WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. ("AAA") v. Dafinsa, Charles Palmerin / WhoisGuard, Inc.
Case No. D2016-0789
1. The Parties
The Complainant is AAA of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
The Respondent is Dafinsa, Charles Palmerin of Yorba Linda, California, United States of America / WhoisGuard, Inc. of Panama, Panama.
2. The Domain Names and Registrar
The disputed domain names <aaaemergencycard.com> and <tripleaemergencycard.com> are registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2016. On April 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <aaaemergencycard.com>. On April 22, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for that disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same date.
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 the Respondent of the Complaint, and the proceedings commenced on May 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on June 6, 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.
After filing the complaint in this action, the Complainant initiated WIPO Case No. D2016-1058, concerning a similar domain name, <tripleaemergencycard.com>. The Complainant later learned that the Respondent in that action is the same person as the Respondent in this action and requested the two proceedings be consolidated.
Finding that the two proceedings involve the same parties, the same marks, and nearly identical domain names resolving to similar websites, the Panel entered a Procedural Order on June 8, 2016 notifying the parties that the cases were being considered for consolidation on a provisional basis.
When entering that Procedural Order, the Panel was aware that the Respondent had not yet been formally notified of WIPO Case No. D2016-1058. In light of the similarities of the two matters, as just noted, the Panel allowed the Respondent an additional period of time to respond to the Complainant's contentions regarding <tripleaemergencycard.com>, including as to the requested consolidation. The Respondent was granted through June 18, 2016 to substantively reply to the Complainant's contentions, if it so wished, as well as to comment on the Panel's consideration of the Complainant's request to consolidate. The Respondent has filed no response whatsoever in either of the two actions. The Panel entered Procedural Order No. 2 on July 1, 2016, and determined to grant the Complainant's request to consolidate WIPO Case No. D2016-0789 and WIPO Case No. D2016-1058. Noting the Complainant's request to consolidate and the lack of objection by the Respondent, WIPO Case No. D2016-1058 is terminated and the domain name <tripleaemergencycard.com> is included into WIPO Case No. D2016-0789.
4. Factual Background
The following facts, relevant to the Panel's determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant owns the famous mark AAA which it uses for, among other things, roadside emergency services. It has several registrations for different iterations of the mark, including one dating back to 1967 (Reg. No. 829, 265). The Complainant also owns the mark TRIPLE A (U.S. Reg. No. 1,168,790) for which it was issued a registration by the United States Patent and Trademark Office in 1981 for, among other things, automobile association services. (The marks AAA and TRIPLE A will be referred to herein as the "Marks".) The Respondent registered the disputed domain names and used them to host "parking pages" with what appear to be sponsored links referencing emergency roadside services.
The disputed domain names were registered on September 1, 2015 and both resolve to pages hosting sponsored links relating to roadside automobile assistance.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant's registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to each disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its registrations of the Marks, including registrations which predate the registration of the disputed domain names. On the basis of these registrations, the Panel is satisfied that the Complainant has rights in the Marks.
The Panel also finds that the disputed domain names are confusingly similar to the Marks. "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark." See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.
In this case, the disputed domain names contain the Marks in their entirety. The addition of the words "emergency card" does nothing to diminish this confusing similarity. As the panel held in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it". In the present case, the dominant element in the disputed domain name is the Marks. The words "emergency card" are, in light of the nature of the Complainant's emergency roadside services and automobile association services, entirely generic.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests ("you" and "your" in the following refers to the particular respondent):
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In this case, the Panel credits the Complainant's assertion that to its knowledge, the Respondent is not using and has not used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Further, the Complainant asserts, and the Panel accepts, that the Respondent is not or has been known in the past by the disputed domain names. Further, based on the record, the Respondent is not making and has never made any legitimate noncommercial use of the disputed domain names.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain names, and the Complainant has prevailed on this element of the UDRP.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain names were registered and are being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent's bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or a product or service on [the respondent's] web site or location".
In this case, it is clear that the purpose of registering the disputed domain names was primarily to rely on the value of the Marks in order to confuse Internet users into believing that the websites connected to the disputed domain names were associated with the Complainant's services, to attract Internet users to the Respondent's websites, and to generate revenue via sponsored links.
The Complainant has prevailed on this third element of the UDRP.
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 <aaaemergencycard.com> and <tripleaemergencycard.com> be transferred to the Complainant.
Evan D. Brown
Date: June 24, 2016