The American Automobile
Association, Inc. v.
Domains By Proxy, Inc., by
itself and as proxy for its customers
Claim Number: FA0809001226461
PARTIES
Complainant is The American Automobile Association,
Inc. (“Complainant”), represented by Roger
A. Ford, of Covington &
Burling LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aaa-automotivewarrantydeals.com>, <aaa-travel-international.biz>,
<aaa-travel-international.info>,
<aaaamobilefleetservice.com>, <aaaautopartslocators.com>, <aaabizcredit.com>, <aaaccuratecredit.com>, <aaacetravel.com>, <aaacetravel.info>, <aaacetravel.net>, <aaacorporatetravelsolutions.com>,
<aaacorporatetravelsolutions.net>,
<aaacorporatetravelsolutions.org>,
<aaacredit4u.com>, <aaacreditforyou.com>, <aaadiscountss.com>, <aaadiscountss.net>, <aaaexchangenetwork.com>, <aaafinancialfreedom.com>, <aaafreetravel.com>, <aaanationalfinance.com>, <aaanationalfinancesolutions.com>,
<aaapenguintravel.com>, <aaapremiercreditrepair.biz>, <aaapremiercreditrepair.org>, <aaaprovedautorepair.com>, <aaarecoveryservices.com>, <aaatourguide.com>,
<aaatourguide.net>, <aaatourguides.com>, <aaatourguides.net>, <aaatourvideos.com>, <aaatourvideos.net>, <aaatransferservices.com>, <aaatravelfare.com>, <aaatravelguide.net>, <aaatravelguides.com>, <aaatravelguides.net>, <aaatravelperks.net>, <aaatravelsmooth.com>, <aaatravelvideos.net>, <aaavinsurance.com>, <aaawebservices.net>, <onlinetriplea.com>, <triple-a-tracker.com>, <tripleaatm.com>, <tripleamagazine.com>, <triplearaids.com>, and <tripleatracker.com>,
registered with Godaddy.com, Inc., and <aaaluxurytravel.com>, <aaareferraltraveltours.net>, <triple-a-agency.com>, <tripleamexico.com>, <tripleamexico.net>, <wwwaaa-warranty.com> and <wwwaaawarranty.com>, registered
with Wild West Domains, Inc.
PANEL
The undersigned each certify 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.
Alan L. Limbury as Panelist, David E. Sorkin as Panelist, and Sandra J.
Franklin as Panelist and Chairperson.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on September 25,
2008; the National Arbitration Forum received a hard copy of the
Complaint on September 26, 2008. The Complaint filed named Domains By Proxy,
Inc. (“DBP”) as the Respondent and listed several aliases, which are the names
of DBP’s customers.
On September 29, 2008, Godaddy.com,
Inc., confirmed by e-mail to the National Arbitration Forum that the <aaa-automotivewarrantydeals.com>¸<aaa-travel-international.biz>,
<aaa-travel-international.info>,
<aaaamobilefleetservice.com>, <aaaautopartslocators.com>, <aaabizcredit.com>, <aaaccuratecredit.com>, <aaacetravel.com>, <aaacetravel.info>, <aaacetravel.net>, <aaacorporatetravelsolutions.com>,
<aaacorporatetravelsolutions.net>,
<aaacorporatetravelsolutions.org>,
<aaacredit4u.com>, <aaacreditforyou.com>, <aaadiscountss.com>, <aaadiscountss.net>, <aaaexchangenetwork.com>, <aaafinancialfreedom.com>, <aaafreetravel.com>, <aaanationalfinance.com>, <aaanationalfinancesolutions.com>,
<aaapenguintravel.com>, <aaapremiercreditrepair.biz>, <aaapremiercreditrepair.org>, <aaaprovedautorepair.com>, <aaarecoveryservices.com>, <aaatourguide.com>, <aaatourguide.net>, <aaatourguides.com>, <aaatourguides.net>, <aaatourvideos.com>, <aaatourvideos.net>, <aaatransferservices.com>, <aaatravelfare.com>, <aaatravelguide.net>, <aaatravelguides.com>, <aaatravelguides.net>, <aaatravelperks.net>, <aaatravelsmooth.com>, <aaatravelvideos.net>, <aaavinsurance.com>, <aaawebservices.net>, <onlinetriplea.com>, <triple-a-tracker.com>, <tripleaatm.com>, <tripleamagazine.com>, <triplearaids.com>, and <tripleatracker.com> domain names are registered with Godaddy.com, Inc. and that the registrants are
32 entities or individuals, who are bound by the Godaddy.com, Inc. registration agreement and have 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 September 30, 2008, Wild West
Domains, Inc. confirmed by e-mail to the National Arbitration Forum that
the
<aaaluxurytravel.com>, <aaareferraltraveltours.net>, <triple-a-agency.com>, <tripleamexico.com>, <tripleamexico.net>, <wwwaaa-warranty.com> and <wwwaaawarranty.com> domain names
are registered with Wild West Domains, Inc.
