WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. InTrust Domains
Case No. D2012-1633
1. The Parties
The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
The Respondent is InTrust Domains of Falcon, Colorado, United States of America.
2. The Domain Name And Registrar
The disputed domain name <aaa-ga.com> (the “Domain Name”) is registered with 3597245 Canada Inc. dba Nic-Name Internet Service Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 14, 2012. On August 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 15, 2012, the Registrar 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 August 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2012. The Center received email communications from the Respondent on August 17 and 28, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on September 13, 2012.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 19, 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
The Complainant is a non-stock corporation organized under the laws of the State of Connecticut and headquartered in the State of Florida. It is a federation of affiliated nonprofit automobile clubs, which collectively provide travel, automotive, and insurance services to more than 50 million members in the United States. The Complainant operates a website at “www.aaa.com”.
The Complainant claims use of the AAA mark since 1902. In addition to AAA standard-character or design marks registered in many other countries, the Complainant owns the following United States registered trademarks:
US Reg. No.
May 23, 1967
AAA (standard characters)
May 19, 1998
AAA (word and design)
Oct. 23, 2007
AAA (word and design)
Courts and UDRP panels have found that the AAA marks are well-known and long established, particularly in the United States where the Respondent in this proceeding is located. See, e.g. American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489 (the AAA Marks “are widely recognized by consumers in the United States and abroad and they have acquired significant goodwill as identifying the products and services of Complainant and its local member clubs”); American Automobile Association, Inc. v. AAA Insurance Agency, Inc. 618 F. Supp. 787, 790 (W.D. Tex. 1985) (“AAA is a widely known organization that has been extensively advertised and promoted throughout the United States. . . . [T]he ‘AAA’ name has come to be relied upon by a significant segment of the public as indicating AAA and its services.”); American Automobile Association, Inc. v. AAA Automobile Club of Queens, Inc., No. 97 CV 1180, 1999 WL 97918, at *5 (E.D.N.Y. Feb. 8, 1999) (“[T]he AAA Marks strongly indicate the source of the services provided and are therefore entitled to the greatest degree of protection under the Lanham Act.”).
The Respondent appears in the InterNIC directory of accredited domain name registrars. However, the domain name <intrustdomains.com> resolves as of the date of the decision in this case to a message informing visitors that “IntrustDomains Registry Services are now part of Epik!” and then redirects visitors to the website operated by Epik, another InterNIC accredited registrar that offers domain name registration and management services.
The Domain Name was registered on April 11, 2012. As evidenced by screenshots furnished with the Complaint, in August 2012 the Domain Name resolved to a parking website that offered the Domain Name for sale and displayed “sponsored” pay-per-click (“PPC”) advertising links for commercial websites, all of them concerning automobile sales or automotive accessories, as well as links to the Complainant’s website. The Respondent did not reply to two cease-and-desist letters sent by the Complainant’s representative, and the Respondent did not submit a formal Response in this proceeding.
The Domain Name does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant asserts that the Domain Name incorporates the Complainant’s AAA standard-character trademark in its entirety and adds the letters “GA”, which is the common abbreviation for the United States State of Georgia, and is therefore confusingly similar to its registered AAA trademarks. The Complainant states that it has not authorized the Respondent to use the AAA trademark and has discovered no rights or legitimate interests of the Respondent in using the Domain Name for a PPC website.
The Complainant infers that the Respondent registered and is using the Domain Name in bad faith, seeking to misdirect Internet users for commercial gain and to disrupt the Complainant’s business.
The Respondent did not formally reply to the Complainant’s contentions, but did indicate in an email of August 28, 2012 to the Center that it is “happy to transfer this domain to the complainant”.
6. Discussion And Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall 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.”
A. Identical or Confusingly Similar
The Complainant indisputably holds registered AAA trademarks. The Domain Name consists of the same sequence of letters, separated by a hyphen from the letters “ga”. The addition of these letters does not avoid confusion with the Complainant’s well-established trademark, especially since “ga” is the common abbreviation for the State of Georgia to this Panel, where an affiliate of the Complainant operates.
The Panel finds that the Domain Name is confusingly similar to the AAA trademark for purposes of the first element of the Complaint, which is essentially a “low-threshold” standing requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2, and cases cited therein.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing. See WIPO Overview 2.0, paragraph 2.1 (and cases cited therein). The Panel finds the Complainant has done so in this case, with evidence that its trademark is distinctive and well-known in the United States, where the Respondent is located.
The Policy, paragraph 4(c), includes a non-exhaustive list of circumstances demonstrating rights or legitimate interests in a domain name, including the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights . . .”
The Respondent has not come forward in this proceeding with any claims of rights or legitimate interests in the Domain Name. There is no evidence in the record that the Respondent has been known by a name corresponding to the Domain Name or that it has made demonstrable preparations to use the Domain Name for a bona fide offering of goods or services. Instead, the Respondent has offered the Domain Name for sale and used it for commercial PPC links to third parties, at least some of which appear to offer services to automobile owners (such as automobile and travel information, insurance, and roadside assistance) that compete with those offered by the Complainant and its affiliated automobile clubs. This does not represent use in connection with a bona fide offering of goods or services. See WIPO Overview 2.0, paragraph 2.6.
Accordingly, the Panel finds that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), includes a non-exclusive list of circumstances that are considered evidence of bad faith in the registration and use of a domain name, two of which are cited by the Complainant:
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent itself does not appear to be a competitor of the Complainant, and the Panel does not find persuasive evidence that the Domain Name was registered primarily to disrupt the Complainant’s business.
The Panel does find it probable, however, that the Domain Name was chosen, advertised for resale, and used for PPC advertising primarily because of the fame of the Complainant’s AAA trademarks. The record is clear that these registered trademarks are well-known to the general public in the United States and are associated with automobile ownership. Moreover, it is telling that while the generic words “auto” or “automobile” do not appear in the Domain Name, the PPC website to which the Domain Name formerly resolved displayed only automobile-related links. The Respondent may have selected the automotive category for these links, or the ad-server software may have selected them automatically because of a strong statistical correlation between the Complainant’s AAA trademark and consumer interest in automotive websites. In either case, this would further demonstrate the value of the trademark in association with automobile ownership, which supports the reasonableness of the inference that the Domain Name was chosen for its trademark rather than generic value, in an effort to mislead Internet users for commercial gain.1
The presumption of bad faith is reasonable in these circumstances, and the Respondent has not submitted a Response offering an alternative explanation. Accordingly, the Panel finds that the third element of the Complaint has been established.
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, <aaa-ga.com>, be transferred to the Complainant.
W. Scott Blackmer
Dated: October 3, 2012
1 The Panel notes that in an earlier UDRP proceeding the same Respondent was similarly found to have registered and used a domain name incorporating a distinctive and well-known trademark in bad faith. See Revlon Consumer Products Corporation v. Domain Admin, InTrust Domain Names, WIPO Case No. D2010-1933.