WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AA Limited, AA Brand Management Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Pat Bool

Case No. D2021-1568

1. The Parties

The Complainants are AA Limited and AA Brand Management Limited, United Kingdom, represented by Demys Limited, United Kingdom.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Pat Bool, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <theaa-services.com> 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 19, 2021. On May 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2021, 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 Complainants on May 21, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint on May 24, 2021.

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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2021.

The Center appointed Gareth Dickson as the sole panelist in this matter on June 22, 2021. 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 Complainants are two entities within a group of related companies. AA Limited is that group’s main trading entity while AA Brand Management Limited, inter alia, holds trade mark registrations on behalf of the group’s companies. The Complainants reported trading revenues of nearly GBP 1billion in the last financial year and operate a website at “www.theaa.com”.

The Complainant is the owner of a number of trade mark registrations for or incorporating AA (the “Mark”) around the world, including:

- United Kingdom trade mark registration number 362557, registered on July 16, 1914;
- United Kingdom trade mark registration number 2059928, registered on April 5, 2002; and
- European Union Trade Mark registration number 120774, registered on July 14, 1999.

The disputed domain name was registered on April 27, 2021. It currently directs Internet users using a desktop browser to the Complainants’ main website, whereas it directs Internet users using a mobile device to a website which imitates the Complainants’ customer login page, and asks users to submit personal data including names, dates of birth and phone numbers, as well as credit card and/or direct debit banking details. The postal address provided by the Respondent upon registration of the disputed domain name is not a genuine postal address.

5. Parties’ Contentions

A. Complainants

The Complainants argue that they have rights in the Mark by virtue of their ownership (via the second Complainant) of various trade mark registrations for the Mark around the world, and that they have unregistered rights in “THE AA”, which has been used by the Complainants, their predecessors and others, since 1905. They contend that the Mark is similar to “THE AA”, and that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) with the addition of “the” before “AA”, a hyphen (“-”) after “AA”, and the descriptive term “services”, under the generic Top-Level Domain (“gTLD”) “.com”.

The Complainants confirm that the disputed domain name was registered by the Respondent without their permission and that the Respondent is not a licensee of either Complainant. They argue that the Respondent has been using the disputed domain name to persuade customers of the Complainants to send to it personal and payment data to which it has no right or lawful interest.

The Complainants submit that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it (the disputed domain name having been used specifically for the purposes of obtaining money from third parties by deception); or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services.

The Complainants submit that the Respondent must have known of the Complainants and the Mark when it registered the disputed domain name in light of the Respondent’s use of the disputed domain name in association with a website designed to mimic as closely as possible the Complainants’ website.

Finally, the Complainants argue that the use of a domain name for per se illegal activity is manifest evidence of bad faith use of the disputed domain name. The Complainants also note that the Respondent has used a privacy service to conceal its identity for as long as possible, and that the postal address given by the Respondent is not a genuine postal address.

Together, the Complainants submit that the Respondent is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:

a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.

These criteria are cumulative. The failure of the Complainants to prove any one of these elements means the Complaint must be denied.

Before addressing these criteria, the Panel must first note that this Complaint is in the name of two complainants. That arrangement, while not typical in UDRP disputes, is permitted.

Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that multiple complainants may file a complaint against a single respondent where (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 is satisfied that both criteria are satisfied here.

A. Identical or Confusingly Similar

The Panel accepts that the Complainants, through the second Complainant, are the owner of, and therefore have rights in, the Mark.

Section 1.7 of the WIPO Overview 3.0 provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

Section 1.8 of the WIPO Overview 3.0 further provides that: “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 Panel therefore finds that, for the purposes of the Policy, the disputed domain name is confusingly similar to the Mark, since the disputed domain name incorporates the Mark in its entirety.

The Panel notes that the tests set out above may be more likely to be satisfied where a trade mark comprises only a very small number of letters, such as is the case with the Mark. That does not mean, however, that the proprietors of such marks are in any way favoured under the UDRP by these tests, as their complaints will still have to satisfy the second and third limbs of paragraph 4(a) of the Policy and that that requirement may in fact be harder to satisfy where shorter trade marks are at issue. In any event, the Panel accepts the Complainants’ evidence that they are known in commerce as “The AA”, that they have at least unregistered rights in “THE AA” for the purposes of the Policy, and that the disputed domain name is similar to “THE AA”, for the reasons set out above. The Respondent’s addition of “the” before “aa” and “services” after “aa”, does not prevent a finding of confusing similarity. The further addition of a hyphen between “theaa” and “services” in the disputed domain name does not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com”.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

In the current proceeding, the Complainants have established their prima facie case. The Complainants state that they have not given the Respondent permission to use the Mark, in a domain name or otherwise, and submit that the Respondent has not been commonly known by the disputed domain name.

There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.

Furthermore, the redirection of Internet users to a website designed to mimic the Complainants’ website in order to gather their personal data and financial information does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”

By not participating in these proceedings, the Respondent has failed to refute the Complainants’ prima facie case that it has met its burden under the second UDRP element.

As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the disputed domain name was registered many years after the Mark was first registered and the Complainants’ predecessors began to use “The AA”, and accepts that the disputed domain name was chosen by reference to the Mark. The Respondent’s efforts to mimic the Complainants’ website puts that point beyond any doubt.

As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainants’ rights in the Mark when it registered the disputed domain name.

The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith.

The disputed domain name is also being used in bad faith.

Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.” The disputed domain name directs Internet users to a website that closely imitates the Complainants’ website in an effort to deceive those users, for commercial gain, as to the origin and legitimacy of the request they encounter there for disclosure of their personal and financial data. Those users would not, if they knew that the disputed domain name did not belong to the Complainants, submit such valuable and sensitive information voluntarily.

Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.

The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

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, <theaa-services.com>, be transferred to the First Complainant.

Gareth Dickson
Sole Panelist
Date: July 8, 2021