicate that the registrant of <aaadiscoverbank.com>, <aaanitstravels.com> and <aaatours.net> are the three different named entities Domain Tech Enterprises of Santiago, Chile, Tarun Kumar of Delhi, India, and Publishier LLC, of Newport Beach, California, US, respectively.

The Complaint has been filed against PrivacyProtect.org, which was listed as registrant of the disputed domain names at the time of the filing of the Complaint. The Panel notes that the UDRP and the Rules do not contemplate the use of privacy or proxy registration services per se. Regardless, as indicated in the WIPO Overview 2.0, “there is wide recognition among panels that a complainant or provider who has correctly sent a UDRP case-communication to the WhoIs-listed registrant of record for a disputed domain name will (at least in the absence of better information) normally have discharged its communication responsibility under the UDRP Rules”.

However, as indicated also in WIPO Overview 2.0, paragraph 4.9 and mentioned in Panel Order No. 2, most panels in cases involving privacy or proxy services in which disclosure of a so-called “underlying registrant” (or registrants) has occurred, have taken due account of both, or even focused solely on the registrar-confirmed registrant. Moreover, even in cases where panels have upheld complainant elections to proceed in their complaint formally against the privacy service only, panels have still tended to take substantive account in their decisions of any registrar-confirmed registrants of record (see e.g. Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324).

As mentioned above, this Panel does not find sufficient evidence of record to support a finding that, for example, the other registrar-identified registrants of record in this case would be mere shams or ciphers of a single controlling registrant (such that, for example, the registrar’s identification of them could in effect be disregarded), or that all of the different registrants identified in this case would otherwise relate to one and the same entity (such as Mr. Goldstein, as was found to be the case in the earlier decision of WIPO Case No. D2011-2069). While this is possible, it is also possible that the three identified registrants in this case could be genuinely different domain name holders, which are merely using the same privacy service. The Panel finds that the Complainant has not provided evidence sufficient to tilt the balance in favor of either conclusion at this point. In the absence of such evidence, the Panel believes it is appropriate to proceed on the basis that the identified individual registrants are indeed different registrants for the purpose of this present dispute.

As such, this Panel does not presently see how identified registrants using such services (who have been confirmed by the responsible registrar as the registrant of record) could in the normal course of things be disregarded as interested parties in UDRP proceedings in which their domain names are under dispute. (In making this observation, the Panel is not suggesting that this has been requested by the Complainant, and indeed the Panel has noted the Complainant’s submissions that it has no objections to the appearance of Privacy Protects’ underlying clients and has copied them on relevant correspondence since their identities were revealed , and that no response from the has been received.) In practical terms it would seem to this Panel that such identified registrants would therefore need to be considered as being among the appropriate Respondents in this case, except perhaps in circumstances where it would be clear that their existence is mere sham. If there would have been convincing evidence of record here that such identified registrants were mere shams, and/or that the nominally different domain name registrations were in fact subject to the common control of a single domain name holder, perhaps their identification and relevance could have been, to some extent, set aside in that light. But, as noted, the Panel sees insufficient evidence of record in this case to draw such a conclusion here.

As stated in RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894, in cases where proceedings have been commenced in relation to multiple domain names registered with a single privacy service that in response to a verification request reveals that there is more than one underlying registrant, the panel must assess the possibility to consolidate the disputed domain names into one single proceeding according to paragraph 3(c) of the Rules, which state that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.

The Panel in this case requested the Complainant, in Panel Order No. 1, to provide the Panel “with evidence of the connections among the disputed domain names (besides the use of the same privacy service offered by PrivacyProtect.org) which could be evaluated by this Panel in order to determine whether the proceedings could continue as a single consolidated proceeding”, but, in the Complainant’s response to Panel Order No. 1, it did not provide any evidence of a possible relationship or commonality between the disclosed underlying registrants in the present case, or between each of those entities and PrivacyProtect.org.

The Panel has reviewed the earlier finding in The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069 cited by the Complainant, and finds that the circumstances in that proceeding were different from the present case. In particular, the Panel notes that the privacy service in the WhoIs at the time of filing of the complaint was considered as one, but not the only, proper respondent, and that the two co-respondents Privacy--Protect.org - the privacy service listed as registrant in the WhoIs at the time of filing, including at the time of decision - and Issac Goldstein, the underlying registrant, although not listed as such in the WhoIs - were found to be related, while evidence such circumstances in the present case appears to be still lacking.

The Panel finds that, in the absence of evidence of connections among the disputed domain names (other than the use of a privacy service at the time of filing), or that the domain names are, in effect all held by the same domain name holder, or at least that the domain names (or websites) are subject to common control - it would be appropriate, in the ordinary course of things, to order that the present single proceeding be “split” (See, amongst others, General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834), such that there would need to be, in effect, a separate proceeding brought by the Complainant in connection with each of the three apparently different identified registrants of each of the three disputed domain names (the Complainant may also wish to include the relevant privacy service in connection with each such case).

