The American Automobile
Association, Inc. v. R. MacKinnon d/b/a Prism Vantage Inc.
Claim Number: FA0804001173262
PARTIES
Complainant is The American Automobile Association, Inc. (“Complainant”),
represented by Hope Hamilton, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aaautorepair.com>, <aaautorepairs.com>,
<aaaaautorepair.com>, <aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>, <aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>, <tripleaapprovedautorepair.com>
and <tripleaautorepair.com>,
registered with Wild West Domains, Inc., and <aaaautorepair.com> and <aaaautorepairs.com>,
registered with Godaddy.com, 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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On April 1, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <aaaautorepair.com> and <aaaautorepairs.com>
domain names are registered with Godaddy.com,
Inc. and that the Respondent is the current registrant of the names. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.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 April 4, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 24, 2008 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@aaautorepair.com, postmaster@aaautorepairs.com, postmaster@aaaautorepair.com,
postmaster@aaaautorepairs.com, postmaster@aaaaautorepair.com, postmaster@aaaaautorepairs.com,
postmaster@aaapproved.com, postmaster@aaapprovedautorepair.com, postmaster@aautorepair.com,
postmaster@aautorepairs.com, postamster@tripleaapproved.com, postmaster@tripleaapprovedautorepair.com
and postmaster@tripleaautorepair.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
1. Respondent’s domain names <aaautorepair.com>, <aaautorepairs.com>, <aaaaautorepair.com>, <aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>, <aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>, <tripleaapprovedautorepair.com>, <tripleaautorepair.com>, <aaaautorepair.com> and <aaaautorepairs.com> domain names (the domain names at issue) are confusingly similar to Complainant’s AAA and TRIPLE A marks.
2. Respondent has no rights or legitimate interests in Complainant’s AAA marks.
3. Respondent has registered and used the disputed domain names in bad faith.
B. Respondent
1. Respondent denies that the domain names at
issue are identical or confusingly similar to Complainants AAA marks.
2. Respondent says that, as an auto
repair services business and member of the AAA affiliated auto repair providers,
he was entitled to register and use the domain names at issue in connection
with his business.
3. Respondent denies that he registered or used
the domain names at issue in bad faith.
FINDINGS
Complainant, The
American Automobile Association, Inc. ("AAA"), has exclusive ownership of
numerous federal trademark registrations (some of which are incontestable)
and common law rights in the United States in the "AAA," "AAA APPROVED," "AAA APPROVED AUTO
REPAIR," and "TRIPLE A" marks, all for use in connection with
automobile and automobile repair services, among other things (the "AAA" Marks.). Registrations include U.S. Reg. Nos. 829,265; 1,168,790; 1,449,079;
2,158,654; 3,046,904; 3,046,905; 3,162,780; 3,260,840. Complainant also owns numerous domain names incorporating its
marks, including <aaa.com>, <aaa.biz>, <aaaapprovedautorepair.com>,
and <tripleainfo.com>. AAA has used its AAA trademark in commerce since
at least 1902, and has used its AAA APPROVED, TRIPLE A, and AAA APPROVED
AUTO REPAIR marks since at least as early as
1910, 1971, and 1975, respectively.
It appears that Respondent was recruited to
affiliate his auto repair service business with AAA and to become a member of
the AAA network of providers. In
connection with that affiliation, he was encouraged to advertise with use of
the AAA marks and to direct the public’s attention to the <aaa.com>
website. Respondent, however, without
Complainant’s permission, registered the domain names <aaautorepair.com>, <aaautorepairs.com>,
<aaaaautorepair.com>, <aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>, <aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>, <tripleaapprovedautorepair.com>, <tripleaautorepair.com>, <aaaautorepair.com> and <aaaautorepairs.com>. When he failed to terminate use of those
domains after demand by Complainant to do so, Respondent was terminated as a
AAA afiliated member. Notwithstanding,
he continues to maintain websites resolving to the domain names at issue which
are in competition with the AAA member network.
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.
Complainant has rights in the AAA APPROVED AUTO REPAIR mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,449,079 issued July 21, 1987). This registration adequately confers rights in the mark for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
The
<aaautorepair.com>,
<aaautorepairs.com>, <aaaautorepair.com>, <aaaautorepairs.com>, <aaaaautorepair.com>,
<aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>,
<aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>,
<tripleaapprovedautorepair.com> and <tripleaautorepair.com>
domain names are confusingly similar to Complainant’s AAA APPROVED AUTO REPAIR
mark under Policy ¶ 4(a)(i). The disputed domain names all contain
variations of Complainant’s mark, either deleting or modifying a portion of the
mark in the disputed domain names. The
addition of the generic top-level domain “.com” is irrelevant in the examination of confusing similarity, as all
domain names must contain a top-level domain.
Thus, the Complainant has satisfied Policy ¶ 4(a)(i). See Down E. Enter. Inc. v. Countywide
Commc’ns, FA 96613 (Nat. Arb.
Forum Apr. 5, 2001) (finding the
domain name <downeastmagazine.com> confusingly similar to the
complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also State Farm Mut. Auto. Ins. Co. v. Try Harder &
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has made a prima facie case in support of its allegations, and the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s WHOIS information identifies Respondent as “R. MacKinnon d/b/a Prism Vantage Inc.” There is no other information in the record indicating that Respondent is commonly known by any of the disputed domain names, or is authorized to use Complainant’s mark. Accordingly Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent is using the
disputed domain names either to redirect Internet users to Respondent’s
website, located at the <mac.homestead.com> domain name, or to display
hyperlinks to various third-party websites, some of which are in direct
competition with Complainant. Neither of
these uses constitutes a bona fide offering
of goods or services under Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no
rights or legitimate interests in the famous MSNBC mark where the respondent
attempted to profit using the complainant’s mark by redirecting Internet
traffic to its own website); see also TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent had actual knowledge of Complainant’s trade and service marks at the time when the disputed domain names were registered. This knowledge indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb Forum May 23, 2003) (finding that the respondent’s actual knowledge of the complainant’s rights in the ULTRAGUARD mark, inferred from the fact that the respondent was a distributor of the complainant, evidenced that the disputed domain name was registered in bad faith).
Respondent’s use of the disputed domain names, either to display Respondent’s business or businesses in competition with Complainant constitutes a disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to Complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Respondent registered
and is using the disputed domain names in an attempt to commercially benefit
from the likelihood that Internet users may mistakenly assume that the disputed
domain names and resulting websites are associated with Complainant. Accordingly, Respondent is in violation of
Policy ¶ 4(b)(iv).
See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006)
(finding that the respondent’s use of the <arizonashuttle.net> domain
name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract
Internet traffic to Respondent’s website offering competing travel services
violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting from click-through fees).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaautorepair.com>, <aaautorepairs.com>,
<aaaautorepair.com>, <aaaautorepairs.com>, <aaaaautorepair.com>,
<aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>,
<aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>,
<tripleaapprovedautorepair.com> and <tripleaautorepair.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 13, 2008
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