The American Automobile Association, Inc. v. Jack Holder
Claim Number: FA0810001227171
Complainant is The American Automobile Association, Inc. (“Complainant”), represented by Erin
C. Smith, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are as follows:
<aaaadventures.com>, <aaablondes.com>,
<aaabroker.com>, <aaabrokerage.com>, <aaacreditservice.com>,
<aaadotcoms.com>, <aaadots.com>, <aaadownload.com>,
<aaafinders.com>, <aaahq.com>, <aaaland.com>,
<aaalocator.com>, <aaaname.com>, <aaanames.com>,
<aaanames.net>, <aaaquest.com>, <aaaregistry.com>, <aaatelephone.com>, and <aaatoys.com>,
registered with Dotster, Inc. d/b/a PersonalNames.com;
<aaacatalog.com>, <aaaerotica.com>,
<aaanudes.com>, <aaapcs.com>, <aaatravels.com>,
<aaawarranty.com>, and <aaaworks.com>,
registered with Tucows, Inc. d/b/a Itsyourdomain.com;
<aaaheadquarters.com>, registered with Register.com,
Inc.; and
<aaasearch.com> and <aaasearchengine.com>,
registered with Namescout.com d/b/a Domainplaza.ca.
The undersigned certifies 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 1, 2008.
On October 1, 2008, Dotster, Inc. d/b/a PersonalNames.com confirmed by e-mail to the National Arbitration Forum that the <aaaadventures.com>, <aaablondes.com>, <aaabroker.com>, <aaabrokerage.com>, <aaacreditservice.com>, <aaadotcoms.com>, <aaadots.com>, <aaadownload.com>, <aaafinders.com>, <aaahq.com>, <aaaland.com>, <aaalocator.com>, <aaaname.com>, <aaanames.com>, <aaanames.net>, <aaaquest.com>, <aaaregistry.com>, <aaatelephone.com>, and <aaatoys.com> domain names are registered with Dotster, Inc. d/b/a PersonalNames.com, and that Respondent is the current registrant of the names. Dotster, Inc. d/b/a PersonalNames.com has verified that Respondent is bound by the Dotster, Inc. d/b/a PersonalNames.com 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 1, 2008, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaaheadquarters.com> domain name is registered with Register.com, Inc., and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On October 1, 2008, Namescout.com d/b/a Domainplaza.ca confirmed by e-mail to the National Arbitration Forum that the <aaasearch.com> and <aaasearchengine.com> domain names are registered with Namescout.com d/b/a Domainplaza.ca, and that Respondent is the current registrant of the names. Namescout.com d/b/a Domainplaza.ca has verified that Respondent is bound by the Namescout.com d/b/a Domainplaza.ca registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On October 2, 2008, Tucows, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the National Arbitration Forum that the <aaacatalog.com>, <aaaerotica.com>, <aaanudes.com>, <aaapcs.com>, <aaatravels.com>, <aaawarranty.com>, and <aaaworks.com> domain names are registered with Tucows, Inc. d/b/a Itsyourdomain.com, and that Respondent is the current registrant of the names. Tucows, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Tucows, Inc. d/b/a Itsyourdomain.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On October 15, 2008, Dotster, Inc. d/b/a PersonalNames.com informed the National Arbitration Forum by e-mail that Respondent’s registration of the <aaaquest.com> domain name had expired during the course of this dispute. Complainant has renewed or restored the domain name under the same commercial terms as Respondent. Accordingly, the <aaaquest.com> domain name has been placed in registrar hold and registrar lock status, the WHOIS contact information for Respondent has been removed, and the WHOIS entry indicates that the domain name is subject to dispute pursuant to EDDP ¶ 3.7.5.7.
