The American Automobile Association, Inc. v. Wireless Marketing Enterprises, LLC
Claim Number: FA0809001226676
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 <aaaautosafety.com>, <aaamotorsales.com>, <aaarewardsclub.com>, <aaasafetyclub.com>, <aaasafetynetwork.com>, <aaasafetyproducts.com>, <aaasafetyway.com>, <aaatravelsafety.com>, <aaawarrantyservices.com> and <shopaaarewards.com>, registered with Godaddy.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.
James A. Carmody, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2008.
On September 29, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaaautosafety.com>, <aaamotorsales.com>, <aaarewardsclub.com>, <aaasafetyclub.com>, <aaasafetynetwork.com>, <aaasafetyproducts.com>, <aaasafetyway.com>, <aaatravelsafety.com>, <aaawarrantyservices.com> and <shopaaarewards.com> domain names are registered with Godaddy.com, Inc. and that 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 October
3, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 23, 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@aaaautosafety.com, postmaster@aaamotorsales.com, postmaster@aaarewardsclub.com, postmaster@aaasafetyclub.com, postmaster@aaasafetynetwork.com, postmaster@aaasafetyproducts.com, postmaster@aaasafetyway.com, postmaster@aaatravelsafety.com, postmaster@aaawarrantyservices.com and postmaster@shopaaarewards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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 <aaaautosafety.com>, <aaamotorsales.com>, <aaarewardsclub.com>, <aaasafetyclub.com>, <aaasafetynetwork.com>, <aaasafetyproducts.com>, <aaasafetyway.com>, <aaatravelsafety.com>, <aaawarrantyservices.com> and <shopaaarewards.com> domain names are confusingly similar to Complainant’s AAA mark.
2. Respondent does not have any rights or legitimate interests in the <aaaautosafety.com>, <aaamotorsales.com>, <aaarewardsclub.com>, <aaasafetyclub.com>, <aaasafetynetwork.com>, <aaasafetyproducts.com>, <aaasafetyway.com>, <aaatravelsafety.com>, <aaawarrantyservices.com> and <shopaaarewards.com> domain names.
3. Respondent registered and used the <aaaautosafety.com>, <aaamotorsales.com>, <aaarewardsclub.com>, <aaasafetyclub.com>, <aaasafetynetwork.com>, <aaasafetyproducts.com>, <aaasafetyway.com>, <aaatravelsafety.com>, <aaawarrantyservices.com> and <shopaaarewards.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, the American Automobile Association, Inc. (“AAA”), is one of the world’s premier automotive clubs which actively advocates for better roads, more reliable vehicles and overall travel safety. Complainant owns a trademark registration for the AAA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 703,556 issued August 30, 1960).
Respondent registered the <aaaautosafety.com>, <aaamotorsales.com>, <aaarewardsclub.com>, <aaasafetyclub.com>, <aaasafetyproducts.com>, <aaatravelsafety.com>, <aaawarrantyservices.com> and <shopaaarewards.com> domain names on June 15, 2006; the <aaasafetynetwork.com> domain name on November 21, 2005; and the <aaasafetyway.com> domain name on August 10, 2005. The disputed domain names resolve to websites offering links to third-party websites, some of which are in competition with Complainant.
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.
Complainant has provided evidence of the registration of its
AAA mark with the USPTO. The Panel finds
these submissions adequately establish Complainant’s rights in its AAA mark
pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA
652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”); 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.”).
Complainant alleges that Respondent’s disputed domain names
are confusingly similar to Complainant’s AAA mark pursuant to Policy ¶
4(a)(i). Each of Respondent’s disputed
domain names contains Complainant’s mark in its entirety, adds a generic term
or terms, and adds the generic top-level domain “.com.” The Panel finds that the addition of a
generic term with an obvious relationship to a complainant’s business to a
registered mark fails to circumvent uncertainty and creates a confusing
similarity. See Space Imaging LLC v. Brownell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where the respondent’s domain
name combines the complainant’s mark with a generic term that has an obvious relationship
to the complainant’s business); see also
Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar.
13, 2000) (finding that the respondent’s domain name <marriott-hotel.com>
is confusingly similar to the complainant’s MARRIOTT mark). In addition, the Panel finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
a registered mark. See Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc., 202
F.3d 489 (2d Cir. 2000), cert. denied, 530
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights and legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights and legitimate interests in the disputed domain names. The Panel, however, will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Complainant contends that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information lists Respondent as “Wireless Marketing Enterprises, LLC.” The record indicates Complainant has not authorized Respondent to use its AAA mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); 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).
Complainant contends that Respondent’s use of the disputed domain names to offer links to third-party websites, some of which are in competition with Complainant, is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names. The Panel finds that Respondent’s use of the disputed domain names does not evidence 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names resolve to websites offering links to third-party websites with both unrelated material and content in competition with Complainant. The Panel finds that such use of the confusingly similar disputed domain names causes a disruption to Complainant’s business and provides evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent is using the disputed domain names for the purpose of collecting
click-through fees for each redirected Internet user reaching the disputed
domain names. Internet users searching
for Complainant’s website will likely be confused into thinking that the
disputed domain names are affiliated with or sponsored by Complainant. The Panel finds that Respondent’s registration
and use of the disputed domain names in order to cause confusion and collect
referral fees for each redirected Internet user is evidence of bad faith
pursuant to 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 Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”).
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 <aaaautosafety.com>, <aaamotorsales.com>, <aaarewardsclub.com>, <aaasafetyclub.com>, <aaasafetynetwork.com>, <aaasafetyproducts.com>, <aaasafetyway.com>, <aaatravelsafety.com>, <aaawarrantyservices.com> and <shopaaarewards.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 11, 2008
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