Additionally, the Panel has also considered that the Rules give the panel power to conduct proceedings in such manner as it considers appropriate in accordance with such Rules and the UDRP and that the panel must ensure due expenditure of the proceeding.

In view of the circumstances of the present case, in which all the underlying registrants have been notified of the Complaint, all of them are in default and the Complainant provided in its Complaint sufficient evidence for issuing a decision, the Panel then found appropriate to propose to the Complainant, should it have been unable to provide evidence of the connection among the underlying registrants, to continue the present case as, in effect, three separate proceedings, providing for the payment of the supplemental fees for the two additional separate proceedings, and leaving open the option for the same Panel to determine the merits of each.

The Panel has found circumstances of mitigation similar to those described by the panelist in RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894, including in particular the inconvenience which may be caused by requiring the “splitting” and commencement of three fresh and separate proceedings, the work already invested by the Complainant, the Center, and the Panel in this matter. In view of these circumstances, the Panel has found it could have been procedurally efficient and fair to decide all three cases on an exceptional consolidated basis, provided that, as was the case in the earlier decision of WIPO Case No. D2010-0894, the Complainant and the Respondents, would be agreeable (or at least not object) to the presently appointed Panel deciding the merits of the Complainant’s case as against each different Respondent, in what would for convenience remain formally a single set of proceedings.

Since the Complainant, pursuant to Panel Orders Nos. 1 and 2, has indicated it would be agreeable to the present proceedings remaining formally as a single set of proceedings, with the presently appointed Panel proceeding to decide the substantive merits in respect of each of the three different Respondents, in a single issued decision covering all three cases, and no objection (or indeed any response) has been received from any Respondent to this option, the Panel will now proceed to issue its reasoned decision, including to address its main findings in respect of these three sets of proceedings and to record an order in respect of each of the three Respondents and disputed domain names (see paragraph 7 below).

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 trademark 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.

A. Identical or Confusingly Similar

The Panel finds that the three disputed domain names, registered by each of the three Respondents, are each confusingly similar to the trademarks owned by the Complainant.

It is well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature. See inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).

More in particular, the words “travels” and “tours” added to the trademark AAA in the disputed domain names <aaanitstravels.com> and <aaatours.net> are particularly apt to increase the likelihood of confusion with the Complainant as they describe Complainant’s services.

See, along these lines, the following prior UDRP decisions involving the Complainant, in which the disputed domain names were found confusingly similar to the Complainant’s trademark AAA: The American Automobile Association, Inc. v. Rami Smair, WIPO Case No. D2009-0294 (<aaa-insurance.info>, <insurance-aaa.com> and <insurance-aaa.info>); American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489 (<aaaautomotive.com>); The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931 (<aaaautorewards.com>).

The disputed domain name <aaadiscoverbank.com> includes the Complainant’s trademark along with the trademark DISCOVER BANK owned by Discover Bank, with which the Complainant partnered to offer investment and banking services through a web site hosted by the third level domain name <aaa.discoverbank.com>.

As stated in many panel decisions, the inclusion of the trademarks of other parties in the disputed domain name does not detract from the confusing similarity. See, along these lines, Chevron Corporation v Young Wook Kim, WIPO Case No. D2001-1142 (<chevron-texaco.com>); Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 (<viagra-propecia-xenical.com>); F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold), WIPO Case No. D2007-1699 (<1-stop-viagra-zyban-xenical-shop.com>).

In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that each Respondent has no rights or legitimate interests in respect of the disputed domain name, registered by each. Each Respondent may establish a right or legitimate interest in tits respective disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) before any notice to the Respondents of the dispute, the Respondents’ use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondents (as an individual, business, or other organization) have been commonly known by the domain name, even if the Respondents have acquired no trademark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is well-established that the burden of proof lies with the Complainant. However, satisfying the burden of proving a lack of a respondents’ rights or legitimate interests in respect of a disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with prior UDRP decisions, it is sufficient that the Complainant show a prima facie case that the respective respondents lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the relevant respondent. If the respondent fails to demonstrate rights or legitimate interests in their disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003 0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. FA0611000852581).

In the case at hand, by not submitting any Response, none of the Respondents have succeeded in rebutting the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in their respective disputed domain names.

Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between any of the Respondents and the Complainant. The Respondents are not licensees of the Complainant, nor have the Respondents otherwise obtained an authorization to use the Complainant’s trademark.

Moreover, the Panel finds that none of the Respondents, whose true identity was obscured by the privacy shield, has shown that it is commonly known by its respective disputed domain name as stated in Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435. See along these lines Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743, in which the Panel has stated that “Here, the Respondent MSA either used a domain privacy service that did not reliably forward communications about alleged infringement, or else the Respondent MSA simply disregarded such communications when they were forwarded. In either case, this reflects a cavalier attitude toward the rights of others that is contrary to the spirit of the registration agreement and suggests bad faith in the registration and use of the Domain Name. It also suggests that a motive for using a domain privacy service in this instance was to increase the difficulty for a trademark owner of identifying the registrant, assessing the merits of a legal claim or Policy complaint, and contacting the registrant, which does not reflect good faith”.

