The American Automobile Association, Inc. v. Marcel Diennet
Claim Number: FA0809001227006
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 <aaatriple.com>, registered with Network Solutions, 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
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 27, 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 by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aaatriple.com> domain name is confusingly similar to Complainant’s AAA mark.
2. Respondent does not have any rights or legitimate interests in the <aaatriple.com> domain name.
3. Respondent registered and used the <aaatriple.com> domain name 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 travel information and arrangements as well as other goods and services. Complainant holds a registration for its AAA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 829,265 issued May 23, 1967).
Respondent registered the <aaatriple.com>
domain name 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 its rights in the AAA mark under Policy ¶ 4(a)(i) because it holds a registration of the 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 <aaatriple.com> domain name contains Complainant’s entire mark and merely adds the generic term “triple” to the mark. Thus, the Panel finds that the addition of this generic term does not distinguish the disputed domain name from Complainant’s 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In the beginning, Complainant must make a prima facie showing that Respondent
lacks rights and legitimate interests in the <aaatriple.com>
domain name. The burden then shifts to
Respondent and Respondent must establish that it has rights or legitimate
interests in the disputed domain name.
The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶
4(a)(ii). See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent’s confusingly similar <aaatriple.com> domain name resolves to a website that displays several 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. Thus, the Panel finds that Respondent’s diversion of Internet users to third-party websites for a fee is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(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 does not
indicate that it is commonly known by the <aaatriple.com>
domain name and Respondent has not provided any evidence to suggest
otherwise. Therefore, the Panel finds
that Respondent is not commonly known by the <aaatriple.com>
domain name 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.
is using the confusingly similar <aaatriple.com>
domain name to display hyperlinks to third-party websites, some of which are in
direct competition with Complainant. The
Panel finds that this diversion of Internet users disrupts 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.
Moreover, Respondent is
using the disputed domain name to receive click-through fees for the
aforementioned hyperlinks. In addition,
Respondent’s use of a confusingly similar domain name gives the impression that
Complainant is affiliated with Respondent’s domain name and corresponding
website. The Panel finds that
Respondent’s activities constitute bad faith registration and use under Policy
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 <aaatriple.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 17, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum