WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AA PLC and AA Brand Management Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Obrien
Case No. D2018-1198
1. The Parties
The Complainants are AA PLC and AA Brand Management Limited of Basingstoke, United Kingdom of Great Britain and Northern Ireland (“UK” or “United Kingdom”), represented by Demys Limited, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / John Obrien of Coventry, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <wwwtheaa.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 June 6, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 7, 2018. On the same date, the Complainant filed an additional amendment to the Complaint.
The Center verified that the Complaint together with the amended Complaint and additional amendment to 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 the Respondent of the Complaint, and the proceedings commenced on June 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 9, 2018. 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 First Complainant, AA PLC, is a British motoring association whose origins via predecessor bodies date back to 1905. It provides a range of services relating to motoring including car insurance, driving lessons, breakdown cover, loans, motoring advice, road maps and other services. The First Complainant is listed on the London Stock Exchange. The Second Complainant, AA Brand Management Limited, holds assets such as domain name and trademark registrations, on behalf of the First Complainant.
For the year ended January 31, 2018 the Complainants enjoyed trading revenue of GBP 959m (c. USD 1,302m) and operating profit of GBP 307m (c. USD 416m).
The Complainants operate their own website from the website “www.theaa.com” and have since at least 1997.
The Disputed Domain Name was registered on August 21, 2003. It is linked to a webpage which contains “pay per click” advertising relating to the Complainants’ area of business including headings such as: Breakdown Travel; Breakdown Recovery; Breakdown Assistance; Roadside Breakdown; Car Companies Breakdown Cover. When these links are clicked, web users are taken to third party websites including those operated by the Complainants’ competitors.
The Second Complainant has provided evidence that it is the registered owner of several registered trademarks for the term AA, the oldest of which is UK Trade Mark No. 362557, registration date July 16, 1914. These trademarks are referred to in this decision as the “AA Trademark”. The Complainants have also filed evidence which establishes that they have common law rights in the term AA but it is not necessary to set that out in any detail.
5. Parties’ Contentions
The Complainants’ contentions are as follows.
The Disputed Domain Name is similar to the AA trademark as it simply adds the definite article “the” and then simply uses a website type of address with the letters “www” but omits the full stop (period) that is normally present as part of a website address.
The Respondent has no rights or legitimate interests in the term “wwwtheaa” or “theaa” or “aa”. The Complainants say that the term AA is widely recognised as referring to the Complainants particularly in the United Kingdom and the Respondent has no authorization to use the term.
In consequence the Complainants allege that the Disputed Domain Name was registered and is being used in bad faith. They say that this is classic “typosquatting” and linking to a page with pay per click links in such a case clearly establishes registration and use in bad faith.
No Response has been filed.
6. Discussion and Findings
Procedural Matters: Joint Complainants
The Panel agrees with the Complainants that they are entitled to bring this Complaint jointly, adopting the approach set out in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which discusses the issue of multiple complainants filing against a single respondent and which notes:
“In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.
The Panel considers both (i) and (ii) apply.
Procedural Matters: Respondent Identity
The Panel notes this is a case where one of the Respondents (WhoisGuard Protected, WhoisGuard, Inc.) appears to be a privacy or proxy registration service while the other Respondent (John Obrien) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview 3.0 at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.
In the present case the Panel finds the substantive Respondent to be John Obrien and references to “the Respondent” are to that person unless otherwise stated.
Procedural Matters: No Response
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Procedural Matters: Delay
The Disputed Domain Name was registered some 15 years ago. The Panel agrees with the Complainants that this is not however a bar to this Complaint proceeding. The Panel adopts the generally accepted approach of UDRP panels as set out in WIPO Overview 3.0 at section 4.17 as follows:
“Does ‘delay’ in bringing a complaint bar a complainant from filing a case under the UDRP?
Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.
Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations.
Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.
Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.”
There is no evidence in the present case to suggest that any delay prevents this Complaint from proceeding.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainants must satisfy the Panel in that:
(i) The Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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 Panel considers the Disputed Domain Name to be confusingly similar to the Complainants’ AA Trademark. It simply adds the non-distinctive word “the” together with the common acronym for “worldwide web” which is the standard prefix for websites.
It is established that the addition of a generic or descriptive term to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
See also Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Milen Radumilo, WIPO Case No. D2017-2003, which concerned the domain name <wwwleclerc.com> as to omission of a full stop (period) after the letters “www”.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The letters AA are clearly in the United Kingdom commonly associated with the Complainants although there could conceivably be other persons also having a legitimate interest in those letters as an acronym for any two words beginning with the letter A. However in the present case there is no evidence at all that this is likely to be applicable. So far as the Policy is concerned paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the AA Trademark. The Complainants have prior rights in the AA Trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainants have therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, it is clear that the Respondent’s registration of the Disputed Domain Name was simply a case of “typosquatting” and was intended to derive revenue from Internet users who inadvertently omitted the full stop (or period) in the Complainants’ own web address “www.theaa.com”. As such this is a classic example of registration and use in bad faith, as numerous previous UDRP panel decisions have held. See for example Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568, which related to the domain names <fodaddy.com>, <gidaddy.com> and <gpdaddy.com> which the panel held were confusingly similar to the complainant’s GO DADDY mark, noting:
“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site . . . by creating a likelihood of confusion with the complainant’s mark as to the source’ of the web site. Here, such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services”.
The present case is precisely the same.
Further the Panel notes that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <wwwtheaa.com> be transferred to the First Complainant.
Nick J. Gardner
Date: July 23, 2018