WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. Domains by Proxy, LLC a/k/a Tamir Zaid, aaa locksmith services
Case No. D2014-0122
1. The Parties
Complainant is The American Automobile Association, Inc. (“AAA”) of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
Respondent is Domains by Proxy, LLC a/k/a Tamir Zaid, aaa locksmith services, of Scottsdale, Arizona, United States of America; Van Nuys, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <aaa-locksmiths.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2014. On January 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2014, 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 Respondent of the Complaint, and the proceedings commenced on February 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2014. On February 25, the Center received an email correspondence from Respondent, which it duly acknowledged.
By email dated February 25, 2014, Respondent transmitted an email to the Center stating “hello I would like to resolve this matter, but I don't understand what must I do? transfer the domain?” The Center advised Complainant of this inquiry and asked whether Complainant wished to consider suspension of the proceedings to enable a voluntary transfer of the disputed domain name by Respondent. By email dated February 27, 2014, Complainant advised the Center and Respondent “Thank you for your note. Unfortunately, AAA has made numerous unsuccessful attempts to resolve this matter directly with respondent. We ask that WIPO proceed with the complaint.”
The Center notified the parties of the commencement of the panel appointment process on February 28, 2014.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 7, 2014. 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 the owner of registration of the word trademark AAA on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 0829265, registration dated March 7, 1967, in international classes (ICs) 35, 36, 37, 39, 41 and 42, covering, inter alia, automobile association services rendered to motor vehicle owners and providing emergency road service. Complainant is the owner of registration at the USPTO of the word trademark AAA PREMIER, registration number 2900596, registration dated November 2, 2004, in ICs 35, 36, 37, 39, 42, 43 and 45, covering, inter alia, “home lock out services, namely, locksmithing in the nature of opening locks for others”; and a word and design trademark consisting of the term AAA within an oval and an incomplete oval and the term PREMIER in script font below the aforedescribed word and design, registration number 2935481, registration dated March 22, 2005, in ICs 36, 37, 39 and 45, covering, inter alia, “home lock of services [sic], namely, locksmithing in the nature of opening locks for others”. Complainant refers to its various trademarks, including those in addition to the above-mentioned marks, as the “AAA Marks”.
Complainant is a provider of goods and services, including automotive, transportation, insurance, financial, discount, and travel related goods and services. Complainant asserts that it has used the AAA Marks in commerce in the United States since at least 1902.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name, including the registrant organization listed as “aaa locksmith services”. According to that verification the record of registration of the disputed domain name was created on August 28, 2008. The Registrar indicated that the disputed domain name was initially registered to a privacy service, but there is nothing in the record of this proceeding to suggest that any party other than Respondent has been the registrant-in-fact of the disputed domain name.
Complainant has provided a screenshot dated January 10, 2013 of a webpage addressed by the disputed domain name headed with the large-font term “AAA Locksmith”, with “services” in small font, with a toll-free telephone number, stating, inter alia, “Local Certified Locksmith 40 Years in Business” and:
AAA Locksmith Services help's you with anything from simple lock fitting and emergency door openings, to the installation of complete door entry sytems, safes and security grilles.
We work with business and home customers across Los Angeles and within the M25 radius. If it has a lock, we can fix it.
The aforedescribed webpage includes a number of third-party advertisements that appear to be generated by the hosting service, including “Would you like to buy this domain?”
Complainant indicates that it was able to determine through investigation that a locksmith service previously operating as “AAA Locksmith Services, Inc.” was located at the same address as Respondent and that a corresponding business registration with the State of California was suspended as of 2012.
Complainant transmitted cease-and-desist-and-transfer demands to Respondent by letters of January 17 and February 5, 2013. Although Respondent did not reply to those letters, as of May 8, 2013 the website address by the disputed domain name had been replaced with a link farm parking page hosted by GoDaddy.com, with links to Complainant and a number of third-party providers of automobile insurance and locksmith services.
