WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. Charles Franklin, The Freedom Law Firm, P.A.
Case No. D2016-1439
1. The Parties
Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America (“United States” or “U.S.”), represented by Covington & Burling, United States.
Respondent is Charles Franklin, The Freedom Law Firm, P.A. of Orlando, Florida, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <aaatowingorlando.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2016. On July 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2016. On August 10, 2016, Respondent requested an extension to file his Response pursuant to paragraph 5(b) of the Rules. On the same date the Center notified the parties that the Response due date was extended to August 14, 2016. The Response was filed with the Center on August 13, 2016.
Complainant filed a Supplemental Filing on August 17, 2016.
The Center appointed John C. McElwaine as the sole panelist in this matter on August 31, 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.
As an initial matter, as set forth herein, Complainant filed a Reply to Respondent’s Response. Under the Policy and the Rules, parties have no right to unilaterally submit additional arguments or evidence beyond the Complaint and Response. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 12 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion. The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The Panel has not requested any such further statement and will treat Complainant’s submission as a request to make a further statement. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.2, the majority view is that a party desiring to make a supplemental filing must show “exceptional circumstances.” Here, Complainant asserts that Respondent has made misleading claims in its Response. However, no detail as to what statements were misleading were provided in its request and the substance of the Reply is not deemed to be justified by exceptional circumstance. As such, the Panel will not consider the statements made in the Complainant’s Reply to Respondent’s Response.
4. Factual Background
Complainant is The American Automobile Association, Inc., the largest federation of motor clubs in North America with its principal place of business located in Heathrow, Florida. Complainant offers automobile-related products and services to its members, including emergency roadside services and towing.
Complainant owns numerous United States federal trademark registrations for marks containing the letters “AAA” (the “AAA Mark”), including:
U.S. Reg. No. 829,265 for the mark AAA reciting “providing emergency road service”;
U.S. Reg. No. 1,327,400 for the mark AAA PLUS for “emergency road services”;
U.S. Reg. No. 1,448,079 for the mark AAA APPROVED AUTO REPAIR for “automobile repair services”;
U.S. Reg. No. 2,158,654 for the mark AAA for “emergency road services”;
U.S. Reg. No. 2,900,596 for the mark AAA PREMIER for “emergency road side assistance services”; and
U.S. Reg. No. 2,935,481 for the mark AAA PREMIER (stylized) for “emergency road side assistance services”.
On September 4, 2011, Respondent registered the Domain Name. The Domain Name resolves to a website for A&A Towing and Recovery, which is an Orlando, Florida business offering vehicle towing, roadside assistance, auto body repair and junk vehicle purchasing.
5. Parties’ Contentions
Complainant bases its Complaint on its exclusive ownership of U.S. federal trademark registrations and common law rights in the United States in its AAA and associated trademarks, which it has long used in commerce in connection with a broad variety of goods and services. In particular, since its founding over 100 years ago, Complainant has offered automobile-related goods and services to its more than 50 million members located in the United States and Canada.
Complainant asserts that on or around March 2, 2016, Complainant discovered that Respondent was using the Domain Name to host a website advertising services under the name A&A Towing & Recovery. As a result, on March 8, 2016, Complainant sent a letter to the address listed on the WhoIs record and to the business address listed on the underlying website, notifying Respondent that its use of the Domain Name constitutes trademark infringement, trademark dilution, and unfair competition and requesting that Respondent cease use of the AAA trademarks. On April 5, 2016 and May 5, 2016, after receiving no response to its initial letter, Complainant sent follow up letters reiterating its requests. Counsel for Complainant also sent an additional letter, likewise notifying Respondent of its infringement and requesting that Respondent cease use of the AAA trademarks. Respondent failed to respond to any of these communications and continues to operate a website at the Domain Name.
With respect to the first element of the Policy, Complainant alleges that it owns common law and U.S. federal trademark registrations containing the letters AAA. Annex G to the Complaint. Complainant asserts that the Domain Name is confusingly similar to Complainant’s AAA trademarks because the Domain Name includes the letters “AAA,” with the addition of the generic term “towing” and the geographically descriptive term “Orlando,” a well-known city in Florida. The risk of confusion is allegedly heightened because the term “Orlando” is geographically descriptive and the term “towing” is a component of Complainant’s well-known emergency roadside services.
With respect to the second element of the Policy, Complainant first asserts that it has established trademark rights in the AAA trademarks and has not licensed or authorized Respondent to use such marks in connection with its business or as part of the Domain Name. Second, Complainant asserts that there is no evidence that Respondent is commonly known as “AAA Towing Orlando” and that Respondent is, instead, using the Domain Name to advertise a business called “A&A Towing & Recovery.” Complainant adds that Respondent must have been aware of Complainant’s AAA trademarks when registering the confusingly similar Domain Name with the intent to divert Internet users seeking Complainant’s products and services to Respondent’s website.
