WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. Wesley Cao, aaainsurancefreequote
Case No. D2014-0169
1. The Parties
Complainant is The American Automobile Association, Inc., Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
Respondent is Wesley Cao, aaainsurancefreequote, Concord, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <aaainsurancefreequote.com> is registered with Melbourne IT Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2014. On February 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2014, 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 February 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2014.
By email dated February 7, 2014, Respondent advised the Center and Complainant as follows:
I do not dispute this complaint. I authorize any action that may be required to remove my name, Wesley Cao, from any domains or registrar associated with the “AAA” marks as long as I am not held accountable for any penalties that may arise from this action.
I cancelled the domain with Yahoobusiness with the knowledge that all ties with this domain be removed at the same time along with my name that was associated with it.
Multiple efforts have been made to Yahoobusiness to remove my name from the domain and registrar. They were unsuccessful and non responsive.
By email dated February 10, 2014, Complainant advised the Center and Respondent as follows:
As set forth in the Complaint and in Respondent’s February 7 email, the parties have already tried to work together to resolve this matter. Unfortunately, the domain name does not appear to be in Respondent’s control. The case should proceed in the normal course without suspension.
Respondent did not submit any additional formal response. Accordingly, the Center notified Respondent’s default on February 12, 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 a registration at the USPTO of the word trademark AAA LIFE INSURANCE COMPANY, registration number 1101726, registration dated September 5, 1978, in IC 36, covering “underwriting of life and accident insurance”, and disclaiming exclusive rights to use the words “life insurance company” except in the combination shown. Complainant is the owner of the word and design trademark consisting of the term AAA within an oval and an incomplete oval, registration number 2158654, registration dated May 19, 1998, covering, inter alia, “adjusting and collecting insurance damage claims; insurance brokerage services”, as further specified. 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, “insurance underwriting in the field of auto, home”. Complainant has provided evidence of additional registrations at the USPTO combining the term AAA with other terms. Complainant refers to its trademarks collectively 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.
Complainant has provided substantial evidence of its use of the AAA word and design trademark, and the AAA word trademark, in connection with the offering of insurance services on the Internet. Printouts of webpages hosted under the word and word and design trademarks refer to insurance for automobiles and other vehicles, homes and condominiums, life, health and travel. By way of illustration, a subpage of Complainant’s homepage refers to “AAA HOME INSURANCE”.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name, with registrant organization listed as “aaainsurancefreequote”. According to that verification the record of registration of the disputed domain name was created on September 19, 2012.
For some period of time prior to June 2013, Respondent was an insurance agent of Complainant. He is no longer an authorized agent. Respondent indicates that he ceased being an employee of Complainant as of October 2012. According to Complainant, and undisputed by Respondent, Complainant has a “strict policy prohibiting authorized affiliates from registering or using AAA-related domain names to promote their business or services”.
Up at least until April 2013, Respondent used the disputed domain name to direct Internet users to a host webpage headed “AAA Insurance Of Berkeley, Your local agent: Wesley Cao”, and further offering his services as insurance agent for AAA insurance products.
Complainant transmitted cease-and-desist-and-transfer demands to Respondent by letters dated July 24, 2013 and September 19, 2013. By telefax dated October 3, 2013, Respondent advised Complainant that he had been in contact with YahooBusiness, through which he had created his website and registered the disputed domain name, and had requested YahooBusiness to take down the website and cancel the disputed domain name. Respondent took further steps seeking to disassociate himself from the disputed domain name and the problematic website as indicated from various email correspondence involving Respondent and Complainant. Apparently, despite significant efforts by Respondent, he was unable to unwind his transaction through YahooBusiness. It appears that YahooBusiness undertook registration of the disputed domain name in the name of Respondent, but did not provide Respondent with a means to control the disputed domain name with the Registrar. It is unclear why YahooBusiness was unable or unwilling to take the necessary steps with the Registrar to cancel or otherwise terminate Respondent’s association with the disputed domain name. This proceeding appears to be necessitated as a consequence of the Registrar requiring an order from the Panel to transfer the disputed domain name to Complainant.
