WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. Domain Administrator / Fundacion Private Whois
Case No. D2014-0502
1. The Parties
The Complainant is The American Automobile Association, Inc., Heathrow, Florida, United States of America ("the United States"), represented by Covington & Burling, United States.
The Respondent is Domain Administrator / Fundacion Private Whois of Panama, Panama ("Respondent").
2. The Domain Name and Registrar
The disputed domain name <wwwamericanautomobileassociation.com> is registered with Internet.bs Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 28, 2014. On March 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Registrar did not provide details of the actual registrant, although the Registrar was operating a proxy registration service for an undisclosed respondent.
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 April 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 25, 2014.
The Center appointed Sir Ian Barker as the sole panelist in this matter on May 6, 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.
On May 13, 2014, the Panel issued Procedural Order No. I, requesting the Complainant to confirm its ownership of the AMERICAN AUTOMOBILE ASSOCIATION Trademark Registration No. 3852689 in the United States, and extending the due date of the Decision to May 27, 2014. On May 13, 2014, the Complainant confirmed it owned the AMERICAN AUTOMOBILE ASSOCIATION trademarks in the United States.
4. Factual Background
The Complainant is The American Automobile Association of the United States which represents motor vehicle owners and travelers generally in that country.
The Complainant owns several trademarks for the letters AAA, the first being registered in 1967.
Although not referred to in the initial Complaint, it came to the attention of the Panel as a result of a search of the United States Patent & Trademark Office Register that the Complainant also owns trademarks for the words AMERICAN AUTOMOBILE ASSOCIATION. The first has a registration date of February 26, 1980. As a result of the Procedural Order No. I, the Complainant confirmed that it owned these trademarks. The Complainant also had registrations for the trademark AAA in Panama since 2005.
The Complainant's AAA mark is widely advertised and promoted throughout the United States and is relied on by the public as indicating the Complainant and its services relating to motoring and the provision of services to motorists.
On December 18, 2013 and January 29, 2014, the Complainant caused "cease and desist" letters to be sent to the Respondent but no reply was received to either.
The disputed domain name was created on June 9, 2010.
5. Parties' Contentions
The disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. The only difference is the addition of "www". It is also confusingly similar to the Complainant's AAA marks.
The Respondent has no rights or legitimate interests in the disputed domain name. It has not alleged any and therefore none of the defenses provided for in paragraph 4(c) of the Policy apply.
The domain name was registered and is being used in bad faith. The Respondent's website accessed by the disputed domain name resolves to a pay-per-click site advertising links including unauthorized links to the Complainant's website and links to automated automobile related products offered by the Complainant's competitors. The Respondent is intentionally diverting Internet users from the Complainant's website. It has no legitimate interest in the disputed domain name and is using its website accessed by the disputed domain name for the purposes of pecuniary gain and by offering products and services in competition with the Complainant. This conduct is disrupting the Complainant's business.
The Respondent should have had actual or constructive knowledge of the Complainant's marks and their international registrations which have substantive fame in the United States and abroad. Bad faith is indicated by the reference to products of competitors in the "click-through" advertisers.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a Complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
There is no doubt that the disputed domain name is confusingly similar to the Complainant's registered mark AMERICAN AUTOMOBILE ASSOCIATION. It is perhaps less clear that it is identical to the Complainant's AAA marks but it is not necessary to go into that aspect because the confusing similarity with The American Automobile Association trademarks is obvious. The only additions are the definite article and "www" which stands for "worldwide web". Accordingly, the Complainant has made out paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no license to reflect its trademarks in a disputed domain name. The Respondent has not filed a response and therefore has not produced any evidence which could support a defense that one of the situations envisaged by paragraph 4(c) of the Policy would apply to the Respondent. Accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
It is not difficult to infer bad faith registration and continuing bad faith use of the disputed domain name for all or any of the following reasons:
(a) The worldwide fame of the Complainant's mark makes it highly likely that the Respondent knew of the Complainant and its mark at the time when it registered the disputed domain name long after the Complainant first filed for trademark protection in the United States. The Complainant registered its AAA marks in Panama where the Respondent is located.
(b) The use of the website of the Respondent shows that the Respondent is using the disputed domain name intentionally to attract for commercial gain Internet users to its website by creating a likelihood of belief by the Internet user as to the source of sponsorship, affiliation or endorsement by the Complainant of the Respondent's website.
(c) The Respondent is clearly intending to divert traffic away from the Complainant's business.
(d) Under paragraph 4(a)(iii) of the Policy bad faith registration and use can be inferred where the Respondent has registered a domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Respondent has engaged in such conduct.
For all these reasons, the Complainant has satisfied paragraph 4(a)(iii) 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 <wwwamericanautomobileassociation.com> be transferred to the Complainant.
Sir Ian Barker
Date: May 21, 2014