In or around September 2013 the disputed domain name was redirected to <locksmithlosangelesx.com> which referred to “Automotive Residential Commercial 24 hour Locksmith”, included a toll-free telephone number, referred to “#1 Most Reliable Locksmith Los Angeles” and incorporated photographs of individuals appearing frustrated by doors that apparently they could not open.1
Complainant reiterated its cease-and-desist-and-transfer demand by letter of October 8, 2013. Respondent did not reply, but on or about October 21, 2013 the disputed domain name was redirected back to a link farm parking page hosted by GoDaddy.com similar to that described as of May 8, 2013.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, such as the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it is the owner of rights in the AAA Marks and that the disputed domain name is substantially and confusingly similar to its AAA Marks. Complainant contends that a risk of consumer confusion exists any time a mark is combined with a generic or descriptive term in a domain name, and that the risk is particularly great where “as here, the term describes a central aspect of Complainant’s business”, which heightens the confusion.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Complainant has not licensed or authorized Respondent to use the AAA Marks; (2) there is no evidence that Respondent is commonly known by the disputed domain name, and that “any affiliation Respondent may have had with ‘AAA Locksmith Services, Inc.’ is of no consequence because Complainant has the exclusive right to use the AAA Marks in connection with the products and services specified in the registration certificate, including locksmith services dating back at least as early as 1967; (3) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use in that Respondent was aware of Complainant and its AAA Marks when it registered the disputed domain name, and that use of the disputed domain name in connection with a pay-per-click parking page with links to competitors of Complainant is not a bona fide offering of goods or services.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name to divert Internet users seeking Complainant’s locksmith-related products and services to Respondent’s website; (2) diverting Internet users to a pay-per-click parking page including products and services that compete with those offered by Complainant is evidence of bad faith; (3) Respondent had actual or constructive knowledge of Complainant’s AAA Marks when it registered the disputed domain name because of Complainant’s substantial name recognition in the United States; (4) Respondent registered the disputed domain name well after Complainant began using it famous marks, and; (5) use of a proxy service may constitute evidence of bad faith when it is coupled with registration of the disputed domain name incorporating Complainant’s famous mark.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its record of registration. The courier service engaged by the Center reported successful delivery of the Complaint to Respondent’s address (with signature of receipt), and Respondent informally responded to the Center. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the word trademark and service mark (hereinafter “trademark”) AAA at the USPTO (see Factual Background supra), and evidence of use of the AAA trademark in commerce in the United States. Respondent has not challenged Complainant’s rights in the AAA trademark. The Panel determines that Complainant has rights in the trademark AAA in the United States.2
Complainant has provided evidence of registration of the word and the word and design trademark AAA PREMIER at the USPTO, first registration dated November 2, 2004. On its general AAA Roadside Assistance website, Complainant refers to “Locked out? AAA will send technicians to get you back in your car”, and under “Vehicles and services covered under Basic and Plus Membership”, that website refers to “lockout service”.
Complainant has provided no evidence of its use of the combination term “AAA Locksmiths” or “AAA Locksmith” in commerce in the United States, on the Internet or otherwise.
The disputed domain name <aaa-locksmiths.com> combines Complainant’s AAA trademark with the term “locksmiths” (separated by a hyphen).3 In the United States, the combination of letters AAA is used frequently by parties other than Complainant to identify a wide variety of goods and services, if for no other reason than “A” is the first letter of the English-language alphabet and a string of the letter “A” assures a relatively high placement among alphabetical listings.4 While Complainant may be well-known in the United States as a provider of travel- and insurance-related services, its trademark is somewhat weak from the standpoint of distinctiveness in so far as it is made up of a commonly used combination of letters. There are a multitude of businesses in the United States that use the term AAA as a principal identifier of goods or services other than in direct competition with Complainant’s goods and services.
Complainant owns registration of AAA PREMIER in connection with locksmithing services. AAA PREMIER and AAA are different trademarks. The combination term AAA PREMIER LOCKSMITHS would be a more distinctive (i.e., individuated) term than “AAA locksmiths”. Complainant has not provided evidence of actual use of the term AAA PREMIER in the United States in connection with locksmithing services, although its registration at the USPTO for that term covers “home lock out services, namely, locksmithing in the nature of opening locks for others”. The disputed domain name is <aaa-locksmiths.com>. Complainant does not own registration of the term AAA standing alone with respect to locksmithing services.
A trademark may be widely known among consumers in connection with a class or classes of goods and services, yet not distinctive in the sense of being a unique or differentiated term. A number of recent decisions involving Legal Rights Objections with respect to new top level domains approved by ICANN demonstrate this distinction. Trademark such as “Coach”,5 “Express”6 and “Limited”7 may be well-known with respect to certain classes of goods, or among certain categories of consumers, but these terms remain widely used by the general public in other contexts, and are not distinctive from a dictionary or linguistic standpoint. AAA is well-known in connection with travel-related services and insurance services. However, it is very widely used by the public and other businesses outside Complainant’s specific fields of use.
