WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. Contact Privacy Inc. Customer 1245593832 / AAA life insurance, Roger Kim
Case No. D2020-0202
1. The Parties
Complainant is The American Automobile Association, Inc., United States of America (“United States”), represented by Covington & Burling LLP, United States.
Respondent is Contact Privacy Inc. Customer 1245593832, Canada / AAA life insurance, Roger Kim, United States.
2. The Domain Name and Registrar
The disputed domain name <aaabestlifeinsurance.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2020. On January 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2020, 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 Complainant on January 28, 2020 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 January 29, 2020.
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 proceedings commenced on January 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2020.
The Center appointed Clark W. Lackert as the sole panelist in this matter on March 9, 2020. 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 an entity that was founded over a century ago and is a provider of insurance products and services. It owns multiple registrations for marks that are composed using the letters “AAA” including the following United States registrations:
- AAA (Registration No. 829,265), registered on May 23, 1967, for automobile association services rendered to motor vehicle owners, motorists, and travelers including placing insurance with underwriters, providing emergency road services, and other travel-related services;
- AAA (composite design; Registration No. 2,158,654), registered on May 19, 1998, for services including adjusting and collecting insurance damage claims; insurance brokerage services; and other travel-related services;
- AAA (composite design; Registration No. 5,036,379), registered on September 6, 2016, for adjusting and collecting insurance damage claims; insurance brokerage services; and other travel-related services;
- AAA LIFE INSURANCE COMPANY (Registration No. 1,101,726), registered on September 5, 1978, for underwriting of life and accident insurance;
- AAA PREMIER (composite design; Registration No. 2,935,481), registered on March 22, 2005, for insurance underwriting for trip interruption, travel accidents, and reimbursement of rental care expenses; travel agency services; and emergency road side assistance services
- AAA PREMIER (Registration No. 2,900,596), registered on November 2, 2004, for insurance underwriting for trip interruption, travel accidents, and reimbursement of rental care expenses; travel agency services; and emergency road side assistance services
United States Patent and Trademark Office (“USPTO”) records confirm that Complainant has been using its AAA trademark since at least as early as 1903, and that it has held registered rights in its AAA trademark since 1967. In addition, USPTO records confirm that Complainant has been using its AAA LIFE INSURANCE COMPANY trademark since at least as early as 1970 and has held registered rights in that mark since 1978.
As shown in Exhibit E of the Complaint, Complainant maintains an active Internet presence through its website available at “www.aaa.com”. Complainant’s website prominently features its AAA trademarks and promotes its broad range of insurance services including term life policies, whole life policies, universal life insurance, and retirement annuity plans.
The disputed domain name was registered on October 4, 2019 using a privacy service.
The record confirms that the disputed domain name has been used to display the following content:
- The company name AAA life insurance company, an entity described as an “Insurance Company in Heathrow”
- Travel, home, auto, and life insurance policies promoted using Complainant’s AAA word and composite design marks and Complainant’s AAA LIFE INSURANCE COMPANY mark as registered with the USPTO
- A photo of the exterior of Complainant’s headquarters located in Heathrow, Florida, a building that prominently displays Complainant’s AAA composite design mark on its façade
- Complainant’s physical address.
Complainant’s representative sent notice letters to addresses identified in WhoIs records on November 22, 2019 and December 9 and 18, 2019 expressing its concern about the composition and content of the disputed domain name and the potential for consumer confusion and diversion of Web traffic.
5. Parties’ Contentions
Complainant has provided examples of UDRP decisions and United States case law that have acknowledged that its AAA trademarks are “valuable and famous in the United States and abroad” including Am. Auto. Ass’n, Inc. v. Spins Unlimited, WIPO Case No. D2013-1827 (December 19, 2013) which held that the AAA trademark “is well-known by the public” in view of its use in commerce since 1902 in a finding for Complainant concerning the <aaatravelersguide.com> domain name. The Complaint emphasizes that Complainant has offered its products and services to more than 50 million members in the United States and Canada, and that these offerings have included life insurance products.
Complainant alleges that the disputed domain name is confusingly similar to its AAA and AAA LIFE INSURANCE COMPANY trademarks because incorporates its well-known AAA trademark and is nearly identical to its AAA LIFE INSURANCE COMPANY trademark. Complainant dismisses Respondent’s use of the term “best” in the disputed domain name as a generic term that does not add distinction, and notes that its use of the terms “life” and “insurance” increase the likelihood of consumer confusion due to their use by Complainant in its AAA LIFE INSURANCE COMPANY trademark and the well-known status of Complainant’s AAA trademarks as used for Complainant’s insurance services. The complaint observes that the composition of the disputed domain name is likely to (i) misdirect Internet traffic destined for Complainant’s <aaa.com> domain name; and (ii) mislead Internet users to think that there is an affiliation between Complainant and Respondent.