On October 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 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@aaaadventures.com, postmaster@aaablondes.com, postmaster@aaabroker.com, postmaster@aaabrokerage.com, postmaster@aaacatalog.com, postmaster@aaacreditservice.com, postmaster@aaadotcoms.com, postmaster@aaadots.com, postmaster@aaadownload.com, postmaster@aaaerotica.com, postmaster@aaafinders.com, postmaster@aaaheadquarters.com, postmaster@aaahq.com, postmaster@aaaland.com, postmaster@aaalocator.com, postmaster@aaaname.com, postmaster@aaanames.com, postmaster@aaanames.net, postmaster@aaanudes.com, postmaster@aaapcs.com, postmaster@aaaquest.com, postmaster@aaaregistry.com, postmaster@aaasearch.com, postmaster@aaasearchengine.com, postmaster@aaatelephone.com, postmaster@aaatoys.com, postmaster@aaatravels.com, postmaster@aaawarranty.com, and postmaster@aaaworks.com by e-mail.
On November 6, 2008, Dotster, Inc. d/b/a PersonalNames.com informed the National Arbitration Forum by e-mail that Respondent’s registration of the <aaaname.com> domain name had expired during the course of this dispute. Complainant has renewed or restored the domain name under the same commercial terms as Respondent. Accordingly, the <aaaname.com> domain name has been placed in registrar hold and registrar lock status, the WHOIS contact information for Respondent has been removed, and the WHOIS entry indicates that the domain name is subject to dispute pursuant to EDDP ¶ 3.7.5.7.
On November 10, 2008, Dotster, Inc. d/b/a PersonalNames.com informed the National Arbitration Forum by e-mail that Respondent’s registration of the <aaaadventures.com> domain name had expired during the course of this dispute. Complainant has renewed or restored the domain name under the same commercial terms as Respondent. Accordingly, the <aaaadventures.com> domain name has been placed in registrar hold and registrar lock status, the WHOIS contact information for Respondent has been removed, and the WHOIS entry indicates that the domain name is subject to dispute pursuant to EDDP ¶ 3.7.5.7.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <aaaadventures.com>, <aaablondes.com>, <aaabroker.com>, <aaabrokerage.com>, <aaacatalog.com>, <aaacreditservice.com>, <aaadotcoms.com>, <aaadots.com>, <aaadownload.com>, <aaaerotica.com>, <aaafinders.com>, <aaaheadquarters.com>, <aaahq.com>, <aaaland.com>, <aaalocator.com>, <aaaname.com>, <aaanames.com>, <aaanames.net>, <aaanudes.com>, <aaapcs.com>, <aaaquest.com>, <aaaregistry.com>, <aaasearch.com>, <aaasearchengine.com>, <aaatelephone.com>, <aaatoys.com>, <aaatravels.com>, <aaawarranty.com>, and <aaaworks.com> domain names are confusingly similar to Complainant’s AAA mark.
2. Respondent does not have any rights or legitimate interests in the <aaaadventures.com>, <aaablondes.com>, <aaabroker.com>, <aaabrokerage.com>, <aaacatalog.com>, <aaacreditservice.com>, <aaadotcoms.com>, <aaadots.com>, <aaadownload.com>, <aaaerotica.com>, <aaafinders.com>, <aaaheadquarters.com>, <aaahq.com>, <aaaland.com>, <aaalocator.com>, <aaaname.com>, <aaanames.com>, <aaanames.net>, <aaanudes.com>, <aaapcs.com>, <aaaquest.com>, <aaaregistry.com>, <aaasearch.com>, <aaasearchengine.com>, <aaatelephone.com>, <aaatoys.com>, <aaatravels.com>, <aaawarranty.com>, and <aaaworks.com> domain names.
3. Respondent registered and used the <aaaadventures.com>, <aaablondes.com>, <aaabroker.com>, <aaabrokerage.com>, <aaacatalog.com>, <aaacreditservice.com>, <aaadotcoms.com>, <aaadots.com>, <aaadownload.com>, <aaaerotica.com>, <aaafinders.com>, <aaaheadquarters.com>, <aaahq.com>, <aaaland.com>, <aaalocator.com>, <aaaname.com>, <aaanames.com>, <aaanames.net>, <aaanudes.com>, <aaapcs.com>, <aaaquest.com>, <aaaregistry.com>, <aaasearch.com>, <aaasearchengine.com>, <aaatelephone.com>, <aaatoys.com>, <aaatravels.com>, <aaawarranty.com>, and <aaaworks.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The American
Automobile Association, Inc., provides a wide variety of services under its AAA
mark, including automotive, travel, insurance, and financial services. Complainant also sells toys and other goods
under the AAA mark. Complainant has used
its AAA mark since 1902, and has registered its mark with numerous governmental
authorities. To illustrate a few
examples, Complainant holds the following trademark registrations for the AAA
mark with their corresponding governmental authorities:
· Registration Number 703,556 issued August 30, 1960 by the United States Patent and Trademark Office
· Registration Number 829,265 issued May 23, 1967 by the United States Patent and Trademark Office
· Registration Number TMA430671 with the Canadian Intellectual Property Office
· Registration Number 763,123 with the Mexican Institute of Industrial Property
· Registration Number 2,086,870 with the German Patent and Trade Mark Office
· Registration Number 1,042,418 with the Italian Patent and Trademark Office
· Registration Number 188,636 with the Norwegian Industrial Property Office
· Registration Number 1,772,071 MO with the Spanish Patent and Trademark Office
· Registration Number 543,640 with the Swiss Federal Institute of Intellectual Property
·
Registration Number 1,103,764 with the State
Intellectual Property Office of the Peoples’ Republic of
Respondent registered the disputed domain names on the following dates:
|
Domain
Name |
Registration
Date |
|
<aaadots.com> |
March 19, 2001 |
|
<aaabrokerage.com> |
July 12, 2001 |
|
<aaadotcoms.com> |
July 12, 2001 |
|
<aaadownload.com> |
August 8, 2001 |
|
<aaahq.com> |
August 26, 2001 |
|
<aaabroker.com> |
September 16, 2001 |
|
<aaafinders.com> |
September 26, 2001 |
|
<aaatoys.com> |
October 3, 2001 |
|
<aaaregistry.com> |
March 14, 2002 |
|
<aaatravels.com> |
April 2, 2002 |
|
<aaaheadquarters.com> |
April 4, 2002 |
|
<aaaerotica.com> |
June 16, 2002 |
|
<aaapcs.com> |
December 4, 2002 |
|
<aaaworks.com> |
December 15, 2002 |
|
<aaanudes.com> |
June 2, 2003 |
|
<aaawarranty.com> |
July 5, 2003 |
|
<aaacatalog.com> |
July 22, 2003 |
|
<aaacreditservice.com> |
July 29, 2003 |
|
<aaalocator.com> |
August 31, 2003 |
|
<aaaland.com> |
October 6, 2003 |
|
<aaaadventures.com> |
November 8, 2003 |
|
<aaatelephone.com> |
January 16, 2004 |
|
<aaanames.com> |
April 28, 2004 |
|
<aaasearchengine.com> |
August 16, 2004 |
|
<aaaquest.com> |
October 14, 2004 |
|
<aaanames.net> |
January 22, 2005 |
|
<aaablondes.com> |
September 1, 2006 |
|
<aaaname.com> |
November 4, 2006 |
|
<aaasearch.com> |
January 22, 2008 |
Most of Respondent’s disputed domain names resolve to
pay-per-click websites that are parked with the registrar and hosted by
Sedo. Many of the links on these
websites advertise the services of Complainant’s competitors. Respondent’s <aaaerotica.com> and <aaanudes.com> domain names
previously redirected Internet users to advertising portals with links to
adult-oriented websites. Respondent’s <aaacreditservice.com>
domain name does not resolve to an active website. Both prior and current uses of many of
disputed domain names also displayed the statement, “This domain may be for
sale by its owner!”