Furthermore, there is no indication before the Panel that any of the Respondents have made preparations to use their disputed domain name in connection with a bona fide offering of goods or services, or that they intend to make a legitimate, non-commercial or fair use of such disputed domain name.

The Complainant has provided evidence showing that the disputed domain names <aaatours.net> and <aaadiscoverbank.com> have been pointed to sponsored pay-per-click websites mainly aimed at directing visitors to competing third party commercial websites.

The Panel finds that under the circumstances the use of the disputed domain names merely for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, non commercial use of the disputed domain names under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.

Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the panel stated that “ […] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name <bilfinger.com>] is only used as a link to a generic directory […]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.

See also inter alia Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the Domain Name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the Domain Name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”

The disputed domain name <aaanitstravels.com> is pointed to a web page where the travel services of an entity named “New International Travel Services” are advertised. In light of the fact that the main links published on the site do not direct users to any other website and in the absence of any evidence showing that New International Travel Services might be an existing company, the Panel agrees with the Complainant that the website is probably a sham. In any case, the use of the disputed domain name <aaanitstravels.com>, confusingly similar to the trademark AAA, used by the Complainant for providing also travel services, to advertise competing travel services cannot be considered constitute a legitimate non-commercial or fair use of the disputed domain name.

Thus, in light of the above, the Panel finds that none of the Respondents have rights or legitimate interests in respect of their disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As to bad faith at the time of the registration, the Panel notes that, in light of the well known character of the Complainant’s trademark, recognized also in many prior UDRP decisions. See, inter alia, American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489; The American Automobile Association Inc. v. AAA-Vacationsunlimeted, WIPO Case No. D2009-0373; The American Automobile Association Inc. v. PerkinsPestControl c/o Del Rich and 1 & 1 Internet Inc., WIPO Case No. D2009-1379 (finding as further evidence of bad faith that “Complainant’s rights in its marks are well-established and well-known throughout the United States and in other parts of the world”), and considering the fact that the disputed domain names <aaanitstravels.com> and <aaatours.net> combine the Complainant’s trademark AAA with terms which describe the Complainant’s services and <aaadiscoverbank.com> is substantially identical to the third level domain under which the website operated by Discover Bank, with which the Complainant has partnered, each Respondent was more likely than not aware of the Complainant’s trademark when it registered the relevant disputed domain names.

The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

The Panel finds that Internet users, in light of the contents of the websites which have been linked to the disputed domain names <aaatours.net> and <aaadiscoverbank.com>, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondents’ web sites. Moreover, in all likelihood, the Respondents have profited by earning pay per click revenues. See inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286.

The disputed domain name <aaatours.net> is, at the time of the drafting of the decision, passively held. As also established in a number of prior cases the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003

With reference to the disputed domain name <aaanitstravels.com>, the Panel finds that, since the disputed domain name is pointed to a website which provides travel services, the registration of the disputed domain name interferes with the Complainant’s business and Internet users are likely to be misled on the source, sponsorship, affiliation, or endorsement of the corresponding website. See inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin WIPO Case No. D2007-0286).

As an additional circumstance evidencing bad faith, the disputed domain names were registered using a privacy service which provides incomplete contact information. As stated, inter alia, in The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069, “Whereas the use of a privacy or proxy registration service is not in itself an indication of bad faith, 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”. Furthermore, also the registration information provided with reference to the disputed domain name <aaanitstravels.com> are incomplete, since, according to the WhoIs records, the Respondent Tarun Kumar is based in Delhi, India, but the street and street number have been omitted.

As a further evidence of bad faith with reference, numerous prior UDRP decisions were issued against PrivacyProtect.org and Domain Tech Enterprises, recognizing those Respondents’ bad faith registration and use of domain names confusingly similar to registered trademarks. See, inter alia, LEGO Juris A/S v. Domain Tech Enterprises, WIPO Case No. D2011-2286; Aktiebolaget Electrolux v. PrivacyProtect.org / Domain Tech Enterprises, WIPO Case No. D2011-1988; LEGO Juris A/S v. Domain Tech Enterprises/ PrivacyProtect.org, WIPO Case No. D2011-1643; Wikimedia Foundation Inc. v. PrivacyProtect.org / Domain Tech Enterprises, WIPO Case No. D2011-1591.

As a final remark, there has (as noted) been no Response from any Respondent and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.

Therefore, the Panel finds that the Complainant has, in respect of each Respondent and their respective disputed domain name, proven that the domain names at issue in the present dispute were registered and are being used in bad faith.

7. Decision

7.1 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 <aaatours.net> be transferred to the Complainant.

7.2 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 <aaadiscoverbank.com>, be transferred to the Complainant.

7.3 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 <aaanitstravels.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Dated: April 20, 2012

 

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