and that the registrants are 5 entities or individuals, who are bound by the Wild West Domains, Inc. registration agreement
and have thereby agreed to resolve domain-name disputes brought by third
parties in accordance with the Policy.
On October 6, 2008, the Forum notified Complainant that, because there
were multiple Respondents listed in the Complaint, Complainant would have to
either choose which Respondent to keep in the case, or argue that there was
only one Respondent.
On October 10, 2008, Complainant filed its First Amended Complaint,
electing the second option above, arguing that DBP was the proper
Respondent. A thorough discussion of this issue is laid out in the body of the
decision below.
On October 10, 2008, in response to the First Amended Complaint, the
Forum required that Complainant drop DBP as a Respondent and leave it to the
Panel to decide what to do about the multiple “alias” (DBP customer) respondents.
On October 13, 2008, Complainant filed its Second Amended Complaint, complying
with that direction.
On October 16, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 5, 2008 by which
Responses could be filed to the Complaint, was transmitted to DBP’s customers
via e-mail, post and fax, to all entities and persons listed on their
registrations as technical, administrative and billing contacts, and to postmaster@aaa-automotivewarrantydeals.com, postmaster@aaa-travel-international.biz,
postmaster@aaa-travel-international.info, postmaster@aaaamobilefleetservice.com,
postmaster@aaaautopartslocators.com, postmaster@aaabizcredit.com, postmaster@aaaccuratecredit.com,
postmaster@aaacetravel.com, postmaster@aaacetravel.info, postmaster@aaacetravel.net,
postmaster@aaacorporatetravelsolutions.com, postmaster@aaacorporatetravelsolutions.net,
postmaster@aaacorporatetravelsolutions.org, postmaster@aaacredit4u.com,
postmaster@aaacreditforyou.com, postmaster@aaadiscountss.com, postmaster@aaadiscountss.net,
postmaster@aaaexchangenetwork.com, postmaster@aaafinancialfreedom.com,
postmaster@aaafreetravel.com, postmaster@aaaluxurytravel.com, postmaster@aaanationalfinance.com,
postmaster@aaanationalfinancesolutions.com, postmaster@aaapenguintravel.com,
postmaster@aaapremiercreditrepair.biz, postmaster@aaapremiercreditrepair.org,
postmaster@aaaprovedautorepair.com, postmaster@aaarecoveryservices.com,
postmaster@aaareferraltraveltours.net, postmaster@aaatourguide.com, postmaster@aaatourguide.net,
postmaster@aaatourguides.com, postmaster@aaatourguides.net, postmaster@aaatourvideos.com,
postmaster@aaatourvideos.net, postmaster@aaatransferservices.com, postmaster@aaatravelfare.com,
postmaster@aaatravelguide.net, postmaster@aaatravelguides.com, postmaster@aaatravelguides.net,
postmaster@aaatravelperks.net, postmaster@aaatravelsmooth.com, postmaster@aaatravelvideos.net,
postmaster@aaavinsurance.com, postmaster@aaawebservices.net, postmaster@onlinetriplea.com,
postmaster@triple-a-agency.com, postmaster@triple-a-tracker.com, postmaster@tripleaatm.com,
postmaster@tripleamagazine.com, postmaster@tripleamexico.com, postmaster@tripleamexico.net,
postmaster@triplearaids.com, postmaster@tripleatracker.com, postmaster@wwwaaa-warranty.com
and postmaster@wwwaaawarranty.com by e-mail.