The Complaint maintains that Respondent has not been authorized to use its AAA trademarks, that Respondent is not commonly known by the domain name, and that Respondent is not connected to or affiliated with Complainant in any manner. In addition, Complainant notes that Respondent has been using the domain name to promote life insurance services and falsely claim that those services are the same services that are provided by Complainant under its AAA trademarks.
The Complaint alleges that the disputed domain name was registered in bad faith because it is confusingly similar to Complainant’s AAA trademarks and is therefore designed to divert Internet users who may be seeking Complainant’s services. The Complaint further alleges that the disputed domain name has been used in bad faith because its content falsely suggests that it is an authorized resource for Complainant’s products. Complainant proposes that there are further indications of bad faith based upon Respondent’s adoption of a domain name that incorporates Complainant’s well-known AAA trademark and Respondent’s continued use of the domain name despite Complainant’s notice letters that outlined its trademark rights and potential for consumer confusion and/or misdirection of Internet traffic that could likely result from Respondent’s activities.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel has reviewed the record and finds that the Policy requirements have been satisfied as follows.
A. Identical or Confusingly Similar
Complainant has demonstrated ownership of its AAA trademarks in word and composite design forms and its AAA LIFE INSURANCE COMPANY trademark. Complainant’s rights in its AAA marks can be traced to 1902, and it has owned registrations for its AAA mark and its AAA LIFE INSURANCE COMPANY mark since 1968 and 1978, respectively. The Panel notes that Complainant’s trademark rights precede the adoption of the disputed domain name in October of 2019.
The disputed domain name is confusingly similar to Complainant’s distinctive AAA composite and word trademarks because it has been composed using Complainant’s AAA mark in its entirety and combines this distinctive mark with other terms, namely “best” and “life insurance”. When a domain name wholly incorporates a mark in a recognizable manner, the addition of non-distinctive text does not remedy the confusing similarity to the mark. Verizon Trademark Services LLC v. Jesse Cryderman, Megadot Productions, WIPO Case No. D2017-1207 (holding that the term “best” in the domain name <bestverizonplan.com> did not add distinction). See also section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
The disputed domain name is confusingly similar to Complainant’s AAA and AAA LIFE INSURANCE COMPANY trademarks. The requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
There is no evidence in the record that Respondent has been commonly known by the disputed domain name or that Respondent has relevant trademark rights. There is also no evidence that Respondent has made demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services. The record shows that the disputed domain name has been used to promote services that are identical to those provided by Complainant under its trademarks, and that this use has been undertaken to pose as Complainant or represent that Respondent is somehow associated with Complainant.
The Panel finds that Complainant has made its prima facie case and that Respondent has not rebutted the Complainant’s contentions. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Complainant’s AAA trademarks have been acknowledged as well-known marks. See, e.g., The American Automobile Association, Inc. v. RadsheeyLonalasho, WIPO Case No. D2012-1888 (observing that the AAA trademarks are “long-standing and widely recognized” and that Complainant’s insurance services are “well-known” while finding bad faith registration of the <aaalife-insurance.com> domain name); see also The American Automobile Association, Inc. v. Alex Agahi, WIPO Case No. D2012-0547 (observing that Complainant “has been using AAA widely and continuously” and it was therefore “extremely difficult to conceive of a plausible situation” in which the respondent “would have been unaware that AAA belonged to another party” when it registered the <aaainsuranceusa.com> domain name). The Panel agrees that Complainant has established that the disputed domain name could not have been adopted in good faith due to its similarities to the well-established AAA and AAA LIFE INSURANCE COMPANY trademarks.
The record also supports a finding of bad faith registration and use based upon paragraph 4(b)(iv) of the Policy which states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. The record shows that the disputed domain name has been used by Respondent to create the false impression that the content promoted at the disputed domain name is provided by or authorized by Complainant. Specifically, content posted at the disputed domain name has featured identical copies of Complainant’s AAA word and design trademarks while promoting insurance programs and services that are highly similar to those provided by Complainant under these marks. In addition, Respondent has gone out of its way to pose as Complainant by citing Complainant’s physical address as its own, by posting a stock image of Complainant’s headquarters on one of its webpages (an image that prominently features Complainant’s AAA design mark), and by identifying its organization’s name as “AAA Life Insurance” in the underlying WhoIs records associated with the disputed domain name.
Finally, it should be noted that Respondent utilized a privacy service to register the disputed domain name. While use of such a service can be legitimized by privacy concerns, masking of registrant details in this case supports an inference of bad faith due to the other indications of bad faith that are detailed above. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.In addition, Respondent’s lack of a response to this Complaint also supports an inference of bad faith when coupled with the other evidence in the record.
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <aaabestlifeinsurance.com>, be transferred to Complainant.
Clark W. Lackert
Date: March 23, 2020