The American Automobile
Association, Inc. v. Zag Media Corp. c/o Whois Privacy Services
Claim Number: FA0809001226952
PARTIES
Complainant is The American Automobile Association,
Inc. (“Complainant”), represented by Hope Hamilton, of Covington &
Burling LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aaacars.com>, registered with eNom, Inc.
PANEL
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
On September 30, 2008, eNom, Inc. confirmed by e-mail to the
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@aaacars.com by e-mail.
On October 23, 2008 a timely
Response was received in electronic format. No hard copy was received prior to
the Response deadline. The Response is
therefore incomplete under ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy
(the “Rules”) ¶5. The Panel has
nevertheless taken the Response into account.
On October 23, 2008 electronically and on October 24, 2008 in hard copy,
Complainant submitted an Additional Submission in a timely manner in accordance
with the Forum’s Supplemental Rule ¶7. Respondent submitted an e-mail in response on October 23, 2008.
On October 31, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Citing
Complainant says the disputed domain name, registered on March 7, 2008,
is confusingly similar to Complainant’s
Complainant contends that Respondent has no rights or legitimate
interest in the disputed domain name, which was registered and is being used in
bad faith.
Complainant says Respondent is not known by the disputed domain name
and that, prior to Respondent’s receipt of a cease-and-desist letter from
Complainant dated March 26, 2008, the disputed domain name resolved to a
parking page containing sponsored links, of the kind which commonly generate
“click through” revenue, to sites offering new cars for sale and car hire
services. Subsequent to that letter, the disputed domain name has resolved to
an eBay auction website offering used vehicles for sale. Complainant contends that
neither use is a bona fide offering
of goods or services nor a legitimate non-commercial or fair use.
Complainant says Respondent should have known the disputed domain name
was confusingly similar to Complainant’s famous AAA marks; its use enables
Respondent to profit from pay-per-click arrangements and to disrupt
Complainant’s business; and Respondent’s customer’s use of a proxy service to
conceal its identity is further evidence of bad faith.
B. Respondent
Although Zag Media Corp. c/o Whois Privacy Services responded to the
Complaint as Respondent, it seeks to distinguish between itself and its
customer, to which it refers throughout the Response as “the domain owner.”
Respondent says people are not confused about <aaacars.com>, a website about high quality used car
auctions, versus <aaa.com>, an automobile club. “AAA” is a common, generic, descriptive term
meaning high quality. For this reason the domain owner has rights to use it as
well as the more than 100
Respondent says the domain owner had plans for the domain to be
developed prior to the dispute and that these were communicated to Complainant. The domain owner spent significant resources
to purchase the domain name and develop and host the website. It was concerned
about the costs of dealing with this Complaint and, in order to reach an
amicable solution, made a “without prejudice” offer in good faith to transfer
the domain name to Complainant for $500 to cover some of its costs. Instead
Complainant threatened to bring the matter to the Panel as an act of bad faith.
Complainant did not provide to the case coordinator all its e-mails to Respondent,
whereas Respondent’s reply to the Complaint was copied to the case coordinator.
It appears Complainant was not interested in an amicable solution without going
through the UDRP process.
Respondent says utilizing Whois privacy does not mean bad faith, citing
WWF-World Wide Fund for Nature aka WWF
International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975
(WIPO Nov. 1, 2006). Over 7 million of
the 24 million domains registered with GoDaddy use its privacy service, Domains
By Proxy Inc.
C. Additional Submissions
Paragraph 12 of the Rules does not
contemplate unsolicited submissions after the Complaint and Response and gives
the Panel the "sole discretion" as to acceptance and consideration of
Additional Submissions. The overriding principle of Rule 12 enables the Panel
both to disregard unsolicited submissions received within the time limits
contemplated by the Forum’s Supplemental Rule 7 and to take into account
unsolicited submissions received outside those time limits. See Darice, Inc. v.
In this case the Panel is prepared
to consider Complainant’s Additional Submission insofar as it responds to
Respondent’s reliance on the existence of third party uses of AAA in
Respondent’s reply, which the Panel
takes into account, seeks to clarify the Response by stating that the domain
name was not registered primarily for the purpose of selling, renting or
otherwise transferring the registration to Complainant who is the owner of the
trademark or to a competitor of Complainant and that the offer made was clearly
an attempt to reach an amicable settlement and was not for valuable
consideration in excess of Respondent’s documents out-of-pocket expenses
directly related to the domain name.
FINDINGS
Complainant has established all the elements
necessary to entitle it to the relief which it seeks.
DISCUSSION
Procedural
issue: who is the proper Respondent?
Paragraph 1 of the Rules defines
Respondent as “the holder of a domain-name registration against which a
complaint is initiated.” The
Substantive
issues
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 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;
(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.
Whether or not
Complainant has common law trademark rights, as to which there is no evidence
before the Panel, Complainant clearly has long established registered rights in
the trademark “AAA” in the field of automobile and travel-related products and services, as has
been shown by the evidence here and recognized by other panels and by the
courts of the United States. See Am. Auto. Ass’n, Inc. v.
The fact that the disputed domain name may comprise common, descriptive terms, as argued by Respondent, does not preclude a finding of confusing similarity. 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.”).
Is the domain name
<aaacars.com> confusingly
similar to Complainant’s “AAA” mark? Confusion in this context, in the sense of
bewilderment or failing to distinguish between things, is a state of wondering
whether there is an association, rather than a state of erroneously believing
that there is one. An appropriate formulation might be: “Is it likely that, because
of the similarity between the domain name on the one hand and the Complainant’s
trademark on the other hand, people will wonder whether the domain name is
associated in some way with the Complainant?”
SANOFI-AVENTIS v. Jason Trevenio, D2007-0648 (WIPO July 11, 2007).
