American Automobile Association, Inc. v. Cambridge Capital Investment Ltd.
Claim Number: FA0207000116022
Complainant is American Automobile Association, Inc., Heathrow, FL (“Complainant”) represented by Kristina Rosette, of Covington & Burling. Respondent is Cambridge Capital Investment Ltd., Miami, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <triptik.com>, registered with iHoldings.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 16, 2002; the Forum received a hard copy of the Complaint on July 22, 2002.
On July 17, 2002, iHoldings.com, Inc. confirmed by e-mail to the Forum that the domain name <triptik.com> is registered with iHoldings.com, Inc. and that Respondent is the current registrant of the name. iHoldings.com, Inc. has verified that Respondent is bound by the iHoldings.com, 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 July 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 12, 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.
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 August 27, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as 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 Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <triptik.com> domain name is identical to Complainant’s TRIPTIK registered mark.
2. Respondent does not have any rights or legitimate interests in the <triptik.com> domain name.
3. Respondent registered and uses the <triptik.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of nine registrations and one pending registration application for its TRIPTIK mark in nine countries throughout the world. Respondent holds two registered trademarks with the U.S. Patent and Trademark Office (“USPTO”) reflecting the TRIPTIK mark, including: Reg. No. 652,420 registered on October 1, 1957 and reflecting the first use in commerce date as being 1932, and Reg. No. 656,930 registered on January 7, 1958.
Complainant is a not-for-profit corporation that represents one of the world’s premier travel clubs and provides its 45 million members with a wide variety of travel and other automobile-related services throughout the U.S., Canada and many European countries. Complainant has used the TRIPTIK mark in connection with identifying strip maps and other maps, such as maps of cities, and travel counseling services since 1932. Complainant has also provided hotel and restaurant ratings exclusively to its members for over 40 years.
Complainant has actively promoted maps, travel counseling services, travel information, and routing directions under its TRIPTIK mark. Complainant distributed over 11.3 million TRIPTIK maps and routings in 2001 alone, and distributed over 5.3 million TRIPTIK routings during the first five months of 2002. Complainant anticipates the Internet accessibility of its TRIPTIK routings and maps will contribute to continued increased distribution.
Complainant expends in excess of three million dollars annually in marketing and advertising under its TRIPTIK mark, which includes the dissemination of hundreds of thousands of pieces of promotional literature displaying the TRIPTIK mark.
Complainant operates from the <aaa.com> website, utilizing the acronym that represents its business name, American Automobile Association. In 2001, Complainant’s <aaa.com> website received over 925 million hits with almost 200 million page views, and over 25 million visitor sessions.
As a result of the significant amount of Internet traffic exposed to said mark and Complainant’s extensive efforts in advertising its TRIPTIK mark to the consuming public, the TRIPTIK mark has become famous throughout the U.S., and has acquired substantial goodwill as a mark identifying Complainant’s travel information products and services.
Respondent registered the <triptik.com> domain name on August 12, 2002. Complainant’s investigation reveals that Respondent’s business entity, Cambridge Capital Investment Ltd., as registered in Florida, is not registered with the Florida Department of State, Division of Corporations. However, Complainant determined that Respondent’s WHOIS address was identical to DomainCollection.com’s former address in Coral Gables, Florida. Internet users who key in the subject domain name are immediately confronted with a large banner that reads, “Domain For Sale at: Domain Collection.com ‘Click Here’” with “DOMAIN 4 SALE: triptik.com” appearing adjacent to the banner.
Complainant’s counsel conducted research that indicates Respondent is identified as the registrant of 113,112 domain names with the registrars CORE and Network Solutions. Respondent has also had its rights in its domain name registrations challenged on at least seven different occasions under the UDRP and STOP procedures.
Paragraph 15(a) of 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.”
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 Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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; and
(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.
Complainant has established rights in the TRIPTIK mark through successfully registering the mark with various authorized international authorities. Complainant has also extensively used the TRIPTIK mark in identifying its travel services continuously since 1932, as indicated by the USPTO.
