American Automobile Association, Inc. v.
A A A Transmission, Inc. a/k/a AAA Transmission Center & Auto Repair, Inc.
d/b/a A+A+A+ Transmission Center & Auto Repair
Claim Number: FA0204000109481
PARTIES
The
Complainant is American Automobile Association,
Inc., Heathrow, FL (“Complainant”) represented by Carolyn M. Salzmann, of Akerman,
Senterfitt & Eidson, P.A. The
Respondent is A A A Transmission, Inc. a/k/a AAA Transmission Center & Auto Repair,
Inc., d/b/a A+A+A+ Transmission
Center & Auto Repair, Hollywood, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aaatransmission.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Bruce
E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 10, 2002; the Forum received a hard copy of the
Complaint on April 15, 2002.
On
April 15, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <aaatransmission.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
April 17, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 7, 2002
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@aaatransmission.com by e-mail.
A
timely Response was received and determined to be complete on May 6, 2002.
Complainant
submitted a timely additional submission pursuant to Forum Supplemental Rule 7
on May 13, 2002. Respondent submitted a timely additional submission pursuant
to Forum Supplemental Rule 7 on May 17, 2002.
On
May 29, 2002, the Panel, pursuant to Rule 12, requested the Respondent to
notify the Panel if it had placed a disclaimer on its website as it had stated
it was willing to do. On June 12, 200,
Respondent filed a submission in response to the request; Complainant filed a
submission on June 17, 2002.
On May 16, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Bruce E.
Meyerson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
American Automobile Association registered the mark “AAA” in 1967 and claims to
own 161 “federally registered trademarks and service marks in a variety of
styles and combinations with other words.”
Complainant asserts that motorists seeking a mechanic will look for the
“AAA” mark and select a particular mechanic because of the “AAA reputation in endorsing only qualified
and competent mechanics.” Complainant
contends that the disputed domain name is confusingly similar to its “family”
of protected marks particularly because a core service provided by AAA is
endorsement of auto repair services.
Complainant asserts that Respondent has no state or federal
registrations for the mark “AAA,” and that Respondent allegedly breached an
agreement wherein it agreed to substitute “A+A+A+” for “AAA” in its
advertising.
B. Respondent
Respondent
AAA Transmission Center & Auto Repair, Inc. claims that its domain name is
not “identical” to any of Complainant’s marks.
Respondent asserts that it did not register the domain name in bad faith
and that it had no intention of misleading the public into believing that it
was, in fact, the Complainant.
Respondent is willing to add to its website a disclaimer stating that it
is not affiliated with Complainant.
C. Additional Submissions
In
its Additional Submission, Complainant states that Respondent’s actions violate
an agreement reached between the parties regarding use of the mark “AAA” and
that a “strong inference” can be drawn from the evidence that Respondent chose
the disputed domain name to attract customers to its business and website by
using the goodwill associated with the “AAA family of marks.” Respondent, in its Additional Submission,
contends that it is well known in its service area by the name “AAA
Transmission,” and therefore its actions did not constitute bad faith.
FINDINGS
The placing of a disclaimer on each page
of its website demonstrates that Respondent has not registered its domain name
in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
In
order to prevail, Complainant must establish each of the foregoing
“elements.” Because Complainant has not
established that the domain name has been registered or is being used in bad
faith, it is unnecessary to consider the remaining issues.
In
its pleadings, Respondent stated that it would place a disclaimer on its
website in order to avoid any possibility of confusion with Complainant. Subsequently, Respondent did, in fact, place
a disclaimer on each page of its website stating that it is “not affiliated
with the American Automobile Association.”
The
principal argument made by Complainant is that Respondent has acted in bad
faith by creating a website using the domain name <aaatransmission.com> in violation of an agreement that had
been reached between the parties. As
the subject of a website does not appear to be addressed in the correspondence
between the parties, one cannot infer bad faith on the part of Respondent from
its actions which are the subject of this Complaint.
Moreover,
the existence of the disclaimer on Respondent’s website is compelling evidence
of Respondent’s lack of bad faith.
Although there are conflicting decisions with respect to the effect of
such disclaimers, compare Caterpillar v.
Off Road Equpment Parts, FA95497 (Nat. Arb. Forum Oct. 10, 2000)(holding a
disclaimer defeated a claim of bad faith) with
Cavalera v. 420 Gear, FA96315 (Nat.
Arb. Forum Jan. 25, 2001)(holding a disclaimer was not sufficient to defeat a
claim of bad faith), under the circumstances of this case, I find the
disclaimer to be sufficient.
First,
Respondent’s website clearly identifies its name as “A+A+A Transmission Center
and Auto Repair.” The use of the “+” in
between the “A’s” clearly distinguishes Respondent from Complainant. Indeed, in one of the letters from
Complainant’s counsel to respondent, Complainant stated that it has “no
objection to your . . . using the trade name and mark ”A+A+A,” so long as the
“+”’s are sufficiently prominent to be readily perceived by the casual
observer.” Respondent’s website
certainly satisfies this standard.
Second,
Respondent has placed a disclaimer in a banner on each page of its site which
states that it is not affiliated with the American Automobile Association.
Thus,
there can be no finding of bad faith.
DECISION
The Complaint is hereby dismissed.
Bruce E. Meyerson, Panelist
Dated: June 18, 2002
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