Complainant notes that Respondent has been ordered by at least one previous UDRP panel to transfer a domain name that was found to be infringing upon the intellectual property rights of that complainant. See Ticket Solutions, Inc. v. Holder, FA 226441 (Nat. Arb. Forum April 10, 2004).
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 asserts rights to the AAA mark by virtue of its
numerous trademark registrations with multiple governmental authorities around
the world. Complainant also evidenced
that it has used the AAA mark in commerce since 1902. The Panel finds this to be ample evidence of
Complainant’s rights in the AAA mark for the purposes of Policy ¶ 4(a)(i). See Seiko Epson Corp. &
Epson Am., Inc. v. AOS Web Com, Inc., FA 823033 (Nat. Arb. Forum
Nov. 27, 2006) (“Seiko Epson has long established rights in the distinctive
mark EPSON through use and through numerous United States and other trademark
and service mark registrations.”); see
also State Farm Mut. Auto. Ins. Co. v. wwWHYyy.com, FA 1063456 (Nat. Arb.
Forum Sept. 25, 2007) (finding that “[t]here can be no doubt that STATE FARM is
a very famous mark, and Complainant has clearly established rights in the
[mark]” pursuant to Policy ¶ 4(a)(i) based upon its numerous federal trademarks
and use in commerce since 1930).
Respondent’s disputed domain names all incorporate Complainant’s AAA mark. Some of the disputed domain names add descriptive terms that are related to Complainant’s business, such as “broker,” “credit service,” “travel,” and “warranty,” while others add generic terms unrelated to Complainant’s business. However, the acronym AAA has become representative of Complainant’s business, and the Panel finds that this remains the dominant element of the disputed domain names. In addition, each domain name adds the generic top-level domain “.com” except for the <aaanames.net> domain name, which adds “.net.” The Panel finds this addition to be insignificant under an analysis of the Policy because all domain names require top-level domains. Therefore, the Panel finds that the disputed domain names are not sufficiently distinguished from Complainant’s AAA mark, so the Panel concludes that they are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Because Respondent has not responded to the Complaint, the
Panel presumes that all reasonable allegations in the Complaint are true, and
therefore that Respondent does not possess any rights or legitimate interests
in the disputed domain names. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the
Complaint functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name. It also allows the Panel to accept all
reasonable allegations set forth…as true.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29,
2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’
from the Respondent’s failure to comply with the rules ‘as it considers
appropriate.”). Nevertheless, the Panel
in its discretion chooses to examine whether Respondent possesses rights or
legitimate interests in the disputed domain names under an analysis of the
elements provided under Policy ¶ 4(c).
Policy ¶ 4(c) provides for three ways in which a respondent can demonstrate rights or legitimate interests. Based on the following analysis, the Panel concludes that Respondent cannot satisfy any of these three elements.
Complainant contends that there is no evidence in the record
to indicate that Respondent is commonly known by the disputed domain
names. Indeed, the lack of response in
this case does not help Respondent’s cause.
Consequently, the Panel must rely solely upon the WHOIS domain name
registration information, as well as the information in the record submitted by
Complainant. The WHOIS information for
each of the disputed domain names identifies Respondent as “Jack Holder,” and
there is no indication that Respondent is licensed or authorized to register
domain names containing Complainant’s AAA mark.
The Panel can find no other evidence in the record that is relevant to
this Policy ¶ 4(c)(ii) analysis. Therefore, pursuant to this element of the
Policy, the Panel concludes that Respondent is not commonly known by the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that the
respondent was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Two of the disputed domain names, <aaaerotica.com> and <aaanudes.com>, contain
numerous hyperlinks that advertise adult-oriented content and websites. This is significant because the disputed
domain names contain Complainant’s AAA mark, yet Complainant’s business is not
associated with adult-oriented content.
Therefore, the Panel finds that these uses of the disputed domain names
could potentially tarnish Complainant’s mark.