With respect to the third element of the Policy, Complainant contends that Respondent registered a domain name confusingly similar to the AAA trademarks to divert Internet users seeking AAA’s services to Respondent’s website. Complainant further asserted that Respondent’s registration and use of the Domain Name to advertise emergency roadside services in competition with Complainant and without any legitimate interest in that domain name, is disruptive of Complainant’s business and is further evidence of bad faith registration under UDRP Policy section 4(b)(iii). Finally, Complainant points out that Respondent’s registration and use of the Domain Name must have been done with knowledge of Complainant’s well-known AAA trademark.
Respondent begins by asserting that the facts of this case mirror the facts stated in the case of The American Automobile Association, Inc. v. Adam Cooper - AAA Locksmith, WIPO Case No. D2015-0683. Allegedly similar to the respondent in American Automobile Association, Inc. v. Adam Cooper - AAA Locksmith, supra, Respondent claims that it registered the Domain Name to reflect the name of the business and that this business is located in Orlando, Florida.
Respondent contends that the reference to “AAA Towing” refers to a commonly used rank on an alphabetical
grading scale and that the use of “AAA” had absolutely nothing to do with Complainant.
Respondent points out that it has not tried to impersonate or tarnish Complainant, does not offer membership services, and, unlike Complainant, its business offers full auto body repair services as well as the purchasing of junk vehicles. Respondent also asserts that his webpage is different in its appearance and look and feel to that of Complainant.
With respect to the first element of the Policy, Respondent counters that the Domain Name is not confusingly similar to Complainant’s AAA PREMIER mark. Respondent reiterates that use of the terms “AAA towing” in the Domain Name are intended to refer to “a rank on an alphabetical grading scale,” and are not intended to reference Complainant. Respondent further argues that the Domain Name should not be considered confusingly similar to Complainant’s AAA trademark because the term “AAA” is commonly used by businesses and is weak.
With respect to the second element of the Policy, Respondent asserts that it registered the Domain Name for reasons completely unrelated to Complainant or its trademarks. Respondent further asserts that it has used the Domain Name before it was first notified by Complainant to direct the public “to the company’s website,” which advertises towing, auto-body repair, road-side services and purchasing of junk vehicles. As demonstrated by the screenshots attached to the Complaint and Response, the company is doing business as “A&A Towing & Recovery.”
With respect to the third element of the Policy, Respondent asserts that for Complainant to succeed, it must prove that Respondent registered the Domain Name with Complainant’s trademark rights in mind and with an abusive intent. In support that it did not have an abusive intent, Respondent asserts that (i) it has never tried to impersonate or tarnish Complainant in any way; (ii) does not offer membership-based services; and (iii) unlike Complainant, it also offers full auto body repair services as well as the purchasing of junk vehicles. Respondent asserts that there is an important difference between offering towing services and Complainant membership which provides roadside services. Respondent also reiterates that the parties’ respective webpages look different. Respondent concludes by requesting that the Panel find that its reference to “AAA Towing” in the Domain Name refers to a common rank on an alphabetical grading scale and that it has nothing to do with Complainant.
6. Discussion and Findings
Paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant bears the burden of establishing each of the three elements by a preponderance of the evidence. See, e.g., F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629. Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As an initial matter, although Complainant bases its Complaint on its federal and common law trademark rights, Complainant fails to submit sufficient evidence of use of its AAA Mark on a common law basis. However, the Panel finds that Complainant has rights in the AAA Mark as evidenced by its incontestable trademark registrations for AAA, U.S. Reg. Nos. 829,265 and 2,158,654 for emergency road services, which include towing services. In addition, Complainant owns numerous United States trademark registrations containing the letters “AAA.” Annex G to the Complaint.
The Domain Name <aaatowingorlando.com> is confusingly similar to Complainant’s AAA Mark because it contains Complainant’s AAA Mark in its entirety plus the words “towing” and “Orlando.” It is well-established that the addition of a geographically descriptive or generic word to a trademark in a domain name, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. Also, the addition of the generic Top-Level Domain (“gTLD”) “.com” to a domain name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of the gTLD is technically required to operate the Domain Name.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant’s AAA Mark.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the disputed domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141 (discussing and citing the WIPO Overview 2.0, paragraph 2.1); see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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.”
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name. In particular, Complainant has demonstrated that there is no evidence in the WhoIs data for the Domain Name that Respondent has been commonly known by the term “AAA Orlando Towing” and that Respondent is, instead, using the Domain Name to advertise a business called “A&A Towing & Recovery.” In fact, Complainant astutely points out that Respondent is The Freedom Law Firm and no explanation is ever provided by Respondent as to why a law firm is operating “A&A Towing & Recovery.” Complainant asserts that it has well-known and established trademark rights in the AAA Mark and has not licensed or authorized Respondent to use such marks in connection with its business or as part of Domain Name.
