WIPO Abitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. Discover Domains / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org
Case No. D2016-0572
1. The Parties
Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
Respondent is Discover Domains of Haryana, India / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Australia.
2. The Domain Name and Registrar
The disputed domain name <aaa2bcars.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2016. On March 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 29, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on March 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 21, 2016.
The Center appointed Stephanie Hartung as the sole panelist in this matter on April 26, 2016. 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 a corporation organized under the law of Connecticut, United States of America, that provides travel, automotive, insurance, financial, and other products and services under the AAA mark.
Complainant has provided evidence that it is the owner of numerous registered trademarks relating to the designation AAA, inter alia:
- Word mark AAA, United States Patent and Trademark Office (USPTO), Registration No. 0829265, Registration Date: May 23, 1967; Status: Active;
- Word-/device mark AAA, USPTO, Registration No. 2158654, Registration Date: May 19, 1998; Status: Active.
The disputed domain name <aaa2bcars.com> was created on June 30, 2015; at the time of rendering this decision, it resolves to a typical pay-per-click (PPC) website at “www.aaa2bcars.com” that provides for various hyperlinks to third party websites not specifically tailored to Complainant. This website is headed by a banner ad stating: “Click here to buy AAA2bCars.com for your website name!”.
Complainant sent cease and desist letters to Respondent under the WhoIs contact details provided for the disputed domain name on February 8, 2016 as well as on March 3, 2016, to which Respondent did not reply.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends that it has long used its AAA trademark in commerce in connection with a broad variety of goods and services and that, therefore, the AAA trademark is today valuable and famous in the United States of America and abroad.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s AAA trademark since (1) the disputed domain name includes the entire AAA trademark; and (2) adding generic terms such as “car” to the AAA trademark even heightens the likelihood of consumer confusion because “AAA” is well known for providing automobile related products and services.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Complainant has not licensed or authorized Respondent to use the AAA trademark; (2) there is no evidence that Respondent is commonly known by the disputed domain name; and finally (3) using the disputed domain name as a parking page constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Respondent registered a domain name confusingly similar to Complainant’s AAA trademark to divert Internet users seeking Complainant’s services to Respondent’s website; (2) using the disputed domain name to advertise automobile services in competition with Complainant is disruptive of Complainant’s business; (3) given the AAA trademark’s substantial fame in the United States of America and abroad, it must be presumed that Respondent had actual or constructive knowledge thereof when registering the disputed domain name; (4) Respondent is attempting to sell the disputed domain name; and finally (5) Respondent cloaked its identity by using a privacy protection service.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <aaa2bcars.com> is confusingly similar to the AAA trademark in which Complainant has shown itself to have rights.
The disputed domain name incorporates the AAA trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in numerous UDRP decisions and has become a consensus view among panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9), that the addition of a generic, descriptive or geographical term to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition in the disputed domain name of the number and the letter “2b” (which can also be read as a synonym for “to be”) and the generic term “cars” (which even refers to Complainant’s core business) is not at all capable of dispelling the confusing similarity arising from the incorporation of Complainant’s AAA trademark therein.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial or fair use thereof without intent for commercial gain.
Complainant has produced evidence that the disputed domain name resolves to a typical PPC website at “www.aaa2bcars.com” which in turn redirects Internet users to a variety of third party websites which are not at all specifically tailored to Complainant but connect, inter alia, to some of Complainant’s competitors on the automobile market. The Panel, therefore, concludes that the disputed domain name – irrespective of the alleged reputation of the AAA trademark throughout the world – obviously alludes to Complainant’s AAA trademark and its automobile business and services. Such use of the disputed domain name to seek “pay-per-clicks” from those diverted Internet users who are trying to reach Complainant but due to the confusing similarity of the disputed domain name with Complainant’s AAA trademark end up with Respondent’s Internet presence at “www.aaa2bcars.com” is neither noncommercial because it has the predominant purpose of generating advertising revenues, nor is it fair because Internet users by confusion are brought to a general website with information about a variety of businesses and services that are not specifically tailored to Complainant.
Moreover, Respondent has not been authorized to use Complainant’s AAA trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests with respect to the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations, neither as they were included in the cease and desist letters of February 8, 2016 and March 3, 2016, nor as they are set forth in the Complaint duly notified to Respondent by the Center on March 31, 2016.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s AAA trademark, to a standardized PPC website in order to generate “pay-per-clicks” without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s AAA trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only made use of a privacy service, presumably in order to conceal its true identity, but that it kept silent on both of Complainant’s cease and desist letters of February 8, 2016 and March 3, 2016 as well as on the Complaint. These facts taken together throw a light on Respondent’s behavior which supports the conclusion of registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 <aaa2bcars.com> be transferred to Complainant.
Date: April 29, 2016