Several timely responses from DBP’s customers were received and
determined to be complete on November 5, 2008. Additional responses were received on
November 6, 2008, which is after the deadline for filing a response, and were
not considered to be in compliance with paragraph 5 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy
(the “Rules”), as they were received late in electronic copy, late in
hard copy, or received in hard copy only.
An Additional Submission was received from Complainant on November 10,
2008, and was determined to be timely and complete pursuant to Supplemental
Rule 7.
A second Additional Submission was received from Complainant on November
13, 2008 that is not considered to be in compliance with Supplemental Rule 7.
On December 2, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Alan L.
Limbury as Panelist, David E. Sorkin as
Panelist, and Sandra J. Franklin as Panelist and Chairperson.
On December 11, 2008, the Panel issued an Interim
Order, directing the following:
The Panel orders that the original Complaint
filed in this case be accepted by NAF.
In the alternative, at Complainant’s election, Complainant may, within
seven (7) days of receiving this Order, amend its Second Amended Complaint to
name Domains by Proxy, Inc. the Respondent “by itself and as proxy for its
customers” presently holding the domain names in dispute. Respondent Domains By Proxy, Inc. must be
served by NAF with the Complaint or the further amended Complaint and a copy of
this Order and given the full response time allowed under the Policy.
Unless Respondent Domains By Proxy, in making
its Response, expresses any objection to the Panel as presently constituted,
this Panel, in determining the Complaint, will take into account arguments made
by Respondent Domains by Proxy, Inc. made on its own behalf and on behalf of
its customers and will consider materials submitted
by those customers directly.
The
reasoning for this Order is discussed in the body of the decision below.
On December 17, 2009, the National Arbitration Forum received
Complainant’s Third Amended Complaint naming Respondent as Domains By Proxy,
Inc. by itself and as proxy for its customers.
On December 22, 2008, a
Notification of Complaint and Re-Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 12, 2009, by which
Responses could be filed to the Complaint, was transmitted to Respondent via
e-mail, post and fax, to all entities and persons listed on Respondents’
registration as technical, administrative and billing contacts.
On January 12, 2009, Domains By Proxy, Inc.
requested, and Complainant stipulated to, an Extension of three days in the
response time, with a new deadline of January 15, 2009, which was granted.
On January 13, 2008, a second response was
received from Herbert Kraft, one of DBP’s customers, and determined to be late.
On January 15, 2009, a Response was received from
DBP and determined to be complete. In
its Response, DBP did not object to the Panel as presently constituted.
On January 16, 2009, a timely Additional
Submission was received from Complainant and determined to be complete.
Due to the minor deficiencies and the complicated nature of this case,
the Panel has determined to accept the responses from DBP’s customers, filed in
response to Complainant’s Second Amended Complaint. Included in that group was a response from
Herbert Kraft. Mr. Kraft’s late second
response dated January 13, 2008, will not be considered. Due to the complicated nature of this case,
the Panel has determined to accept the second Additional Submission from
Complainant dated November 13, 2008.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant. Since the domain names in dispute have been
registered in the names of DBP’s customers since the Complaint was initiated,
and subsequently locked, the Panel takes this as a request that the domain
names be transferred from their current registrants to Complainant.
PRELIMINARY
PROCEDURAL ISSUE: IS THE PRIVACY SERVICE
THE PROPER RESPONDENT?
BACKGROUND PROVISIONS
Paragraph 8(a) of the Uniform Domain Name
Dispute Resolution Policy (UDRP), adopted by the Internet Corporation for
Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on
October 24, 1999 (the “Policy”) states:
8. Transfers During a Dispute.
a. Transfers of a Domain Name to a New Holder.
You may not
transfer your domain name registration to another holder (i) during a pending
administrative proceeding brought pursuant to Paragraph 4 or for a
period of fifteen (15) business days (as observed in the location of our
principal place of business) after such proceeding is concluded; or (ii) during
a pending court proceeding or arbitration commenced regarding your domain name
unless the party to whom the domain name is being transferred agrees, in
writing, to be bound by the decision of the court or arbitrator. We reserve the right to cancel any transfer
of a domain name registration to another holder that is made in violation of
this subparagraph.