The Panel finds the disputed domain name to be confusingly similar to Complainant’s AAA mark because the additional generic word “cars” evokes Complainant’s automobile and travel-related products and services. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).
The addition of the generic
top-level domain “.com” is inconsequential.
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.”).
Complainant has
established this element of its case.
Once Complainant has made a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), 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).
Complainant contends that Respondent is not commonly known by the disputed domain name and asserts that Respondent is not permitted to use Complainant’s AAA mark. The WHOIS information lists Respondent as “Zag Media Corp. c/o Whois Privacy Services.” The name of the “domain owner,” as Respondent describes its customer, remains a mystery, since Respondent has not revealed it. The Panel accepts Complainant’s contention and assertion. Complainant has established a prima facie case of absence of rights or legitimate interests on the part of Respondent.
In seeking to demonstrate that it has rights or legitimate interests in the disputed domain name, Respondent, Zag Media Corp. c/o Whois Privacy Services, finds itself in a dilemma. On the one hand, it registered the domain name in its own name, acting as a privacy shield on behalf of the person or entity which it calls the “domain owner.” As agent, Respondent has neither rights nor legitimate interests in the domain name of the kind that are relevant in this proceeding. Any such rights or interests belong to the unidentified principal on whose behalf Respondent acted in registering the domain name. Respondent’s rights or interests as registrant consequent upon mere compliance with the requirements for registration are of no consequence in a proceeding under the Policy.
On the other hand, Respondent seeks to argue that the “domain owner,” whose identity it has studiously failed to disclose, has rights or legitimate interests in the domain name by reason of its plans to use and its actual use of the domain name prior to notice of this dispute. However, the only rights and interests that are relevant in this proceeding are those of Respondent, being the registrant of the domain name at the time of the filing of the Complaint.
For this reason alone, the Panel finds that Respondent has failed to discharge the shifted onus and that Complainant has established this element of its case.
Even if it were appropriate to take into consideration any rights or legitimate interests that the “domain owner” might have, the Panel finds that none have been established. Prior to notice of this dispute by way of Complainant’s cease and desist letter, the “domain owner” used the disputed domain name to operate a pay-per-click advertising website for automobile-related products and services, thereby illegitimately trading off Complainant’s goodwill in its “AAA” mark to attract Internet traffic to the “domain owner’s” website. Such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005).
Complainant has established this
element of its case.
Since Respondent registered the disputed domain name on behalf of its customer, which Respondent calls the “domain owner,” whose identity it has kept secret, the question arises whether Respondent can be said to have registered and to be using the disputed domain name in bad faith.
In contrast to the requirement of Policy ¶ 4(a)(ii) that a Complainant prove that Respondent itself has rights or legitimate interests in the disputed domain name, Policy
¶ 4(a)(iii) is expressed in the passive voice, requiring Complainant to prove that Respondent’s domain name “has been registered and is being used in bad faith.” Although each of the circumstances deemed by Policy ¶ 4(b) to be evidence of both bad faith registration and bad faith use require proof of purpose or intent on the part of Respondent, those circumstances are expressly stated to be without limitation. Thus evidence pertaining to the knowledge, intent, purpose and conduct of Respondent’s customer, the “domain owner,” may be taken into account in determining this element.
Another basis upon which the knowledge, intent, purpose and conduct of Respondent’s customer may be taken into account here is the common law principle that an agent is liable for the conduct of an undisclosed principal.
Complainant relies upon claimed disruption to its business by the use of the disputed domain name and corresponding website to advertise Complainant’s direct competitors; actual or constructive knowledge of Complainant and its rights in its marks; and use of a proxy service to conceal the true identity of Respondent’s customer. Respondent denies registration by its customer primarily for the purpose of selling the domain name to Complainant at a profit. The Panel makes no such finding since the offer to transfer the domain name for $500 was made “without prejudice” and Complainant, properly, did not raise it in the Complaint.
Mere constructive knowledge is
insufficient to support a finding of bad faith.
See, e.g.,
Deep Foods, Inc. v. Jamruke,
LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006). However, in light
of the fame attaching to Complainant’s AAA mark in the field of automobile and travel-related products and services, the
Panel finds that it is more likely than not that
Respondent’s customer had actual knowledge of Complainant’s AAA mark when
engaging Respondent to register the disputed domain name for use in that field
and that, accordingly, the disputed domain name was registered in bad faith.
The
Panel also finds that, in connecting the disputed domain name to a website
offering pay-per-click links to websites offering products and services for US
dollars in the automotive field, the disputed domain name is being used in bad
faith.
Although proxy registration is not necessarily
a sign of illegitimate purpose, see Fifth
Third Bancorp v. Secure Whois Info. Serv., D2006-0696 (WIPO Sept.
14, 2006), the concealment provided by proxy registration can be indicative of bad faith registration
and use, see Spin Master Ltd. v DCSTEAM INC., FA 1210515 (Nat. Arb. Forum Aug.
5, 2008) and can be abused by
cybersquatters, see Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir
Putinov, WIPO Case No. D2004-0311 (finding bad faith on the part of the
proxy service provider as well as by the real party in interest and
encouraging proxy service
providers, upon being informed of a trademark violation, to use best endeavours
to support the UDRP system and the injured trademark owners).
Whether the purpose of the customer in using a proxy
service be innocent or guilty, for the actual registrant (the proxy service
provider) to conceal the identity of its customer in the face of a UDRP
complaint, as Respondent has done here, is to obstruct the UDRP system. In this
Panel’s opinion, such concealment amounts to bad faith on the part of the proxy
service provider.
For all the reasons stated above, Complainant has established this element of its case.
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 <aaacars.com> domain name be TRANSFERRED
from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: November 13, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum