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
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
The placing of a disclaimer on each page of its website demonstrates that Respondent has not registered its domain name in bad faith.
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.
The Complaint is hereby dismissed.
Bruce E. Meyerson, Panelist
Dated: June 18, 2002
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