The American Automobile Association, Inc. v.
Tom Regos
Claim Number: FA0805001195969
PARTIES
Complainant is The American Automobile Association, Inc. (“Complainant”),
represented by Roger A. Ford, of Covington & Burlington LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <1800aaacall.com>,
<aaacall.mobi>, and <callaaa.mobi>, registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 30, 2008; the National Arbitration Forum received a hard
copy of the Complaint on June 2, 2008.
On May 30, 2008, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum the <1800aaacall.com>,
<aaacall.mobi>, and <callaaa.mobi> domain names are
registered with Godaddy.com, Inc. and 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 June 6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 26,
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@1800aaacall.com, postmaster@aaacall.mobi, and
postmaster@callaaa.mobi by e-mail.
A Response was received by the Forum on June 26, 2008 and determined to
be deficient pursuant to Supplemental Rule 5 because a Response was not
received in hard copy prior to the Response deadline.
On July 2, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that its AAA trademarks are famous marks, in which
it has invested enormous resources, and its registration certificates establish
its ownership of the AAA trademarks.
Furthermore, Complainant has indicated that the same day that Respondent
registered the domains at issue here, Respondent contacted them for the purpose
of offering the domains for sale to Complainant. Complainant also contends that the three
domains <1800aaacall.com>, <callaaa.mobi>, and <aaacall.mobi> include its AAA
trademarks in their entirety together with generic terms and are confusingly
similar to Complainant’s trademarks as a result. Complainant also asserts that
Respondent has no legitimate interest in the domain names, nor any legal right
to used those domain names since Respondent has not used the domain names in
connection with a bona fide offering of goods and services, has not been
commonly known by the domain names and is not making a legitimate noncommercial
or fair used of the domain names.
Complainant states the domain names merely resolve to a parking site and
the only use being made of the domain names is for the purpose of selling them
for an amount in excess of the cost of registering the domain names. Still
further, Complainant contends that the Respondent registered and is using the
domain names in bad faith since Respondent clearly knew of Complainant and its
famous AAA trademarks when he registered the three domain names and attempted
to sell them the very same day that he registered them. Complainant contends this demonstrates that
they were registered solely for the purpose of selling them and that Respondent
was in the practice of registering domain names that incorporate famous
trademarks of others.
B. Respondent
Respondent contends solely that it would be cheaper for Complainant to
buy the domains from Respondent rather than pay large legal fees to take them
from him.
Preliminary Issue:
Deficient Response
Respondent submitted an electronic
Response on June 6, 2008. The Forum
deemed the Response deficient pursuant to the National Arbitration Forum’s
Supplemental Rule 5 because the Response was not received in hard copy prior to
the submission deadline. The Panel has
decided to consider Respondent’s submission even though it is not in compliance
with Supplemental Rule 5. See Telstra Corp. v. Chu, D2000-0423
(WIPO June 21, 2000) (finding that any weight to be given to the lateness of
the response is solely in the discretion of the panelist); see Strum
v. Nordic Net
FINDINGS
The Panel finds that Respondent owns the
famous AAA trademarks and that the three domain names at issue that incorporate
them are confusingly similar.
Furthermore, the Panel finds that the domains were registered and used
solely for the purpose of reselling them to Complainant.
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 provided evidence
it first registered its AAA mark with the United States Patent and Trademark Office
(“USPTO”) on June 13, 1958 (Reg. No. 703,556).
Additionally, Complainant has provided evidence that since then it has
acquired several additional registrations of its AAA mark from the USPTO. The Panel finds Complainant’s registrations
with the USPTO are sufficient to establish its rights in its AAA mark pursuant
to Policy ¶ 4(a)(i). See Expedia,
Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark
through its registration of the mark with the United States Patent and Trademark
Office. This registration sufficiently
establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
Respondent’s
<1800aaacall.com>
domain name contains Complainant’s AAA mark with the additions of the numbers
“1800,” the generic term “call,” and the generic top-level domain “.com.” Respondent’s <aaacall.mobi> and <callaaa.mobi> domain names each contain
Complainant’s AAA mark with the additions of the generic term “call” and the generic
top-level domain “.mobi.” The Panel finds
the addition of numbers, generic terms and top-level domains do not
sufficiently distinguish Respondent’s disputed domain names from Complainant’s
AAA mark. Therefore, the Panel finds
Respondent’s disputed domain names are confusingly similar to Complainant’s AAA
mark pursuant to Policy ¶ 4(a)(i). See Homer TLC, Inc. v. Montauk Asset Mgmt., FA 467966 (Nat. Arb. Forum
June 10, 2005) (finding the respondent’s <1800homedepot.com> domain name
was confusingly similar to the complainant’s HOME DEPOT mark because it merely
added the generic or descriptive “1800” prefix); see also Arthur Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of the complainant
combined with a generic word or term); see
also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”).
Complainant alleges Respondent is not commonly known by the disputed domain names. The WHOIS information lists Respondent as “Tom Regos,” and Complainant contends it has not authorized Respondent to use its AAA mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s disputed domain names each resolve to parked websites containing links to products and services which are unrelated to Complainant’s business. The Panel finds that Respondent’s use of this disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(a)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Additionally, Respondent has offered to sell the disputed domain names to Complainant. In e-mail correspondence with Complainant’s lawyer, Respondent offers to sell the disputed domain names to Complainant for at least $100,000 each. The Panel finds Respondent’s offer to sell the disputed domain names to Complainant is evidence Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
Complainant contends Respondent’s confusingly similar disputed domain
names each resolve to a parked website which offers links to unrelated products
and services. Complainant alleges
Respondent presumably receives click-through fees as a result of this use. The Panel may find Respondent’s attempt to
profit from the disputed domain names is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat.
Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed
Internet users seeking the complainant’s site to its own website for commercial
gain).
Complainant provided multiple e-mails where Respondent offered to sell
the disputed domain names to Complainant; these e-mails are dated as early as
February 8, 2008, the date when Respondent registered the disputed domain
names. In one of these e-mails
Respondent states “[I] would want in excess of 100k for each AAA domain
name.” The Panel may find Respondent’s
offers to sell the disputed domain names to Complainant for more than Respondent’s
out-of-pocket expenses is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For
Complainant alleges Respondent has engaged in a pattern of bad faith
registration and use because on February 8, 2008, a WHOIS registration search cited
multiple domains registered by Respondent that incorporated the famous
trademarks NIKE, GOOGLE, JELLO, NFL and others.
Therefore, the Panel finds Respondent’s registration of three domain
names incorporating Complainant’s famous AAA mark constitutes part of a pattern
of such behavior and is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO
Feb. 9, 2005) (finding that the respondent’s registration of the
<epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain
names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)); see also YAHOO! INC v. Syrynx, Inc.,
D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy
¶ 4(b)(ii) in the respondent's registration of two domain names incorporating
the complainant's YAHOO! mark).
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 <1800aaacall.com>, <aaacall.mobi>, and <callaaa.mobi> domain names be TRANSFERRED
from Respondent to Complainant.
David S Safran, Panelist
Dated: July 15, 2008
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