WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association Inc. v. Sompop Padungkijjaroen
Case No. D2012-2168
1. The Parties
The Complainant is The American Automobile Association Inc., Florida, United States of America, represented by Covington & Burling, United States of America.
The Respondent is Sompop Padungkijjaroen, Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <aaa-hotel-discounts.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2012. On November 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 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.
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 November 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 27, 2012.
Three brief emails were received from the Respondent on November 9 and 10, 2012 which seem to indicate an interest in transferring the disputed domain name to the Complainant. Further to the Complainant's request on November 15, 2012, the Center suspended the administrative proceedings on November 16, 2012 until December 4, 2012. However, the Respondent failed to make any efforts after the notification of suspension was notified. Upon the Complainant's request, the Center reinstituted the proceedings on December 4, 2012 and set December 15, 2012 as the due date for submission of the Respondent's response. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on December 20, 2012.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 16, 2013. 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 corporation organized under the laws of Connecticut, United States in the area of insurance, travel, automotives and financial services. The Complainant has ownership of a number of United States federal trademark registrations as well as a number of international trademark registrations of the mark AAA, and the Complainant further states that it has United States and common law rights to the AAA mark. The Complainant’s trademark right will be referred to as the “AAA Marks” in the following.
The disputed domain name was registered with the Registrar on December 22, 2011.
5. Parties’ Contentions
The Complainant asserts that it has used its AAA Marks in commerce, in connection with a broad variety of goods and services, including insurance, automotive, financial, travel, and discount goods and services, since at least 1902 and that AAA Marks are well known for providing travel-related and discount products and services to its members, including hotel discounts and tourist accommodation ratings.
The Complainant contends that these Marks are valuable and famous in the United States and abroad as a result of its history and experience in providing high quality products and services, as well as it and its member clubs’ continuous and extensive advertising, promotion, and sales of such products and services under the AAA Marks.
The Complainant states that in or around May 2012, the Complainant learned that the Respondent had registered the disputed domain name <aaa-hotel-discounts.com> and was using that domain name for a website that makes prominent use of the AAA Marks in the blog’s title, “AAA Hotel Discounts,” and includes text copied verbatim from AAA’s website. The Complainant asserts that it has not authorized the Respondent’s use of the <aaa-hotel-discounts.com> disputed domain name or the alleged infringing and misleading content on the website.
The Complainant states that on May 17, 2012 and June 27, 2012, the Complainant sent letters to the Respondent by email and registered mail, demanding that the cease of all use of the <aaa-hotel-discounts.com> domain name and the immediate transfer of the registration for the disputed domain name to the Complainant. Although the letters sent by registered mail were returned as undeliverable, on information and belief, the Respondent received the letters via email but failed to respond.
The Complainant asserts that the disputed domain name is substantially and confusingly similar to the Complainant’s AAA Marks. The disputed domain name includes the entire AAA Marks, with the addition of the generic terms “hotel” and “discounts” and it is well-settled that a domain name is confusingly similar to a trademark when the domain name includes the entire mark, even if generic terms are added.
The Complainant states that the Respondent has neither a right in the disputed domain name nor any legal legitimate interest to use the disputed domain name because the Complainant has established its rights to the AAA Marks and has not licensed or authorized the Respondent to use the AAA Marks in connection with its business or as part of the domain name. Further, the Complainant contents that there is no evidence that the Respondent is commonly known by the disputed domain name and the Respondent did not register the disputed domain name under a name containing the AAA Marks but rather, the disputed domain name is registered to the Respondent Sompop Padungkijjaroen, who has no affiliation or association with the Complainant.
In addition the Complainant claims further that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use and instead, the Respondent is using the disputed domain name to direct users to a purported blog which does not only make prominent use of the Complainant’s AAA Marks but also use text throughout homepage, large portions of which are copied verbatim from the Complainant’s website. According to the Complainant this is not a legitimate noncommercial fair use but demonstrates the Respondent’s attempt to benefit from the false impression that the website is associated or affiliated with the Complainant.
According to the Complainant the above described use shows that the Respondent was aware of AAA and its marks when it registered the confusingly similar domain name and that it intends to divert Internet users seeking AAA travel-related products and services to the Respondent’s website. The use further shows the Respondent’s use of the disputed domain name in this manner indicates that the Respondent registered the disputed domain name to direct users to the website associated with the disputed domain name under the false belief that it is associated or affiliated with the Complainant.
Finally, the Complainant asserts that the Respondent’s objective is to mislead for purposes of pecuniary gain by increasing web traffic to its website. The website links to additional websites for which the Respondent is also the registrant, some of which are purported blogs similar in nature to the website associated with <aaa-hotel-discounts.com> and some of which provide additional links to products for sale on “www.amazon.com”..
A part from brief emails from the Respondent (mentioned in Section 3), the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s distinctive and reputed AAA Marks with the addition of the generic and in this connection descriptive terms “hotel” and “discounts” and the “.com” designation. Since the generic top-level domain (“gTLD”) designation may be disregarded for the purpose of this proceeding, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and the way the Respondent is using the disputed domain name, makes it inconceivable to the Panel that any rights or legitimate interests may exist.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii), and paragraph 4(c) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration or use in bad faith:
(i) circumstances indicating that the domain name holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name holder has engaged in a pattern of such conduct; or
(ii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the domain name holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the distinctive nature of the Complainant’s AAA Marks and the reputation of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant or without the intention of targeting the Complainant and the Complainant’s hotel related activities towards its members.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name the Panel finds that the Complainant has made its case and showed that the Respondent “has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the domain name holder’s website or location” as stated in paragraph 4(b)(iv) of the Policy.
Noting that the disputed domain name incorporates a registered and well-known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aaa-hotel-discounts.com> be transferred to the Complainant.
Date: January 27, 2013