Paragraph 1(d) of the Definitions section of
the National Arbitration Forum’s Supplemental Rules provides:
“The Holder of a Domain Name Registration,” as used in The Rules (Rule 1), means the single
person or entity listed in the WHOIS registration information at the time of
the filing of the Complaint with the Forum; and once the registrar has verified
registration, is limited to the single person or entity as verified by the
registrar.
COMPLAINANT’S ARGUMENTS
Complainant primarily argues
that DBP seeks to avoid the obligations imposed by the ICANN Registrar
Accreditation Agreement, which requires registrars to maintain accurate WHOIS
information, including the name and postal address of the holders of all
registered domain names. Complainant
notes that DBP typically transfers the domain name to the concealed registrant
once a UDRP complaint is filed, and cites prior UDRP panel decisions deeming
such transfers to be contrary to UDRP Policy.
DBP’S ARGUMENTS
In addition to giving legitimate reasons for providing privacy services
to the industry, DBP argues that UDRP Policy language does not preclude its
practice of transferring domain names to its customers once a UDRP complaint is
filed, as follows:
1. Paragraph 8(a) of the ICANN Policy allows for
transfer before “commencement” of a proceeding; commencement means when the
administrative body formally commences a case and does not mean when a
complaint is filed.
2. Paragraph 8(a) (ii) also allows for transfer
during a pending proceeding to domain name holders who agree in writing to be bound
by the decision of the court or arbitrator. Customers agree in their
registration and proxy agreements to be bound by the ICANN Policy.
3. NAF Supplemental Rule 1(d) defines the
registrant by reference to the person or entity verified by the Registrar.
Respondent also cites prior panel decisions for its position, in
particular Karsten Manufacturing Corp. v.
Pingify Networks Inc., FA 1232823 (January 5, 2009) which took the
“pragmatic view that if the identity of the beneficial owner of the domain name
is known, can be readily identified, or is revealed by the registrar in
response to a complaint, then it should be the named respondent and the case
under the Policy should be made against that party.”
THE PANEL’S FINDING
First, the Panel makes no finding regarding the legitimacy of privacy
services, but limits itself to a reading of the applicable Policy and
Rules. As the Panel articulated in its
Interim Order, the Panel does not believe DBP has the right to transfer domain
names to its customers after a UDRP Complaint is filed, as the Policy and Rules
are currently written.
NAF Supplemental Rule 1(d)
The Panel relies on the words “at the time of the filing of the
Complaint with the Forum” to determine the domain name holder and
Respondent. These words are
unequivocal.
The remainder of that clause states “and once the registrar has verified registration, is limited to the
single person or entity as verified by the registrar.” This means that there cannot be multiple
registrants or respondents in one UDRP case; the language does not qualify the
definition of the “holder” of the domain name, namely the entity listed “at the
time of the filing of the Complaint.”
Paragraph 8(a) of the UDRP
The Panel relies on the words in sub-paragraph (i):
“You may not transfer …during a pending administrative proceeding.” UDRP domain name proceedings are
administrative proceedings. They are not
court proceedings. They are not
arbitrations. The only sensible
interpretation of sub-paragraph 8(a)(i) is that they cannot be proceedings of
the kind to which sub-paragraph (ii) applies.
Therefore, the provisions contained in DBP’s agreements with its
customers do not function to afford domain name holders the benefit of the
proviso contained in sub-paragraph 8(a)(ii), which says you may not transfer “(ii) during a
pending court proceeding or arbitration commenced regarding your domain name
unless the party to whom the domain name is being transferred agrees, in
writing, to be bound by the decision of the court or arbitrator.”
The Panel acknowledges that DBP’s customers
agreed to be bound by the UDRP. The
Panel also acknowledges that DBP puts its customers on notice that their domain
names will revert back to them in the case of an administrative
proceeding. However, the UDRP simply
doesn’t allow for that.
The prohibition against transfer during the
UDRP proceeding was aimed at preventing cyberflying and did not anticipate the
advent of privacy services.
Notwithstanding the “pragmatic view,” until the Policy and the Rules are
changed, the current Policy and Rules must be interpreted in accordance with
the natural and ordinary meaning of their provisions.
COMPLAINANT’S CONTENTIONS AGAINST CURRENT
DOMAIN NAME HOLDERS
1. All of the disputed domain names are confusingly similar to Complainant’s AAA mark.
2. The holders of the disputed domain names do not have any rights or legitimate interests in the domain names.
3. The disputed domain names were registered and are being used in bad faith.
RESPONSES
1. In its Response, on the subject of the three
required elements, DBP contends that it is not possible to prove bad faith
registration and use on its part because it merely collects flat fees from its
users.
2. No correspondence was received from the
holders of the following domain names:
<aaa-automotivewarrantydeals.com>¸<aaa-travel-international.biz>, <aaa-travel-international.info>, <aaaamobilefleetservice.com>, <aaaautopartslocators.com>, <aaabizcredit.com>, <aaaccuratecredit.com>,
<aaacetravel.com>, <aaacetravel.info>, <aaacetravel.net>, <aaacreditforyou.com>, <aaadiscountss.com>, <aaadiscountss.net>, <aaafinancialfreedom.com>, <aaafreetravel.com>, <aaaluxurytravel.com>, <aaanationalfinance.com>, <aaanationalfinancesolutions.com>,
<aaapenguintravel.com>, <aaaprovedautorepair.com>[1],
<aaarecoveryservices.com>, <aaareferraltraveltours.net>, <aaatourguide.com>, <aaatourguide.net>, <aaatourguides.com>, <aaatourguides.net>, <aaatourvideos.com>, <aaatourvideos.net>, <aaatransferservices.com>, <aaatravelguide.net>, <aaatravelguides.com>, <aaatravelguides.net>, <aaatravelperks.net>, <aaatravelsmooth.com>, <aaatravelvideos.net>, <aaawebservices.net>, <tripleaatm.com>, <tripleamagazine.com>, <wwwaaa-warranty.com>, and <wwwaaawarranty.com>.
3. Correspondence containing a consent to
transfer was received by the holders of the following domain names:
<aaacredit4u.com>, <aaapremiercreditrepair.biz>, <aaapremiercreditrepair.org>, <aaatravelfare.com>, <onlinetriplea.com>,
<triple-a-agency.com>, <triple-a-tracker.com>, <tripleatracker.com>, and <triplearaids.com>.
4. Substantive Correspondence:
a. The holder of <aaacorporatetravelsolutions.com>, <aaacorporatetravelsolutions.net>,
and <aaacorporatetravelsolutions.org>
contends that he purchased the domain names from a legitimate domain broker for
future use.
b. The holder of <aaaexchangenetwork.com> contends
that the domain name is not confusingly similar to Complainant’s marks, and
that it is preparing to use the domain to offer exchange services in the
timeshare industry.
c. The holder of <aaavinsurance.com> contends that
this domain has never been used, but that he intends to use it as a vertical
insurance directory. The holder further
states that he chose the domain “purely with an eye towards alphabetical order.”
d. The holder of <tripleamexico.com> and <tripleamexico.net> contends that
he purchased the <tripleamexico.com>
domain name for the purpose of creating either an official site or a fan site
for a wrestling organization called Asistencia Asesoira y Administracion, and
points out other uses of AAA. The holder
does not mention <tripleamexico.net>.
DISCUSSION
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.”
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.
FINDINGS
Complainant owns the AAA mark (Reg. No. 703,556 issued
Aug. 30, 1960) and the TRIPLE-A mark (Reg. No. 1,168,790 issued Sept. 8, 1981),
both of which were registered with the United States Patent and Trademark
Office (“USPTO”). The Panel therefore
finds that Complainant has sufficient rights in its marks under Policy ¶
4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb.
Forum Aug. 4, 2004) (finding that the complainant had established rights in the
GOOGLE mark through its holding of numerous trademark registrations around the
world); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum
Feb. 1, 2005) (finding that the complainant had established rights in the
PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with
the USPTO).
Complainant’s trademarks have been filed for various
classes, including a host of insurance services, travel services, financial
services, and automobile services. The
disputed domain names are confusingly similar to its AAA and TRIPLE-A marks, in
that each of the disputed domain names contains one of the marks along with
generic or descriptive terms, hyphens, and generic top-level domains. The Panel finds, as many previous UDRP panels
have found, that additions of generic words, particularly words that describe a
complainant’s business, to a complainant’s marks do not sufficiently
disintinguish the disputed domain names under Policy ¶ 4(a)(i). See
Warner Bros. Entm’t Inc. v. Sadler,
FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms
to the complainant’s HARRY POTTER mark in the respondent’s
<shop4harrypotter.com> and <shopforharrypotter.com> domain names
failed to alleviate the confusing similarity between the mark and the domain
names). The Panel finds that the
addition of hyphens and top-level domains does not sufficiently distinguish the
domain names from the corresponding trademarks under Policy ¶ 4(a)(i). See
Nev. State Bank v. Modern Ltd. – Cayman
Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been
established that the addition of a generic top-level domain is irrelevant when
considering whether a domain name is identical or confusingly similar under the
Policy.”); see also Chernow Commc’ns,
Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or
absence of punctuation marks, such as hyphens, does not alter the fact that a
name is identical to a mark").
While various domain name holders in this case contend that the disputed domain names are comprised of common, descriptive terms, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i); this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are 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 satisfied the requirements of Policy ¶ 4(a)(i) for all of the disputed domain names.
The
remaining elements under Paragraph
4(a) of the Policy are discussed below.
Regarding DBP’s Response and
the Domain Names Not Specifically Responded To
First and foremost, the Panel defers to any available direct
correspondence from DBP’s customers and addresses it below. Presumably, in attempting to transfer the
domain names to its customers and arguing that its customers should be able to
respond to complaints, DBP also defers to their specific arguments.
As to those domain names not specifically responded to by a DBP
customer, the Panel finds that it is entitled to accept Complainant’s assertion
that the customers have no legitimate rights or interests since neither they
nor DBP addressed that point. As for bad
faith, the Panel finds bad faith registration and use in that the domain names
all contain one of Complainant’s well-known marks and redirect Internet traffic
to Complainant’s competitors.[2]
However, in this case, the Panel declines to find bad faith on the
basis of mere use of a privacy service.
Regarding the Domain Names
with Consent to Transfer
Where there is consent to transfer the Panel orders transfer without
considering the substantive issues, in line with voluminous UDRP decisions on
that point.
Regarding <aaacorporatetravelsolutions.com>, <aaacorporatetravelsolutions.net>, and <aaacorporatetravelsolutions.org>
The Panel finds that the holder, Dennis Rochford, does
not conduct any business under this domain and is not commonly known by the
domain name, and therefore has not shown any rights or legitimate interests in
the domain name. Further, the Panel
finds that Rochford knew of Complainant’s trademark in AAA, particularly
well-known in the travel industry, and therefore registered and used the domain
name in bad faith. The Panel finds that
Rochford intended to capitalize on the likelihood of confusion by diverting
travel business to his website.
Regarding
<AAAexchangenetwork.com>
The holder of this
domain name, Parmamagoo Media, LLC, claims that it is preparing to use the
domain to provide exchange services in the timeshare industry. While Complainant uses its AAA mark in the
travel industry, the Panel finds that the words “exchange network” are not by
themselves indicative of any particular service or industry. The Panel does not believe that Complainant
can control every possible use of its marks; it is limited to the class
restrictions in its registrations.
Therefore, it is possbile for Parmamagoo to have a legitimate interest
in the domain name. The
Panel finds that Complainant did not meet its burden of proof as to the second
required element of Policy ¶ 4(a).
