World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The American Automobile Association, Inc. v. Go Orange

Case No. D2012-2169

1. The Parties

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

Respondent is Go Orange, Go Orange, Arizona United States of America.

2. The Domain Names and Registrar

The disputed domain names <aaatourcompany.com>, <aaatourcompany.info> and <aaatourcompany.net> are registered with GoDaddy.com, LLC.

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 names. On November 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 30, 2012.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 10, 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 has used its AAA marks in commerce for providing automobile-related products and services since at least 1902.

Complainant owns the following Trademark Registrations, among others:

United States No. 829,265, registered May 23, 1967, for AAA;

United States No. 2,158,654, registered May 19, 1998, for AAA;

United States No. 2,120,266, registered December 9, 1997, for AAA VACATIONS;

Canada Reg. No. TMA430671 for AAA;

Mexico Reg. No. 763123 for AAA;

Benelux Reg. No. R 534982 for AAA;

France Reg. No. 93 475288 for AAA; and

Germany Reg. No. 2086870 AAA

The three disputed domain names were registered on February 13, 2012, and expire on February 13, 2013.

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:

Complainant owns the AAA trademark and numerous registrations therefore.

The disputed domain names are confusingly similar to Complainant’s AAA marks since they include the entire AAA mark with only the addition of the generic terms “tour” and “company”. These descriptive terms describe a central aspect of Complainant’s business which heightens consumer confusion. Thus, the disputed domain names are identical or confusingly similar to the AAA trademark in which Complainant has rights.

With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:

Respondent does not have any rights or legitimate interests with respect to its use of the disputed domain names. Complainant has not licensed or authorized Respondent to use the marks in connection with its business or as part of the disputed domain names. There is no evidence that Respondent is commonly known by the disputed domain names. There is no connection or affiliation between Respondent and Complainant.

Respondent’s use of the disputed domain names to host pay-per-click advertisements for Complainant’s own website and well as for goods and services that compete with Complainant’s business is not a bona fide offering of goods and services nor a legitimate noncommercial or fair use pursuant to the Policy. Respondent must have been aware of Complainant’s AAA marks when it registered the confusingly similar domain names and intended to divert Internet users who were seeking AAA products and services to Respondent’s pay-per-click advertisements for competing products and services.

With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:

Respondent registered the disputed domain names to attract Internet users to its pay-per-click advertisements in violation of UDRP Policy paragraph 4(b)(iv). Use of Complainant’s AAA marks in the disputed domain names creates a likelihood of confusion for Internet users as to the source, sponsorship, affiliation, or endorsement of the parking pages associated with the disputed domain names. Respondent’s use of the disputed domain names that incorporate Complainant’s AAA marks to host pay-per-click advertisements for Complainant’s competitors, without any legitimate interest in the domain names and for purposes of pecuniary gain, is prima facie evidence of bad faith. In addition, Respondent’s use of the disputed domain names that are confusingly similar to Complainant’s AAA marks without any legitimate interest in the domain names constitutes disruption of Complainant’s business and is further evidence of bad faith registration. Further, Respondent actual or construction knowledge of Complainant’s AAA marks based on Complainant’s United States and international marks, and the substantial fame in the United States and abroad, is further evidence of bad faith. Respondent registered the disputed domain names in 2012, well after Complainant began using its AAA marks in 1902.

B. Respondent

Respondent did not respond to Complainant’s contentions. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).

6. Discussion and Findings

Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. (Policy, paragraph 4(a).)

A. Identical or Confusingly Similar

Given Complainant’s trademark registrations and long use of the AAA trademarks in the United States and worldwide, the Panel finds that Complainant has trademark rights in the AAA mark.

The Panel also finds that the disputed domain names are nearly identical to or confusingly similar to Complainant’s AAA marks. The disputed domain names incorporates Complainant’s entire trademark and differs from Complainant’s registered AAA mark only by the addition of the generic terms “tour” and “company” and the generic gTLD’s “com”, “net” and “info“. Moreover, because Complainant has a well-known reputation as a provider of automobile related services, including automobile travel agency services, the term “tour company” will only increase the likelihood that Internet users will be confused. The addition of the “.com”, “.net” and “.info gTLD does nothing to avoid confusion. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”).

The Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

In order for Respondent to demonstrate rights or legitimate interests in the disputed domain name, it must show:

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

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.

With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name.

It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, a complainant need only make a prima facie showing on this element, at which point the burden of production shifts to respondent to present evidence that it has some rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141.

The Panel finds that the above facts establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Moreover, Respondent has not rebutted such a prima facie showing and therefore Complainant has succeeded with respect to this Policy element.

C. Registered and Used in Bad Faith

Complainant’s allegations of bad faith registration and use are not contested. Also, it is highly unlikely that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain name on March 11, 2012, a date more than 110 years after the AAA mark had been in continuous use and more than 45 years after Complainant obtained a United States registration for AAA.

Under the Policy, it is evidence of bad faith that, “by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy.

In the present case, all three of the disputed domain names link to pay-per-click website with sponsored links to Complainant’s AAA website as well as to competitors’ websites that offer competing services. The evidence shows that the website found at <aaatourcompany.com> contains a link to the AAA official site as well as to third party sites offering “Clearwater Vacation” and “Visit Japan Promotion”; the website found at <aaatourcompany.net> contains a link to the AAA Official Site as well as to third party sites offering “Washington DC Charter” and “Travel Papua New Guinea” tours; and the website found at <aaatourcompany.info> contains a link to the AAA Official Site as well as to a third party site offering a “Visit Japan Promotion”. Respondent is obviously using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with complainant’s mark as to source. Further, it is well-settled that the adoption of well-known trademarks without permission or rights therein, particularly when used to advertise competitive goods/services is evidence of bad faith registration and use. See Six Continents Hotels, Inc. v. Telmex Management Services, WIPO Case No. D2001-0996 (“the deliberate adoption of Complainant’s well-known trademarks without any apparent right or interest therein, raises a prima facie presumption of bad faith registration, and Complainant’s demonstrated use of the domain names to link to other [similar] service sites…demonstrates bad faith use”).

Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith. Therefore the Panel finds that Complainant has proven the third and final element of the Policy.

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 disputed domain names, <aaatourcompany.com>, <aaatourcompany.info> and <aaatourcompany.net> be transferred to Complainant.

Lawrence K. Nodine
Sole Panelist
Date: December 26, 2012

 

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