The American Automobile Association, Inc. v. Blue-Cove Interactive a/k/a Kristine Wolfe
Claim Number: FA0809001224407
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 <aaatravelcompanion.com>, <aaatravelcompanion.net>, <aaacompanion.com>, and <aaacompanion.net>, registered with Register.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 8, 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@aaatravelcompanion.com, postmaster@aaatravelcompanion.net, postmaster@aaacompanion.com, and postmaster@aaacompanion.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aaatravelcompanion.com>, <aaatravelcompanion.net>, <aaacompanion.com>, and <aaacompanion.net> domain names are confusingly similar to Complainant’s AAA mark.
2. Respondent does not have any rights or legitimate interests in the <aaatravelcompanion.com>, <aaatravelcompanion.net>, <aaacompanion.com>, and <aaacompanion.net> domain names.
3. Respondent registered and used the <aaatravelcompanion.com>, <aaatravelcompanion.net>, <aaacompanion.com>, and <aaacompanion.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The American Automobile Association, Inc., has used its AAA mark since at least 1902 in connection with a variety of products and services, including travel related products and services. Complainant holds a registration of its AAA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 829,265 issued May 23, 1967).
Respondent registered the <aaatravelcompanion.com>, <aaatravelcompanion.net>,
<aaacompanion.com>, and <aaacompanion.net> domain
names on
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant has sufficiently established rights in its AAA mark under Policy ¶ 4(a)(i) because it holds a registration of this mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <aaatravelcompanion.com>, <aaatravelcompanion.net>,
<aaacompanion.com>, and <aaacompanion.net> domain
names all contain Complainant’s entire mark, all add the generic term
“companion,” and two of the disputed domain names additionally add the generic
term “travel” to Complainant’s AAA mark.
The Panel finds that the addition of either or both of these generic
terms do not distinguish the disputed domain names from Complainant’s AAA mark
for the purposes of confusing similarity under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see also Arthur Guinness Son
& Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Initially, Complainant must present a prima facie case that Respondent lacks both rights and legitimate
interests in the <aaatravelcompanion.com>, <aaatravelcompanion.net>,
<aaacompanion.com>, and <aaacompanion.net> domain
names. Then, as the burden shifts to
Respondent, Respondent must establish that it has rights or legitimate
interests in the disputed domain names.
The Panel finds that Complainant has sufficiently made its prima facie case under Policy ¶
4(a)(ii). See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
All of Respondent’s confusingly similar disputed domain
names resolve to websites that contain hyperlinks to various third-party
websites, some of which are in direct competition with Complainant. Accordingly, the Panel infers that Respondent
receives click-through fees for these hyperlinks. Therefore, the Panel finds that Respondent
has not made a bona fide offering of
goods or services under Policy ¶ 4(c)(i) and has not made a legitimate
noncommercial or fair use under Policy ¶ (c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see also 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).
Furthermore, Respondent’s WHOIS information for the <aaatravelcompanion.com>, <aaatravelcompanion.net>,
<aaacompanion.com>, and <aaacompanion.net> domain
names do not indicate that Respondent is commonly known by any of these
disputed domain names, and Respondent has not offered any evidence to suggest
otherwise. Thus, the Panel finds that
Respondent is not commonly known by any of the disputed domain names pursuant
to Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s websites resolving from the confusingly similar
<aaatravelcompanion.com>, <aaatravelcompanion.net>,
<aaacompanion.com>, and <aaacompanion.net> domain
names all contain hyperlinks to third-party websites, some of which are in
direct competition with Complainant. The
Panel finds that this redirection of Internet traffic creates a disruption in
Complainant’s business and is evidence of bad faith registration and use under
Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum
Furthermore, Respondent
receives click-through fees for the aforementioned hyperlinks displayed on the
websites that resolve from the confusingly similar disputed domain names, and
thus creates a likelihood of confusion as to Complainant’s affiliation with the
disputed domain names and their corresponding websites. The Panel finds that this likelihood of
confusion and commercial gain is evidence of bad faith registration and use
under Policy ¶ 4(b)(iv).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaatravelcompanion.com>, <aaatravelcompanion.net>, <aaacompanion.com>, and <aaacompanion.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justi9ce, Supreme Court, NY (Ret.)
Dated: October 29, 2008
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