Respondent’s <triptik.com> domain name is identical to Complainant’s TRIPTIK mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the generic top-level domain (“gTLD”) “.com.” Because gTLDs are required of domain name registrants, their addition is irrelevant when conducting a Policy ¶ 4(a)(i) inquiry. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has not submitted a Response in this proceeding, thereby failing to contest Complainant’s allegations that Respondent does not have any rights or legitimate interests in the subject domain name. Because Respondent failed to submit a Response, the Panel is permitted to make all reasonable 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”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
After Complainant satisfies its initial burden of establishing a prima facie case regarding Policy ¶¶ 4(a)(i)-(iii), the burden effectively shifts to Respondent. Respondent must establish circumstances that demonstrate its rights or legitimate interests in the <triptik.com> domain name. As stated, by not responding, Respondent has failed to invoke any circumstances that could influence the Panel to find in its favor. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because the Respondent never submitted a response nor provided the Panel with evidence to suggest otherwise).
Complainant’s Submission provides the Panel with unrefuted information that suggests Respondent registered the <triptik.com> domain name to eventually transfer its rights in the domain name to Complainant, or another interested entity. Respondent has not enunciated a purpose for the domain name, outside of advertising the sale of the registration on the attached website. Because Respondent’s primary motivation in registering the domain name is to monetarily benefit from transferring its rights, it suggests that Respondent has no rights or legitimate interests in this particular domain name. Thus, Respondent’s use of <triptik.com> is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it in connection with a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Perf. Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling it).
There is no information before the Panel that suggests Respondent has a legitimate connection with the <triptik.com> domain name, or that it is commonly known by it pursuant to Policy ¶ 4(c)(ii). Complainant’s Submission provides evidence that indicates Respondent has an affiliation with DomainCollection.com, an entity that specializes in the transfer and sale of domain name registrations. Also, because Complainant has utilized the TRIPTIK mark in connection with its travel related services since 1932, it is presumed that Respondent is not commonly known by a domain name that is identical to Complainant’s TRIPTIK mark. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Uncontested information and circumstances indicate that Respondent was aware of Complainant’s mark before seeking registration of the infringing domain name. Complainant holds two registrations for the TRIPTIK mark on the Principal Register of the USPTO, which constitutes constructive notice for any party seeking to register an infringing variation of the mark. Furthermore, Respondent’s motivation in registering the domain name stems from its interest to sell the registration to an interested party. Therefore, Respondent’s actions imply that it was aware of the value associated with the <triptik.com> domain name. When considering the totality of circumstances, Respondent’s registration of the domain name, despite knowledge of Complainant’s preexisting rights in the TRIPTIK mark, indicates bad faith registration under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Respondent’s WHOIS information, which correlates with DomainCollection.com’s listed address, indicates that Respondent has no particular interest in the <triptik.com> domain name except for the value associated with the mark shown in the second-level domain. As stated in the Findings, Respondent’s contested domain name resolves to a website that advertises the sale of the domain name registration. Circumstances suggest that Respondent registered the domain name primarily for the purpose of selling it or transferring its rights to Complainant, or another interested buyer; thus, Respondent’s actions evidence bad faith registration and use under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant’s counsel conducted a search of the SAEGIS database to identify all domain names registered by Respondent in an effort to establish a pattern of bad faith conduct. Complainant’s search disclosed that Respondent is identified as the registrant in 113,122 domain names, as registered with the registrars CORE and Network Solutions. Furthermore, Respondent is known to have had its domain name registrations contested in seven UDRP and STOP proceedings, and was found to have infringed on another’s trademark in each case (e.g., RARE Hospitality Mgmt., Inc. v. Cambridge, FA 112431 (Nat. Arb. Forum July 5, 2002; <rare.biz>), Am. Online, Inc. v. Cambridge, FA 110798 (Nat. Arb. Forum June 4, 2002; <instantmessenger.biz>); and, Barrier Reef, Inc. v. Cambridge, FA 112464 (Nat. Arb. Forum June 14, 2002; <greatbarrierreef.biz>)). Therefore, the Panel determines that Complainant has established that Respondent has previously engaged in bad faith behavior of infringing on established trademarks, thereby satisfying Policy ¶ 4(b)(ii)’s pattern prerequisite. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names, which infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).
Respondent’s <triptik.com> domain name reflects Complainant’s TRIPTIK mark in its entirety, and it is conceivable that Complainant may eventually desire to register its TRIPTIK mark in a corresponding domain name. Therefore, Respondent’s actions constitute bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent registered the domain name in order to prevent Complainant from accurately depicting its TRIPTIK mark in a domain name, and as stated, a pattern of bad faith conduct has been established. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).
The Panel determines that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <triptik.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 30, 2002
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