Complainant has presented no evidence of its use of the combination term “AAA LOCKSMITHS” in commerce in the United States. Conversely, a routine Internet search of “AAA locksmiths” using the Google or Yahoo search engine yields a myriad of enterprises doing business as AAA Locksmiths and AAA Locksmith in the United States.8 These businesses do not appear to be associated with Complainant.
In the Panel’s view, use of the letter combination AAA to identify businesses in the United States unrelated to Complainant is common and manifest to any person who has resided in the United States for any appreciable period of time. The Panel cannot ignore a common feature or usage of the English language. The Panel may take administrative notice of common usages of the English language in determining whether a disputed domain name is confusingly similar to a trademark.
The Panel is unable to conclude based on the evidence presented by Complainant that Internet users are likely to confuse the disputed domain name with Complainant’s AAA or AAA PREMIER trademarks.
The Panel contrasts this determination with its substantially contemporaneous determination in a separate proceeding involving Complainant, and the disputed domain name <aaainsurancefreequote.com> (The American Automobile Association, Inc. v. Wesley Cao, aaainsurancefreequote, WIPO Case No. D2014-0169). In that other proceeding, in addition to having registered the word trademark AAA LIFE INSURANCE COMPANY, and having identified insurance services in its registration of a word and design mark (AAA), Complainant provided evidence of extensive use of the term “AAA” in connection with the provision of insurance services of various kinds. Further, a Google or Yahoo search of the terms “AAA insurance” returned extensive reference to Complainant’s branded insurance services, and did not suggest extensive use of “AAA Insurance” by third parties unaffiliated with Complainant. In that contemporaneous proceeding, the Panel determined that the disputed domain name is confusingly similar to Complainant’s trademarks. The circumstances here are materially different.
The Panel determines that Complainant holds rights in the trademarks AAA and AAA PREMIER, but that the disputed domain name <aaa-locksmiths.com> is not identical or confusingly similar to those trademarks.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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; or
(iii) you 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.”
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not responded to the Complaint, and has not sought to rebut Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name. Nevertheless, if there is manifest on the record of the proceeding evidence that Respondent may have rights or legitimate interests in the disputed domain name the Panel must take that evidence into account.
Prior to being notified by Complainant that it was infringing Complainant’s rights in its trademark, Respondent was using the disputed domain name to direct Internet users to a website advertising a 24-hour locksmithing service in the Los Angeles area. The disputed domain name was registered in 2008. Complainant has presented evidence that the California business registration associated with Respondent was suspended as of 2012. However, there is no evidence to refute that Respondent was doing business as a locksmith in the Los Angeles area in 2008, which is what on its website Respondent claimed to be doing. It is only in response to Complainant’s cease-and-desist-and-transfer demands that Respondent redirected the disputed domain name to a link farm parking page that provided links to competitors of Complainant, using a standard form of fee-generating parking page provided by GoDaddy.com.
A business at the address of Respondent was registered as “AAA LOCKSMITH SERVICES, INC.” in the State of California on March 5, 2008. That is at or about the time the disputed domain name was registered. A cursory search shows that the name “AAA Locksmith” or “AAA Locksmiths” is in ubiquitous use across the United States by parties other than Complainant. It appears to the Panel that Respondent was making a fair use of a common term (AAA) even if Complainant held trademark rights in that term with respect to certain classes of goods and services. When it registered and began using the disputed domain name Respondent appeared to be using the disputed domain name in connection with a bona fide offering of services (i.e. locksmithing in the Los Angeles area), and because that use constituted fair use of a common term in the English language, Respondent was not on constructive notice of a dispute. In this regard, Respondent established rights or legitimate interests in the disputed domain name. Respondent removed the link to its services business and established the association to the standard form of link farm parking page only in response to Complainant’s cease-and-desist-and-transfer demands.
The Panel determines that Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Having determined that the disputed domain name is not identical or confusingly similar to Complainant’s trademark, and that Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain name, the Panel need not address the elements of bad faith.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: April 21, 2014
1 This screen printout is undated, the date is alleged by Complainant.
2 Under the AAA word trademark registration, locksmithing is not identified among the class of services provided.
3 For purposes of the confusing similarity analysis, addition of the generic Top-Level Domain (gTLD) “.com” is not relevant under the circumstances present here.
4 A simple Google or Yahoo search of the term "aaa locksmiths" by the Panel generates an extensive list of US-based businesses operating under the name “AAA Locksmith" or “AAA Locksmiths" with no apparent affiliation with Complainant. Panel search of April 18, 2014.
8 Panel search of April 18, 2014.