Again, the Panel presumes that Respondent earns click-through fees for
each redirected Internet user that clicks on one of these links. The Panel therefore concludes that such uses
of these disputed domain names constitutes neither bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor
legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See MatchNet plc. v. MAC Trading, D2000-0205
(WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial gain by attracting
Internet users to third party sites offering sexually explicit and
adult-oriented material where such use is calculated to mislead consumers and
to tarnish the complainant’s mark); see
also Vivendi Universal
Games v. Chang, FA 206328 (Nat. Arb. Forum
Dec. 17, 2003) (finding that the respondent did not use a domain name in
connection with a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the domain
name to divert Internet users seeking the complainant's goods or services to
adult-oriented material and links, while presumably earning a commission or
referral fees from advertisers).
Respondent is not making any active use of the <aaacreditservice.com> domain name.
Therefore, it is easy for the Panel to conclude that Respondent is not
using the <aaacreditservice.com> domain name in connection with 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 George Weston Bakeries
Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had
no rights or legitimate interests in a domain name under either Policy ¶
4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the
domain name); see also Am. Home Prods. Corp. v.
Malgioglio, D2000-1602 (WIPO Feb. 19, 2001)
(finding no rights or legitimate interests in the domain name <solgarvitamins.com>
where the respondent merely held the domain name without actively using it).
The remainder of the disputed domain names
resolve to parked pages hosted by Sedo.
Many of the links on these resolving websites promote the products of
Complainant’s competitors, while some are generally unrelated to Complainant’s
business. The Panel presumes that
Respondent receives click-through fees for each redirected Internet user that
clicks on one of these hyperlinks. The
circumstances of this case are parallel to those in MEDIATIS
Many of the disputed domain names indicate on their resolving websites, “This domain may be for sale by its owner!” The Panel finds this significant to mention because Respondent has merely parked most of the disputed domain names with Sedo, but has given no indication that there is a future intended commercial use of the disputed domain names. This indicates to the Panel that Respondent registered the disputed domain names primarily for the purpose of profiting from them, either by collecting click-through fees or by selling them. The Panel finds Respondent’s apparent willingness to sell the disputed domain names without making any active commercial use provides additional evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Based on this analysis, the Panel concludes that Policy ¶
4(a)(ii) has been satisfied.
Policy ¶ 4(b) illustrates four examples by which a panel may find bad faith registration and use pursuant to Policy ¶ 4(a)(iii). These four examples are non-exclusive, and other considerations may also apply. For the reasons set forth below, the Panel finds that Respondent has registered and used the disputed domain names in bad faith pursuant to all the factors listed in Policy ¶ 4(b), as well as a few additional factors relative to three of the disputed domain names pursuant to Policy ¶ 4(a)(iii) generally.
The Panel has previously stated that Respondent is offering
many of the disputed domain names for sale to the general public. While no specific price has been stated,
previous panels have noted that this is not necessary for a finding of bad
faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”). The Panel also notes that Respondent has
parked the disputed domain names with Sedo, but has not advanced any potential
future commercial use of the disputed domain names. This leads the Panel to conclude that
Respondent has registered and used the disputed domain names primarily for the
purpose of selling them based on the value of Complainant’s AAA mark, and this evidences
bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Diners
Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839
(Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes
that it is “available for lease or sale,” evidence that the domain name was
registered and used in bad faith pursuant to Policy ¶ 4(b)(i)
can be inferred from the fact that “the sole value of the
[<wwwdinersclub.com] domain name is dictated by its relation to the
complainant’s registered DINERS CLUB mark).
Respondent has registered twenty-nine domain names that
contain Complainant’s AAA mark. What
strikes the Panel is that almost all of these domain names were registered on
different dates spanning the years between 2001 and 2008. The Panel therefore finds that Respondent is
attempting to prevent Complainant from reflecting its AAA mark in domain
names. In addition, Complainant notes that Respondent has been
ordered by at least one previous UDRP panel to transfer a domain name that was
found to be infringing upon the intellectual property rights of that
complainant. See Ticket Solutions, Inc. v. Holder, FA
226441 (Nat. Arb. Forum April 10, 2004).
