World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The American Automobile Association, Inc. v. Samuel Yudin

Case No. D2011-2322

1. The Parties

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

Respondent is Samuel Yudin of Seal Beach, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <aaadiscountfinder.com> is registered with GoDaddy.com, LLC .

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2011 . On January 3, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On January 10, 2012 , GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2012 . In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 3, 2012.

The Center appointed Sandra J. Franklin as the sole panelist in this matter on February 8, 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. Factual Background

Complainant is a well-known provider of insurance, travel, automobile, and discount services, offered under its AAA mark since 1902. Complainant owns many trademark registrations for and including AAA, registered with the United States Patent and Trademark Office (“USPTO”).

Respondent registered the <aaadiscountfinder.com> domain name (“the disputed domain name”) on January 18, 2011 , and uses it to redirect to the website “www.militarydiscountfinder.com”, which sells advertising space for auto, travel and discount deals. Previously the disputed domain name resolved to a parked page with links to direct competitors of Complainant.

5. Parties’ Contentions

A. Complainant makes the following assertions:

1. the disputed domain name is confusingly similar to Complainant’s AAA mark.

2. Respondent does not have any rights or legitimate interests in the disputed domain name.

3. Respondent registered and used the disputed domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

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

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

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

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

A. Identical or Confusingly Similar

The Panel finds that Complainant has established rights in the AAA mark for purposes of Policy, paragraph 4(a)(i) through its trademark registrations. See Enterprise Rent-A-Car Company v. David Mizer Enterprises Inc., NAF Claim No. 622122 (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy, paragraph 4(a)(i)); see also Disney Enterprises, Inc. v. Paul Kudrna c/o The Finest Group, NAF Claim No. 686103 (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy, Paragraph 4(a)(i)).

The disputed domain name is confusingly similar to Complainant’s AAA mark, as it merely adds the generic top-level domain (“gTLD”) “.com” along with generic terms. Prior UDRP panels have found that the addition of a gTLD does not affect whether a domain name is identical to a complainant’s mark. See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, NAF Claim No. 102724 (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”.)

The Panel finds that Respondent’s addition of the terms “discount” and “finder” fails to distinguish the disputed domain name from Complainant’s mark. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525 (finding that the generic term “INC” does not change the confusing similarity); see also The Gillette Company v. RFK Associates., NAF Claim No. 492867 (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).

The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant alleges that Respondent does not have any rights and legitimate interests in the <aaadiscountfinder.com> domain name. Pursuant to Policy 4(a)(ii), Complainant is required to make a prima facie case in support of these allegations. The panels in Intel Corporation v. M. Macare aka M. Macar, NAF Claim No. 660685,and Domtar Inc. v. Joel Theriault., NAF Claim No. 1089426, found that when the complainant establishes a prima facie case in support of its assertions, the burden of proof shifts to respondent to establish rights and legitimate interests in the domain name at issue. The Panel finds that Complainant has produced a prima facie case, but Respondent has not submitted a Response in this matter. The panels in American Express Company v. Fang Suhendro aka American Express Indonesia, NAF Case. No., and America Online, Inc. v. AOL International, WIPO Case No. D2000-0654, found that a respondent that does not respond is presumed to lack rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy, paragraph 4(c).

Complainant argues that Respondent is not commonly known by the disputed domain name and Complainant has not given Respondent permission to use the AAA mark. The WHOIS information identifies “Samuel Yudin” as the registrant of the disputed domain name, and there is no other evidence on record that Respondent is commonly known by the disputed domain name. The panels in IndyMac Bank F.S.B. v. Grant Eshback d/b/a eMit Mortgage Inc, NAF Claim No. 830934, and The Braun Corporation v. Wayne Loney, NAF Claim No. 699652, found that where a respondent was neither authorized to use the mark at issue nor appeared to be commonly known by the disputed domain name, such a respondent lacks rights and legitimate interests in the domain name at issue. This Panel similarly finds here that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy, paragraph 4(c)(ii).

Respondent is using the disputed domain name to resolve to a parked website containing various third-party links to competing and unrelated companies. The Panel finds that Complainant has shown that Respondent is not using or preparing to use the disputed domain name for a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy, paragraph 4(c)(iii). See Bank of America Fork v. Jingyang Shen, NAF Claim No. 699645 (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy, paragraph 4(c)(i)); see also Disney Enterprises, Inc. v. Dayanand Kamble,NAF Claim No. 918556 (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy, paragraph 4(c)(iii)).

The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant has presented evidence to show that Respondent is using the disputed domain name to resolve to a website containing various third-party links, some of which are competing with Complainant. The Panel finds that Respondent’s diversion of Internet users to these competing companies results in bad faith disruption of Complainant’s business under Policy, paragraph 4(b)(iii). See Tesco Personal Finance Ltd. v. Domain Management Services, NAF Claim No. 877982 (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy, paragraph 4(b)(iii)); see also David Hall Rare Coins v. Texas International Property Associates, NAF Claim No. 915206 (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy, paragraph 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

Further, Respondent is no doubt compensated for its usage of the domain name as a links directory, a direct result of the confusion caused from its registration and use of the confusingly similar domain name. Therefore, the Panel finds that Respondent has registered and used the domain name in bad faith pursuant to Policy, paragraph 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, NAF Claim No. 697821 (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy, paragraph 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, NAF Claim No. 937704 (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy, paragraph 4(b)(iv)).

Finally, Complainant also contends that Respondent registered and used the disputed domain name with actual or constructive knowledge of Complainant and its rights in the AAA mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the panels in Deep Foods, Inc. v. Jamruke, LLC c/o Manish Patel, NAF Claim No. 648190, and Yahoo! Inc. v. Craig Butler, NAF Claim No. 744444, found that a panel may nonetheless find that a respondent registered and is using a disputed domain name in bad faith under Policy, paragraph 4(a)(iii) if the respondent is found to have had actual notice of the complainant’s trademark rights. Due to Complainant’s long-standing use of the AAA mark, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the AAA mark, which is further evidence of bad faith registration and use pursuant to Policy, paragraph 4(a)(iii).

The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <aaadiscountfinder.com> be transferred to the Complainant.

Sandra J. Franklin
Sole Panelist
Dated: February 15, 2012

 

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