WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. Joe Villa, Stem Cell Capital Inc.
Case No. D2014-1225
1. The Parties
The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling LLP, United States of America.
The Respondent is Joe Villa, Stem Cell Capital Inc. of Manhattan Beach, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <aaainsuranceclaims.com>, <aaainsuranceclaims.info>, <aaainsuranceclaims.net>, <aaainsuranceclaims.org>, <aaapropertyclaims.com>, <aaapropertyclaims.info>, <aaapropertyclaims.net> and <aaapropertyclaims.org> are registered with GoDaddy.com, LLC (the "Registrar").
The disputed domain names are hereinafter referred to individually and collectively as the "Disputed Domain Names".
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 16, 2014. On July 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Joe Villa is listed as the registrant and providing the contact details, and indicating that the company Stem Cell Capital Inc. was also listed as the registrant of the Disputed Domain Names <aaainsuranceclaims.com>, <aaainsuranceclaims.info> and <aaapropertyclaims.com>. The Center sent an email communication to the Complainant on July 29, 2014 providing the information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 30, 2014.
The Center verified that the Complaint together with the amended 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 July 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 21, 2014.
The Center appointed Neil, J. Wilkof as the sole panelist in this matter on September 1, 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
The Disputed Domain Names are registered as follows:
<aaainsuranceclaims.com> (registered May 19, 2013)
<aaainsuranceclaims.info> (registered May 19, 2013)
<aaainsuranceclaims.net> (registered August 10, 2013)
<aaainsuranceclaims.org> (registered August 11, 2013)
<aaapropertyclaims.com> (registered May 19, 2013)
<aaapropertyclaims.info> (registered August 11, 2013
<aaapropertyclaims.net> (registered August 10, 2013)
<aaapropertyclaims.org> (registered August 11, 2013)
The Complainant inter alia has the following United States trademark registrations:
Registration No. 829,265 for the mark AAA, in international classes 35, 36, 37, 39, 41, 42, registered on May 23, 1967.
Registration No. 2,158,654 for the mark AAA plus design in international classes 16, 35, 36, 37, 39, 42, registered on May 19, 1998 (hereinafter "the Registered Marks")
5. Parties' Contentions
The Complainant has offered, for more than a century both directly, and through its local member clubs, in the United States and abroad, a large variety of goods and services, including various insurance services, under the AAA mark or marks that consist of the AAA mark, both on a common-law and on a registered basis, including under the Registered Marks (hereinafter collectively the "AAA Mark"). The AAA Mark has been recognized as a valuable and famous mark (American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489).
On March 6, 2014, the Complainant sent letters to the Respondent, demanding that immediate cessation of all use of the Disputed Domain Names and the transfer of the Disputed Domain Names to the Complainant. No reply was received by the Complainant. Accordingly, on March 26, 2014, the Complainant sent a second letter, in which it reiterated its previous demands. Again, no reply was received.
Because the registrations for the Disputed Domain Names <aaainsuranceclaims.com>, <aaainsuranceclaims.info> and <aaapropertyclaims.com> were set to expire in May 2014, the Complainant monitored their status. The Complainant determined that in or about May 2014, the Respondent had renewed these three aforementioned Disputed Domain Names. As well, it determined that the Respondent began to redirect the Disputed Domain Names to a website operated under the domain name <myclaimsadvisor.com>. The website advertises the Respondent's insurance claims services under the name Statewide Claims Advisors. At no time has the Respondent responded to or made any contact with the Complainant with respect to the foregoing.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complaint must prove the following:
(i) The Disputed Domain Names are 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 the Disputed Domain Names.
(iii) The Disputed Domain Names were registered and are being used in bad faith.
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
A. Identical or Confusingly Similar
The registration of each of the Registered Marks, being May 23, 1967 and May 19, 1998, respectively, substantially predates the registration of each of the Disputed Domain Names, being May 19, 2013 or August 11, 2013, respectively.
It is well-established that "a domain name that wholly incorporates a Complainant's registered mark may be sufficient to establish confusing similarity for purposes of the UDRP" (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888). Further, a domain name that includes the Complainant's trademark in its entirety, together with a generic or highly descriptive term, is not sufficient to avoid a finding of confusion between the disputed domain name and the trademark (Merrell Pharmaceuticals Inc. , Aventis Pharma SA. v. Filips Kostins, WIPO Case No. D2004-0943 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).
These principles apply in the instant case. Each of the Disputed Domain Names wholly incorporates the AAA Mark. The addition of generic or highly descriptive terms to the Disputed Domain Names, namely, "insurance", "property" and "claims" respectively, does not change the fact that there is a likelihood of confusion between the AAA Mark and the Disputed Domain Names. This is especially so when each of these generic or highly descriptive terms in the Disputed Domain Names is closely related to insurance services, which are provided by the Complainant under the AAA Mark (The American Automobile Association Inc. v. Abadaba S.A., WIPO Case No. D2009-1351 (<aaadiscounts.com> was found confusingly similar to the AAA mark for discount services) and American Automobile Association, Inc. v. Nevis Domains LLC, supra (<aaaautomotive.com> was found confusingly similar to the AAA mark for automotive products and services)).
Based on the foregoing, the Panel finds that the Disputed Domain Names are confusingly similar to the AAA Mark.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has registered any mark that consists of, or contains, the AAA Mark, or any material portion thereof. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the AAA Mark. The name of the Respondent does not bear any resemblance to the Disputed Domain Names nor is there any basis to conclude that the Respondent is commonly known by the AAA Mark or the Disputed Domain Names.
Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the disputed domain name, the Respondent has not submitted any response to support such a claim. The Respondent does not use any of the Disputed Doman Names in connection with a bona fide offering of goods or services nor is the Respondent making any legitimate noncommercial or fair use of the Disputed Domain Names.
Based on the foregoing, the Panel rules that the Respondent has no right or legitimate interest in the AAA Mark.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the respondent, as follows:
(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on the respondent's web site or location.
Under the circumstances, the Respondent's selection of the AAA Mark supports the conclusion that it has acted in bad faith. The Respondent registered the Disputed Domain Names only in 2013, over a century after the Complainant first began to use the AAA Mark in 1902 and well after the registration of the Registered Marks which the Complainant uses for, inter alia, providing insurance services. As stated by the panel in the case of The American Automobile Association Inc. v. Sompop Padungkijjaroen, WIPO Case No. D2012-2168, "[g]iven 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." These words apply equally in the instant situation.
Further, the use of the Disputed Domain Names by the Respondent indicates an intention to attract Internet users to its website for commercial gain by taking advantage of the Complainant's reputation in connection with the AAA Mark. The Disputed Doman Names all resolve to a website operated under the domain name <myclaimsadvisor.com>. The website advertises insurance claims services of the Respondent Joe Villa under the name Statewide Claims Advisors. There is a reasonable likelihood, therefore, that an Internet user will be confused into thinking that there is a connection between the Complainant and this website.
Based on all of the foregoing, the Panel rules that the Respondent has registered and is using the Disputed Domain Names in bad faith.
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 <aaainsuranceclaims.com>, <aaainsuranceclaims.info>, <aaainsuranceclaims.net>, <aaainsuranceclaims.org>, <aaapropertyclaims.com>, <aaapropertyclaims.info>, <aaapropertyclaims.net> and <aaapropertyclaims.org> be transferred to the Complainant.
Neil, J. Wilkof
Date: September 14, 2014