START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

American Automobile Association Inc. v. NordNet

Claim Number: FA0204000112438

 

PARTIES

Complainant is American Automobile Association Inc., Heathrow, FL, USA (“Complainant”) Kristina Rosette, of Covington & Burling.  Respondent is NordNet, Croix, FRANCE (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aaa.biz>, registered with Nordnet.

 

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.

 

James A. Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

 

Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on May 2, 2002.

 

On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On June 17 2002, pursuant to STOP Rule 6(b), the Forum appointed James A. Crary as the single Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <aaa.biz> domain name is identical to Complainant's AAA mark.

 

Respondent has no rights or legitimate interests in the <aaa.biz> domain name.

 

Respondent registered the <aaa.biz> domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has used the AAA mark to identify its travel information-related services since 1902.  Complainant registered its mark with the United States Patent and Trademark Office as Registration Numbers 703,556 and 829,265. Complainant also owns seventy-five trademark registrations of its AAA mark in forty-five countries throughout the world, including France and other European countries.  Complainant currently spends over $3 million annually to promote its non-profit services.  Complainant is the registrant of <aaa.com> and operates a website at that domain name to promote its services.

 

Respondent registered the disputed domain name on March 27, 2002.  Complainant’s investigation has not found any trademark or service marks for AAA owned by Respondent.  Respondent is not a licensee of Complainant.

 

DISCUSSION

Paragraph 15(a) of the STOP 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.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

 

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

 

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

 

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

 

Complainant’s Rights in the Mark

Complainant has established that it has rights to its AAA mark through registration in the United States and throughout the world.  Respondent’s <aaa.biz> domain name is identical to Complainant’s AAA mark.

 

The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has not demonstrated rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

 

Respondent has not come forward and there is no evidence on record to establish that Respondent has a trademark or service mark for AAA or <aaa.biz>.  Therefore Respondent has not established that it has rights or legitimate interests in the disputed domain name under STOP Policy ¶ 4(c)(i).  See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name).

 

Based on the fame of Complainant’s AAA mark it can be inferred that any intended use by Respondent of the disputed domain is intended to attract Complainant’s customers to Respondent’s website.  The use of Complainant’s trademark to attract Complainant’s customers to Respondent’s website is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).  See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002)  (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”).

 

There is no evidence, and Respondent has not come forward to establish that it is commonly known as AAA or <aaa.biz>.  Therefore, Respondent has not established any rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii).  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

 

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

 

Registration or Use in Bad Faith

Based on the STOP IP Claim procedure Respondent received actual notice of Complainant’s rights in the AAA mark when it registered <aaa.biz>.  Therefore Respondent’s registration of the disputed domain name was in bad faith.  See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim.  Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).

 

Based on the fame of Complainant’s AAA mark it can be inferred that Respondent registered the disputed domain name in order to create a likelihood of confusion as to the source, sponsorship, and affiliation of <aaa.biz> for its own commercial gain.  The registration of a domain name identical to Complainant’s mark for Respondent’s commercial gain is evidence of bad faith registration pursuant to STOP Policy ¶ 4(b)(iv).  See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant).

 

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.

 

Accordingly, it is Ordered that the domain name <aaa.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

 

 

 

James A. Crary, Panelist

Dated: June 21, 2002

 

 

 

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