Regarding
<aaavinsurance.com>
The Panel finds Complainant’s assertions establish a prima facie case of absence of rights or
legitimate interests. Shane Johnson does
not conduct any business under this domain name and is not commonly known by
the domain name, and therefore has not shown any rights or legitimate interests
in the domain name. Further, the Panel
finds that Johnson knew of Complainant’s trademark in AAA, particularly
well-known in the insurance industry, and therefore registered and used the
domain name in bad faith. Specifically,
there is a glaring likelihood of confusing the public. The Panel finds that Johnson intended to
capitalize on that confusion by diverting insurance business to its website.
Regarding
<tripleamexico.com> and <tripleamexico.net>
The Panel finds Complainant’s assertions establish a prima
facie case of absence of rights or legitimate interests. The holder of these domain names,
Herbert Kraft, has not shown any connection to the Mexican wrestling
organization Asistencia Asesoira y
Administracion. He also did not provide
a shred of evidence to back up the claim of intended use in connection with the
wrestling organization. The domain name
currently resolves to a Domains Priced Right parking page containing links to
Complainant and its competitors, with no mention of wrestling, an indication of
bad faith. The Panel therefore finds
that the requirements of the Policy are satisfied with regard to these domain
names.
DECISION
With respect to the domain <AAAexchangenetwork.com>, Complainant having failed to establish all
three elements required under the ICANN Policy, it is Ordered that the
Complaint be DISMISSED.
Since the holders of the following domain names have
consented to transfer, it is Ordered that the <aaacredit4u.com>, <aaapremiercreditrepair.biz>,
<aaapremiercreditrepair.org>, <aaatravelfare.com>, <onlinetriplea.com>, <triple-a-agency.com>, <triple-a-tracker.com>, <tripleatracker.com> and <triplearaids.com> domain names be TRANSFERRED to
Complainant.
With respect to the following domain names, the Panel concludes that
relief shall be GRANTED.
Accordingly, it is Ordered that the <aaa-automotivewarrantydeals.com>¸<aaa-travel-international.biz>,
<aaa-travel-international.info>,
<aaaamobilefleetservice.com>, <aaaautopartslocators.com>, <aaabizcredit.com>, <aaaccuratecredit.com>, <aaacetravel.com>, <aaacetravel.info>, <aaacetravel.net>, <aaacorporatetravelsolutions.com>,
<aaacorporatetravelsolutions.net>,
<aaacorporatetravelsolutions.org>,
<aaacreditforyou.com>, <aaadiscountss.com>, <aaadiscountss.net>, <aaafinancialfreedom.com>, <aaafreetravel.com>, <aaaluxurytravel.com>, <aaanationalfinance.com>, <aaanationalfinancesolutions.com>,
<aaapenguintravel.com>, <aaaprovedautorepair.com>,
<aaarecoveryservices.com>, <aaareferraltraveltours.net>, <aaatourguide.com>, <aaatourguide.net>, <aaatourguides.com>, <aaatourguides.net>, <aaatourvideos.com>, <aaatourvideos.net>, <aaatransferservices.com>, <aaatravelguide.net>, <aaatravelguides.com>, <aaatravelguides.net>, <aaatravelperks.net>, <aaatravelsmooth.com>, <aaatravelvideos.net>, <aaavinsurance.com>, <aaawebservices.net>, <tripleaatm.com>,
<tripleamagazine.com>, <tripleamexico.com>, <tripleamexico.net>, <wwwaaa-warranty.com> and <wwwaaawarranty.com>
domain names be TRANSFERRED to Complainant.
Alan L. Limbury, Panelist
David E. Sorkin, Panelist
Sandra J. Franklin, Panelist and Chairperson
Dated: January 30, 2009
[1] Though Complainant addressed this domain name and specifically responded to correspondence from the domain name holder, apparently upon the belief that this correspondence had been filed with the Forum, neither the Forum nor the Panelists were given a copy of any such correspondence. One member of the Panel would have specifically asked the holder for its correspondence, or in the alternative would deny relief under the Policy based solely upon the responsive evidence provided by Complainant, on the ground that the dispute is primarily contractual in nature. A majority of the Panel, however, holds that there is no response in this case, bearing in mind that the holder is not even a party to this proceeding.
[2] One member of the Panel would specifically find bad faith registration against DBP in the cases where DBP was put on notice of Complainant’s trademarks prior to registering a confusingly similar domain name.
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