The American Automobile Association, Inc. v. Greenlight Properties a/k/a Scott Paterson
Claim Number: FA0807001213534
Complainant is The American Automobile Association,
Inc. (“Complainant”), represented by Hope Hamilton, of Covington &
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.
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.
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 email@example.com, firstname.lastname@example.org and email@example.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.
Complainant requests that the domain names be transferred from Respondent to 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.
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.
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.
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.
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
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
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