WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. Affinity Development Group
Case No. D2014-2069
1. The Parties
The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America ("U.S."), represented by Covington & Burling LLP, U.S.
The Respondent is Affinity Development Group of San Diego, California, U.S.
2. The Domain Names and Registrar
The disputed domain names <aaaautobuyingservice.com>, <aaautobuying.com> and <aaautobuyingservice.com> (collectively, "the Domain Names") are registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2014. On November 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 26, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrants and providing 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 the Respondent of the Complaint, and the proceedings commenced on December 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 23, 2014.
The Center appointed Martin Schwimmer as the sole panelist in this matter on January 9, 2015. 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 Complainant owns U.S. trademark registrations in the AAA mark and variants thereof, for a broad range of goods and services primarily relating to automobiles, most notably automobile association services, emergency roadside services, and travel-related publications, but also automobile leasing services and vehicle brokerage services. Its oldest proffered registration dates from 1967. Its earliest claimed date of first use appears to be 1902.
The Respondent utilizes the Domain Names to host pay-per-click advertisements for automotive goods and services. The Domain Names were created in 2010.
5. Parties' Contentions
The Complainant owns incontestable trademark registrations in the AAA mark and variants thereof, for services related to automobile ownership and operation, including roadside assistance, car-oriented tourism services, auto loan services and vehicle brokerage services.
Previous UDRP panels have found the Complainant's AAA mark to be widely recognized in the U.S. and possessing significant goodwill.
The Respondent's Domain Names incorporate the Complainant's AAA mark in its entirety. The addition of generic terms heightens, rather than diminishes confusion, as the terms relate to the automotive products and services that the Complainant is known for.
The Respondent has no rights or legitimate interests in the Domain Names, as it is not authorized by the Complainant to use the AAA mark, nor is the Respondent commonly known by the Domain Names, nor are its pay-per-click ads a bona-fide offering of goods or services or fair use of the AAA mark.
The Respondent registered the Domain Names in bad faith. It had either actual knowledge or constructive knowledge of the Complainant's famous AAA mark. Its use of pay-per-click advertisements for competitive services is a bad faith attempt to lure Internet users for pecuniary gain.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Respondent's Domain Names incorporate the Complainant's famous AAA trademark in its entirety. It is the consensus view of UDRP panels to usually disregard the generic Top-Level Domain ("gTLD") suffix, as well as non-distinctive terms such as "auto buying service" and "auto buying". Strictly speaking, as the mark AAA and the word "auto" share the letter A in two of the Domain Names <aaautobuyingservice.com> and <aaautobuying.com>, the Panel views those two as typo versions of a domain name that would otherwise incorporate the Complainant's trademark with the addition of generic terms.
As the generic terms here identify identical or closely related services provided by the Complainant, the Panel holds that pursuant to paragraph 4(a)(i) of the Policy, the Domain Names are confusingly similar to the Complainant's AAA mark.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no form of association with the Complainant that would allow it to utilize the Complainant's trademark. Furthermore, the Respondent's name does not reflect the AAA trademark. Finally, the Respondent's use of the AAA mark in connection with parking pages containing keyword ads linking to services that are competitive to those of the Complainant, cannot be a bona fide use of the Domain Names. These allegations constitute a prima facie showing that none of the three (non-exhaustive) circumstances establishing rights or legitimate interests in a domain name according to paragraph 4(c) of the Policy apply, thus shifting the burden of production on to the Respondent.
The Respondent has not submitted a response to address these allegations, and thus the Panel finds that the Complainant has established an un-rebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Complainant has submitted sufficient evidence that its AAA mark is famous in the general field of automotive and tourism services. The AAA mark has been registered for almost fifty years and used for over 110 years. The Respondent's pairing of the terms "auto buying" and "auto buying services" with the Complainant's AAA mark in the Domain Names is beyond chance.
The Respondent utilizes the Domain Names for keyword advertisements which identify the Complainant but also link to services provided by competitors of the Complainant. This unauthorized diversion of Internet traffic does not constitute a bona fide offering of goods nor fair use.
The Panel may also make negative inferences arising from the Respondent's failure to respond, as well as its registration of multiple domain names reflecting the same famous trademark. See, e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409.
The Panel finds that the Complainant has established that the Domain Names were registered and are being used in bad faith, as outlined in 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 Domain Names, <aaaautobuyingservice.com>, <aaautobuying.com> and <aaautobuyingservice.com>, be transferred to the Complainant.
Date: January 11, 2015