In response, Respondent asserts that its use of “AAA” in the Domain Name is to improve its “rank on an alphabetical grading scale.” As evidentiary support, Respondent refers the Panel to screenshots demonstrating purported use of the trade name “A&A Towing & Recovery.” However, the Panel is not persuaded that use of “AAA” in the Domain Name by Respondent is meant to improve its alphabetical ranking. As an initial matter, the trade name of Respondent is “A & A” not “AAA”. A more accurate and appropriate domain name would begin with “aanda”. Moreover, Respondent does not provide any explanation as to why it omitted the term “Recovery” in its trade name from the Domain Name. Lastly, Respondent provides no proof whatsoever, including in alphabetical directories such as a telephone or online directory, that it has used, or has been commonly known as, “AAA Towing Orlando.” Instead, Respondent points only to its use of “A&A Towing & Recovery”, which illustrates that it has been known by “A&A Towing &Recovery” and not by the Domain Name. The Panel is unconvinced that Respondent is commonly known by the Domain Name or that Respondent is making a legitimate fair use of the Domain Name.
With respect to using the Domain Name for the bona fide offering of towing services, Respondent asserts that “Complainant has not shown how any of its marks associated with towing or roadside services is substantially and confusingly similar to the Domain Name”. However, the Panel has found that the Domain Name is confusingly similar to Complainant’s AAA Marks. See Section A, supra. Moreover, the Panel believes that persons viewing the Domain Name would likely think that the Domain Name is in some way connected to the Complainant. Complainant offers towing services as part of its emergency roadside services. Respondent offers towing services and other related automotive repair and recovery services. The fact that Respondent offers other services that may not be identical, but which are related, is not determinative. See Lockheed Martin Corp. v. Deborah Teramani, WIPO Case No. D2004-0836 (registering domain names that include a famous mark in combination with other terms “would undoubtedly cause Internet users intending to access Complainant’s website, but who reach a website through any of the disputed domain names, to think that an affiliation of some sort exists between the Complainant and the Respondent, when, in fact, no such relationship would exist at all”).
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name and Respondent has failed to rebut that showing. For all of the reasons discussed above, the Panel accepts that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(a)(iii) of the Policy.
A non-exhaustive list of what factors constitute bad faith registration and use is set out in paragraph 4(b) of the Policy, including paragraph 4(b)(iv). Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Bad faith can be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722. Complainant contends that Respondent must have known of Complainant’s well-known AAA Mark when it registered the Domain Name. Respondent resides in Florida, which is the same state as Complainant’s principal place of business. The Panel accepts that the AAA Mark is well-known in the automobile industry, particularly in the field of roadside services, including towing. Such a finding has been confirmed by previous UDRP decisions. See, e.g., The American Automobile Association, Inc. v. Spins Unlimited , David Snyder, WIPO Case No. D2013-1827; The American Automobile Association, Inc. v. New Cars Lowest Prices, WIPO Case No. D2011-0337.
There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942 (“the Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself”), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
Respondent asserts that its use of the term “AAA” in the Domain Name was not undertaken to trade off the trademark rights of Complainant but instead that it registered the Domain Name to reflect the name of the business “A&A Towing & Recovery.” However, this argument falls short as the Domain Name bears little resemblance to this business name and leaves the Panel with only one plausible explanation; namely, that the Domain Name was registered and used to draw an association with Complainant’s AAA Mark. Moreover, Respondent asserts that it does not offer membership-based roadside services, nor did it impersonate or tarnish Complainant. However, these points are irrelevant because, as discussed above, Respondent and Complainant offer competing towing services and Respondent’s other services are highly related to services offered by Complainant.
Relying upon The American Automobile Association, Inc. v Domains by Proxy, LLC a/k/a Tamir Zaid, aaa locksmith services, WIPO Case No. D2014-0122 (the “Zaid Case”), Respondent argues that the AAA Mark is so common and weak that AAA cannot be found to be confusingly similar to the Domain Name. However, such an assertion overstates the holding by this panel. A mark may be considered weak, if evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (evidence of third-party use of similar marks for similar goods “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection”). No such evidence of use of the mark AAA by third-parties in connection with roadside services or towing services is presented by Respondent or was found in the Zaid case. However, as discussed by the panel is the Zaid case,
“A trademark may be widely known among consumers in connection with a class or classes of goods and services, yet not distinctive in the sense of being a unique or differentiated term. A number of recent decisions involving Legal Rights Objections with respect to new top level domains approved by ICANN demonstrate this distinction. Trademark such as ‘Coach’, ‘Express’ and ‘Limited’ may be well-known with respect to certain classes of goods, or among certain categories of consumers, but these terms remain widely used by the general public in other contexts, and are not distinctive from a dictionary or linguistic standpoint.”
In the Zaid Case, the panel was not convinced that the mark AAA was well-known and strong in the field of locksmiths. However, this field is not at issue here. The AAA Mark is strong and well-known in the field of roadside services, which most importantly and prominently includes towing services.
In sum, the Domain Name is confusingly similar to the Complainant’s well-known AAA Mark. Previous UDRP panels have ruled, in the context of commercial websites that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site”. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657 (“prior UDRP panels have established that attracting Internet traffic to a commercial website by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.”)
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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 Domain Name, <aaatowingorlando.com>, be transferred to Complainant.
John C McElwaine
Date: September 14, 2016