As of February 7, 2014, the disputed domain name directs Internet users to a generic link farm parking page offering links to competitors of Complainant. Respondent by February 7, 2014 had made several requests to YahooBusiness to cancel his account and the webpage and the disputed domain name. It is not entirely clear what party is responsible for the current posting.
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, one of which is 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 the AAA Marks are well known by the public in connection with the provision of insurance-related products and services. 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 indicates that adding the generic terms “insurance”, “free”, and “quote” to AAA likely heightens consumer confusion because Complainant is well-known for offering insurance-related products and services, including insurance quotes, to its members.
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, Respondent admits he is no longer associated with Complainant and has no interest in continuing to use the disputed domain name; (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, 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) Complainant did not authorize Respondent to register the disputed domain name when he was an authorized affiliate, and has a strict policy prohibiting authorized affiliates from registering or using AAA-related domain names to promote their business or services; (2) Respondent’s continued use of AAA Marks of the disputed domain name creates a likelihood of confusion for Internet users, and 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 and abroad.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant
Respondent did not provide a formal Response to Complainant’s contentions, but indicated as noted in Procedural History, supra, that he consented to transfer of the disputed domain name to Complainant.
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 his record of registration. Respondent submitted an informal response to the Complaint. 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 trademarks and service marks (hereinafter “trademark”) AAA, AAA LIFE INSURANCE COMPANY and AAA PREMIER at the USPTO (see Factual Background supra), and of registration at the USPTO of the word and design trademark AAA.
Other than for the AAA word-alone trademark, the identified classes of services for the word and word and design trademarks refer to the provision of insurance services, including underwriting, adjusting and collecting insurance damage claims and providing insurance brokerage services.
Respondent has not challenged Complainant’s asserted rights in the AAA Marks as referenced above. The Panel determines that Complainant has rights in those trademarks.
The disputed domain name combines Complainant’s AAA trademark with the terms “insurance free quotes”, without spacing.1 Although none of Complainant’s registered trademarks identically track the disputed domain name, Complainant owns registration of AAA LIFE INSURANCE COMPANY, which is substantially similar to “AAA insurance” such that an Internet user would be likely to confuse the disputed domain name with the registered AAA LIFE INSURANCE COMPANY trademark. Moreover, Complainant has submitted substantial evidence of its use of the term AAA in association with insurance services of various kinds, and the public is likely to assume that use of the term AAA in association with insurance services reflects Complainant as the source or sponsor of the services. “Free quotes” represents a provision of services commonly associated with insurance, and addition of the terms “free quotes” to “AAA insurance” does not dispel the likelihood of Internet user confusion between Complainant’s AAA and AAA LIFE INSURANCE COMPANY trademarks and the disputed domain name. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
Complainant in this proceeding has provided substantial evidence of it use in the United States of its AAA trademark in connection with the provision of insurance services. Moreover, a Google or Yahoo search of the terms “AAA insurance” yields extensive reference to Complainant’s AAA insurance services. A review of the results does not suggest wide use by third parties to designate a different brand of insurance services.2
The Panel determines that Complainant has established rights or legitimate interests in a trademark, and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
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 conceded a lack of rights or legitimate interests in the disputed domain name, and the Panel does not consider it necessary to further explore that concession.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A.
Respondent has not challenged Complainant’s allegations regarding bad faith registration and use, and the Panel considers that Complainant has provided adequate evidentiary support for its allegations.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
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, <aaainsurancefreequote.com>, be transferred to the Complainant.
Frederick M. Abbott
Date: April 21, 2014
1 For purposes of the confusing similarity analysis, addition of the generic Top-Level Domain (gTLD) “.com” is not relevant under the circumstances present here.
2 Google and Yahoo searches by the Panel of “AAA insurance” of April 19, 2014. Whether the domain names identifying the many websites offering Complainant's insurance services are registered to Complainant is a separate and distinct question not addressed here.