WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Automobile Association, Inc. v. Power Click
Case No. D2021-2108
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 Power Click, United States.
2. The Domain Name and Registrar
The disputed domain name <aaaautosalessd.com> 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 1, 2021. On July 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 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 Complainant on July 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 8, 2021.
The Center verified that the Complaint together with the 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 Respondent of the Complaint, and the proceedings commenced on July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on August 18, 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
Complainant The American Automobile Association, Inc. (“AAA”) is a provider of a broad variety of goods and services in the United States and internationally. Complainant, which has been in operation for over 100 years and which has over 60 million members in the United States and Canada, offers automobile-related products and services, including services in the area of automobile sales. Since commencing operations, Complainant has registered over 100 trademarks with the United States Patent and Trademark Office, dating back to at least 1902. Many of Complainant’s trademarks are for the term “AAA” or contain the term “AAA”. Examples of Complainant’s AAA-formative United States trademark registrations are as follows:
- United States Trademark Registration No. 829,265, AAA, registered May 23, 1967;
- United States Trademark Registration No. 2,158,654, AAA, registered May 19, 1998;
- United States Trademark Registration No. 2,846,491, AAA. USE IT FOR ALL IT’S WORTH, registered May 25, 2004;
- United States Trademark Registration No. 2,900,596, AAA PREMIER, registered November 2, 2004;
- United States Trademark Registration No. 2,935,481, AAA PREMIER, registered March 22, 2005;
- United States Trademark Registration No. 5.039,379, AAA, registered September 6, 2016; and,
- United States Trademark Registration No. 5,231,348, AAA DRIVERSNATION, registered June 27, 2017.
The disputed domain name is <aaaautosalessd.com>, registered on August 31, 2020.
At the time of the filing of the Complaint, the disputed domain name resolved to a parked page offering links to various automobile sales services. The disputed domain name now redirects to a different, unrelated automobile sales page.
5. Parties’ Contentions
Complainant asserts that its rights in the AAA trademark are established through its numerous trademark registrations for AAA and AAA-formative marks. Complainant contends that it thus has standing to file a UDRP based on these established trademark rights. According to Complainant, the disputed domain name is confusingly similar to Complainant’s trademarks because the disputed domain name contains the AAA trademark in its entirety. Furthermore, Complainant states that it is known for offering automotive services, including retail services, and thus that the inclusion of the term “auto sales” in the disputed domain name increases the likelihood of consumer confusion.
According to Complainant, Respondent has no rights or legitimate interest in the disputed domain name. Respondent is not licensed by Complainant and is not authorized by Complainant to use the AAA trademark in a domain name or any other context. Complainant asserts that there is no evidence that Respondent is commonly known by the disputed domain name or that Respondent has any legitimate business interest in the disputed domain name. Complainant states that Respondent’s use of the disputed domain name to host a parked page offering links to competing services does not constitute a bona fide offering of goods and services. Finally, Complainant contends that Respondent must have been aware of Complainant and its AAA trademarks when registering the disputed domain name.
Complainant asserts that Respondent registered the disputed domain name specifically for the purpose of diverting Internet users to Respondent’s website, which offered links to competing services, a practice that disrupts Complainant’s business and thus constitutes bad faith. Complainant again offers that Respondent must have had knowledge of Complainant’s trademarks given its trademark registrations in the United States and internationally, as well as the fame of these marks. Furthermore, Complainant advises that it reached out to Respondent to advise of Complainant’s trademark rights after learning of the registration of the disputed domain name, prior to filing the Complaint. Complainant states that Respondent did not respond substantively to these communications. Complainant therefore concludes that Respondent continued to maintain and use the disputed domain name, despite having notice from Complainant about Complainant’s rights in the AAA trademarks. As such, Complainant contends that Respondent registered and used the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See paragraph 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns multiple registrations in the United States for AAA and AAA-formative trademarks. Therefore, Complainant has established that it has rights in the AAA trademark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates the AAA trademark in its entirety as the leading element, followed by the term “autosales” and the letters “sd”. Prior UDRP panels have held that the addition of terms to a domain name containing a trademark does not prevent a finding of confusing similarity between the disputed domain name and the mark. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. Furthermore, prior UDRP panels have found, including in connection with previous complaints filed by Complainant, that the addition of terms to a disputed domain name that directly relate to a complainant’s services affirms the confusing similarity. See Am. Auto. Ass’n, Inc. v. China Capital Domain Fund Limited, WIPO Case No. D2019-2209. Consequently, the phrase “auto sales” and letters “sd,” which could denote the standard two-letter postal abbreviation for the State of South Dakota in the United States, affirms the confusing similarity with Complainant’s mark.
Even if “sd” is not understood to mean “South Dakota,” the further addition of the letters “sd” in connection with Complainant or its services does not prevent a finding of confusing similarity. Prior UDRP panels have found that the addition of characters to other terms in a domain name may be considered a form of typosquatting, especially when characters are repeated from other terms or are adjacent when typed on a keyboard. In this case, the “s” repeats the last character of the prior term, “autosales,” and the “d” is adjacent to “s” on a standard QWERTY keyboard. See Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its AAA trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interest in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not a licensee of Complainant and that Respondent has no other business relationship with Complainant. As the disputed domain name resolved to a parked page that offered links to services that compete with Complainant’s services, Respondent also does not appear to be using the disputed domain name in connection with any legitimate noncommercial or fair use of the disputed domain name, and Respondent’s use of the disputed domain names also cannot be considered a bona fide offering of goods or services. Prior UDRP panels have found that using a domain name that is confusingly similar to a complainant’s trademark to sell competing goods and services is not a legitimate business use of the domain name. See Segway Inc. v. Domains By Proxy, LLC / Arthur Andreasyan, NIM, WIPO Case No. D2016-0725.
Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The registration and use of the disputed domain name was in bad faith. Complainant provided evidence of its registration and widespread use of the AAA trademarks, sufficient to conclude that they were well-known prior to Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainant and its rights in the AAA trademarks at the time of registration of the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
The disputed domain name resolved to a parked page that offered links to competing services. The Panel notes that Complainant’s mark is distinctive (AAA is not a dictionary term and is commonly associated with Complainant), Respondent failed to come forward with any explanation of its use, and the composition of the disputed domain name leads to a conclusion that Respondent registered the disputed domain name targeting Complainant and its trademarks. The Panel finds it more likely that Respondent selected the disputed domain name with the intention of taking advantage of Complainant’s reputation by registering a domain name containing Complainant’s AAA trademark in its entirety, combined with terms relating to automobile sales, with the intent to ultimately use the disputed domain name for an illegitimate purpose, such as misleading Internet users for Respondent’s commercial gain. Prior UDRP have found that using a complainant’s trademark to mislead Internet users for commercial gain constitutes bad faith. See Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607.
Furthermore, prior to filing this Complaint, Complainant sent a cease and desist letter to Respondent to inform Respondent of Complainant’s rights in the AAA trademarks and that Respondent’s registration and use of the disputed domain name was infringing Complainant’s rights. Respondent did not respond substantively to the correspondence (as Complainant received only non-substantive automated replies), and continued to maintain the registration for the disputed domain name. Prior UDRP panels have found that failure to respond to a cease and desist letter weighs in favor of a finding of bad faith. See Remy Cointreau Luxembourg S.A. v. Deividas Samulionis, UAB “Sentosa”, WIPO Case No. D2016-2232.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was 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 disputed domain name <aaaautosalessd.com> be transferred to Complainant.
Brian J. Winterfeldt
Date: August 30, 2021