For both of these reasons, the Panel finds that Respondent has
established a pattern of bad faith registration and use, which is evidence of
bad faith pursuant to Policy ¶ 4(b)(ii). See Yahoo! Inc. v.
Deiana, FA 339579 (Nat.
Arb. Forum Nov. 22, 2004) (“It is found and
determined that Respondent is in violation of Policy ¶ 4(b)(ii)
because Respondent registered the disputed domain names to prevent Complainant
from reflecting its YAHOO! mark in the corresponding
domain names. The registration of the
[<ayhooo.com>, <ayhooo.net >, <ayhooo.org>,
<ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>,
<ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>,
and <searchayhooo.com>] domain names herein constitutes a pattern
of registering trademark-related domain names in bad faith.”); see also Arai Helmet Americas, Inc. v. Goldmark,
D2004-1028 (WIPO Jan. 22, 2005 (finding that
“Respondent has registered the disputed domain name, <aria.com>, to
prevent Complainant from registering it” and taking notice of another UDRP
proceeding against the respondent to find that “this is part of a pattern of
such registrations”).
Most of Respondent’s disputed domain names resolve to
websites hosting by the parking company Sedo.
Many of the links advertised on these websites promote the products of
Complainant’s competitors. Should an
Internet user click on one of these links, the user would then continue
shopping with Complainant’s competitors rather than Complainant. Therefore, Respondent’s use of Complainant’s
AAA mark in the disputed domain names is likely to disrupt Complainant’s
business by diverting Internet users to competing businesses. This constitutes bad faith registration and
use on Respondent’s part pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a
respondent used the disputed domain name to operate a commercial search engine
with links to the complainant’s competitors).
On the other hand, Internet users may not recognize that
they have reached the websites of Complainant’s competitors, or they may
mistakenly believe that Complainant is affiliated with or has endorsed the
competing businesses. Respondent is
misappropriating Complainant’s AAA mark and creating this likelihood of
confusion for Respondent’s own commercial gain, presumably through the accrual
of click-through fees. These
circumstances indicate that Respondent registered and is using the disputed
domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See
Respondent’s <aaaerotica.com> and <aaanudes.com> domain names
contain hyperlinks that advertise adult-oriented content and websites. As indicated earlier, this use of the
disputed domain names containing Complainant’s AAA mark may tarnish
Complainant’s mark. The Panel therefore
finds this to be evidence that Respondent registered and is using the <aaaerotica.com>
and <aaanudes.com> domain names in bad faith pursuant to Policy ¶
4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb.
Forum Mar. 18, 2003) (finding that the respondent’s
tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Youtv, Inc.
v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith
where the respondent attracted users to his website for commercial gain and
linked his website to adult-oriented websites).
Respondent is not actively using the <aaacreditservice.com> domain name. Many previous panels have found, and this panel so finds, that inactive use of a disputed domain name without further explanation constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that inactive use of a domain name permits an inference of registration and use in bad faith).
Based on the aforementioned reasons, the Panel finds that
Policy ¶ 4(a)(iii) has been satisfied with regards to
each of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaaadventures.com>, <aaablondes.com>, <aaabroker.com>, <aaabrokerage.com>, <aaacatalog.com>, <aaacreditservice.com>, <aaadotcoms.com>, <aaadots.com>, <aaadownload.com>, <aaaerotica.com>, <aaafinders.com>, <aaaheadquarters.com>, <aaahq.com>, <aaaland.com>, <aaalocator.com>, <aaaname.com>, <aaanames.com>, <aaanames.net>, <aaanudes.com>, <aaapcs.com>, <aaaquest.com>, <aaaregistry.com>, <aaasearch.com>, <aaasearchengine.com>, <aaatelephone.com>, <aaatoys.com>, <aaatravels.com>, <aaawarranty.com>, and <aaaworks.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 12, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum