The American Automobile
Association, Inc. v. Greenlight Properties a/k/a Scott Paterson
Claim Number: FA0807001213534
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 <aaacardoffer.com> and <aaamortgageservices.com>,
registered with Godaddy.com, Inc. and <aaacardoffers.com>, registered
with Answerable.com Pvt. Ltd.
PANEL
The undersigned Daniel B. Banks, Jr., as panelist, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 2, 2008; the
National Arbitration Forum received a hard copy of the Complaint on July 2, 2008.
On July 3, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <aaacardoffer.com> and <aaamortgageservices.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 July 3, 2008, Answerable.com Pvt. Ltd. confirmed by e-mail to
the National Arbitration Forum that the <aaacardoffers.com> domain name is
registered with Answerable.com Pvt. Ltd.
and that the Respondent is the current registrant of the name. Answerable.com
Pvt. Ltd. has verified that Respondent is bound by the Answerable.com Pvt. Ltd. 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 8, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 28, 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@aaacardoffer.com, postmaster@aaacardoffers.com and postmaster@aaamortgageservices.com
by e-mail.
A timely Response was received and determined to be complete on July 29, 2008.
An Additional Submission was received from Complainant on July 31, 2008
and found to be timely and complete pursuant to the National Arbitration
Forum’s Supplemental Rule 7.
On August 5, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant bases this Complaint on its exclusive ownership of federal
trademark registrations and common law rights in the
AAA has used its “AAA” mark in commerce since at least 1902 and as a
service mark for credit card and home equity loan services since at least 1978
and 1992. As a result of AAA’s history
and experience providing high quality products and services, and AAA and its
member clubs’ continuous and extensive advertising, promotion, and sales of
such products under the “AAA” marks through various mediums, including on the
Internet, these marks have become valuable and famous in the
Registration certificates for the “AAA” mark and the registration of
the “AAA” mark as a service mark for credit card and mortgage services
constitute prima facie evidence of
the validity of those registrations dating back to AAA’s first use of those
marks, which predate Respondent’s registrations for the domain names at issue
in this Complaint.
On or around October 31, 2007, Complainant learned that Respondent had
registered and was using the domain name <aaacardoffers.com>. The website associated with the domain name
contains links to other websites offering credit card services which directly
compete with AAA’s credit card business.
AAA attempted to discuss this matter with Respondent but to no avail.
AAA subsequently learned that Respondent also owns the domain names <aaacardoffer.com> and <aaamortgageservices.com>. While the websites for these domain names
purport to contain links to subject specific news stories, it appears that the
focal point of the websites are the advertisements for credit card and mortgage
services that border the pages.
Moreover, the additional domain names provide links to services that
compete directly with AAA’s credit card and mortgage services.
Complainant contends that the contested domain names are confusingly
similar to Complainant’s “AAA” mark; that Respondent has no legal rights or
legitimate interests in the domains; and that Respondent registered and is
using the domain names in bad faith.
With respect to the claim that Respondent has no legal rights or
legitimate interests in the domains, Complainant first says that there is no
evidence that Respondent has become commonly known by any of the contested
domains. Second, Respondent is not using
the domains in connection with a bona
fide offering of goods and services nor are they being used for a
legitimate noncommercial or fair use.
Third, Respondent has no legal right to use the “AAA” mark in
conjunction with the advertisement or sale of credit card or mortgage services.
With respect to the claim of bad faith registration and use,
Complainant first says that bad faith is evidenced by the intentional
registration of domain names that it likely knew were confusingly similar to
AAA’s famous mark. There is no plausible
reason why Respondent would have combined the letters “AAA” with the generic
words of the contested domains except to confuse consumers by establishing a
false association between the contested domains and AAA’s famous mark.
Second, Respondent’s use of the contested domains to advertise services
in direct competition with those offered by AAA disrupts AAA’s business and
demonstrates Respondent’s bad faith.
Third, Respondent registered the contested domains with, at a minimum,
constructive knowledge of AAA’s use of the “AAA” marks. Additionally it may be inferred that
Respondent had actual knowledge when it used the “AAA” mark as the dominant
feature of the domain names that advertise those same services. Respondent’s registration of the confusingly
similar domains with either constructive or actual knowledge is evidence of bad
faith.
B. Respondent
Respondent says that Complainant does not have exclusive trademark use
of “aaa.” Wikipedia lists over 40 uses
of the acronym of AAA in addition to American Automobile Association. Hundreds if not thousands of companies use
the letters “aaa” to be listed first in the phone book or to be memorable or
both. AAA does not have a trademark that
includes the word mortgage and does not have a trademark on “aaa card.”
Respondent’s websites do not mention Complainant and are a parking page
from <sedo.com> and a parking news page from <imodo.com>. Because of the many uses of the letters AAA,
consumers know that an overwhelming majority of businesses using the letters
are not associated with Complainant. An
average consumer is well aware of the use of AAA in a variety of uses and
contexts, including Complainant, but the consumer knows that the majority of
these uses will have nothing to do with the Complainant. Therefore Respondent’s domains and parking
page websites are not confusingly similar to Complainant’s trademark and
service marks.
Respondent affirms that they are not the beneficiary of a trade or
service mark or commonly known by the domain names in dispute. Respondent is using the domain names with a bona fide offering of goods and services
in that Respondent bought the names to either develop or to offer for sale or
lease. Respondent has rights and
legitimate interests, pursuant to Policy paragraph 4(a)(ii), in attempting to
sell the domain names.
Respondent is clearly in the business of buying, selling, leasing and
developing generic domain names as the registration fees dwarf the earnings
from advertising revenue.
The domains were not registered in bad faith. Respondent does not have any knowledge of
American Automobile Association’s mark as it relates to mortgages and credit
cards. Respondent only knows of the automotive
component. Respondent does not receive a
viable commercial benefit from using the site as a pay-per-click site and has
never directly offered the domains for sale to Complainant. There has been no attempt to divert traffic
from Complainant. There is no mention of
automotive products on the websites.
Respondent was not aware of Complainant’s trademarks in the financial
field as their home page doesn’t even show evidence of the trademarks.
C. Additional Submissions
In Complainant’s Additional Submission, it makes three responses.
First, Respondent’s assertion that his “websites do not mention the
Complainant” is demonstrably false. The
first advertisement displayed on the <aaacardoffer.com>
domain name’s website is an advertisement for the “Official Site-AAA.com.”
Second, Respondent’s assertions that he has made “no attempt to divert
traffic from Complainants’ web pages, nor is there any evidence the Respondent
was attempting to attract consumers looking for Complainant’s website” cannot
be reconciled with his simultaneous admissions regarding his earnings from
pay-per-click advertisements contained on the websites of the contested
domains.
Third, Respondent incorrectly claims ignorance of AAA’s longstanding
mortgage and credit card products. The
AAA Carolinas club website, to which Respondent asserts he was redirected,
contains a prominent picture of AAA’s “Show Your Card and Save” card—including
the word “card.” Information regarding
AAA’s credit card services is available to consumers who click the AAA Savings
link directly above this image.
Likewise, many other local AAA club websites prominently display
information regarding AAA’s credit card, financial, and mortgage products
services.
AAA has met its burden under the UDRP.
Respondent cannot sustain an argument that the contested domains are not
confusingly similar to AAA’s registered marks.
Respondent’s own account of the domain names’ uses makes clear that he
is engaged in speculation based on the value of the “AAA” marks, which panels
have repeatedly held is use in bad faith.
FINDINGS
The contested domain names are confusingly
similar to Complainant’s registered trademark or service mark in which
Complainant has rights.
The Respondent has no rights or legitimate
interests in respect of the contested domain names.
The contested domain names were registered
and are being used in bad faith.
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 trademark through registration of the
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
829,265 issued May 23, 1967). Such
registration confers upon Complainant sufficient rights in the mark under
Policy ¶ 4(a)(i).
See Intel Corp. v.
Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the
complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE
marks by registering the marks with the USPTO); see also
Complainant argues that Respondent’s disputed domain names incorporate
its AAA mark in its entirety, and adds the generic top-level domain (“gTLD”)
“.com” and generic phrases “card offer,” “card offers,” and “mortgage
services.” Complainant asserts that these
three phrases describe Complainant’s mortgage and credit card services, and
therefore do not distinguish the disputed domain names from its mark. Moreover, Complainant argues that the
addition of the gTLD “.com” has no place in a Policy ¶ 4(a)(i) analysis. The Panel agrees and finds that the disputed
domain names are confusingly similar to Complainant’s AAA mark under Policy ¶
4(a)(i). See Trip Network Inc.
v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the
addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is
irrelevant to a Policy ¶ 4(a)(i) analysis); see
also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb.
Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was
confusingly similar to the complainant’s MILLER mark, because “[t]he addition
of a descriptive term that describes Complainant’s business to Complainant’s
registered mark, does not remove the domain from the realm of confusing
similarity with regard to Policy ¶ 4(a)(i).”).
While
Respondent contends that the disputed domain names are comprised of
common, descriptive terms and as such cannot be found to be identical to
Complainant’s mark, the Panel finds that such a determination is not necessary
under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain name is
identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA
915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each
individual word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
The Panel finds that Complainant has
made a prima facie case that Respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, the burden shifts to Respondent to
show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant asserts that Respondent is not
commonly known by the disputed domain names, since it is listed under the WHOIS
information as “Greenlight Properties a/k/a Scott Paterson,” and because
Respondent has no license or permission to use Complainant’s AAA mark. In Respondent’s Response, he affirmed that he
is not commonly known by the disputed domain names. The Panel therefore finds that Respondent is
not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Complainant argues that Respondent’s disputed domain names resolve to websites that host third-party advertisements for Complainant’s direct competitors. Complainant submits that Respondent benefits from this commercial practice through the receipt of “click-through” referral fees; and also argues in its Additional Submission that Respondent contradicts itself when it claims no revenue while admitting to using third-party advertisement hosting services. Complainant also argues in its Additional Submission that Respondent does indeed list Complainant on its website via advertisement. The Panel agrees and finds that Respondent has not created 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(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel also finds
that Respondent’s primary intent to sell the disputed domain names to the
general public, based on Respondent’s own admissions, evidences its lack of
rights and legitimate interests under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun
Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under
the circumstances, the respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name); see
also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name suggests
it has no legitimate use).
The Panel finds that Respondent’s
practice of diverting Internet users to websites that promote Complainant’s
competitors disrupts Complainant’s business and constitutes bad faith
registration and use under Policy ¶ 4(b)(iii).
See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also
It also appears from the evidence that
Respondent intentionally registered the confusingly similar disputed domain names for
commercial benefit, in that it sought to maximize potential confusion between
the AAA mark and the disputed domain names such that it could attract Internet
users to its commercial websites. The
Panel finds that this constitutes bad faith registration and use under Policy ¶
4(b)(iv). See 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); see also
Complainant contends that Respondent had constructive notice of
Complainant’s rights in the AAA mark due to its long-standing registration with
the USPTO. Complainant also argues that
Respondent had actual notice of the mark given its prominent use in the disputed
domain names, along with terms that described Complainant. In its Additional Submission, Complainant
asserts that Respondent did have notice of Complainant’s credit card and
mortgage services because its websites do list information regarding these services. The Panel agrees with both of those
assertions and finds that Respondent engaged in bad faith registration and use
under Policy ¶ 4(a)(iii). See Radio & Records, Inc.
v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable
grounds to infer that Respondent had actual notice of Complainant’s rights in
the mark as well. Complainant’s Radio
& Records Magazine is a leading business journal covering an industry
towards which Respondent’s services are marketed.”); see also
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 <aaacardoffer.com>, <aaacardoffers.com>
and <aaamortgageservices.com> domain names be TRANSFERRED
from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: August 19, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page