The American Automobile Association, Inc. v. CCG
Claim Number: FA0811001234708
Complainant is The American Automobile Association,
Inc. (“Complainant”), represented by Erin C. Smith, of Covington &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aaaclubcard.com>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 19, 2008.
On November 19, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaaclubcard.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 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.
A timely Response was received and determined to be complete on December 10, 2008.
On December 17, 2008 the Respondent’s representative sent an additional correspondence via e-mail to the Domain Dispute Case Coordinator of the National Arbitration Forum.
On December 17, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant bases its Complaint on several
federal trademark registrations and common law rights in the United States in
relation to marks consisting of or containing AAA, including but not limited to
the word trademarks No. 829,265, and No. 1,678,804 AAA and the word trademark
No. 2,656,59 AAA Gift Card. In support of the protection of these trademarks
the Complainant has enclosed the relevant extracts from the USPTO trademark
register. The Complainant also referred to several international trademark
registrations and argued that its AAA marks have become valuable and famous in
Complainant claims that the disputed domain name is confusingly similar to a mark when the name includes the entire mark, even if one or more generic terms or gTLDs are added. Complainant further argues that where the generic or descriptive terms relate to the Complainant’s business, the likelihood of confusion is even greater.
Complainant claims that there is an even greater likelihood of confusion here because the web-site located at AAACLUBCARD.COM until recently displayed links to AAA’s own website and continues to display links to websites offering services that compete directly with those offered by the Complainant, including credit and travel services.
Complainant argues that Respondent has no rights or legitimate interests in respect of the domain name, since:
- there is no evidence that Respondent is commonly known by the domain name as Respondent has not registered the domain name under a name containing the AAA mark, rather it is registered to CCG;
-the use of the domain names by Respondent is not a bona fide offering of goods or services or for a legitimate non-commercial or fair use, as the Respondent appears to have registered the domain name for the purpose of profiting from pay-per-click advertisements, many of them for goods and services that directly compete with Complainant’s services;
- the Respondent uses the domain name in bad faith.
Complainant claims that the registration and use of the domain names by Respondent is in bad faith, since:
- the Respondent has a history of registering domain names that infringe third parties’ trademark rights;
- the Respondent tries to take advantage of Internet users searching for information about the Complainant and its goods and services;
- the use of the domain name is to offer links to Complainant and its direct competitors;
- the Complainant repeatedly informed the Respondent that the domain name registered by Respondent infringes on Complainant’s trademarks.
The Response does not contain any arguments in relation to the trademarks of the Complainant and issue of confusing similarity.
The Respondent claimed to have copyright to the name CampusClubCard from 1998 and that he was looking for names that he could use to sell discounted services through, and that he was thinking about Car Club discounts and Senior Discount Cards when he registered the domain name.
The Respondent claimed to have brought the domain name with no ill intent.
The Respondent did not file any documents or evidences in support of its claims.
Last but not least, the Respondent stated that he was terminating all rights to the name and that it is „my mistake”.
C. Additional Submissions
The additional correspondence filed by the Respondent on December 17, 2008 stated the followings: „As stated before, I would like to offer to transfer the Domain name to the AAA. I lay no claims on this name and will aid the transfer anyway I can.” The e-mail of the Domain Dispute Case Coordinator of December 18, 2008 requested the Panel to review this additional correspondence as requested by Complainant.
Since 1902, the Complainant has
used its AAA marks in commerce. Complainant's AAA mark is widely recognized as
indicating goods and services emanating from Complainant and is famous in the
The use of the web-site by the Respondent until recently displayed links to Complainant’s own website and continues to display links to websites offering services that compete directly with those offered by the Complainant, including credit and travel services.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Preliminary Procedural Issue: Deficient Response
The Panel highlights that the Response was not received in hard copy before the Response deadline, thus the Response was deficient. Although the Response does not fully comply with ICANN Rule 5, the Panel, at its discretion decides to consider the Response, since the electronically filed document could be properly examined by the Panel and according to the view of the Panel there is an actual need to resolve the real dispute between the parties.
Preliminary Substantive Issue: Recognition and Consent by the Respondent
The Panel highlights that in the Response and the Additional Submission the Respondent explicitly admitted that the registration was his „mistake” and that he „would like to offer to transfer the Domain name to the AAA…. and will aid the transfer anyway I can”.
The Panel considers that these statements of the Respondent qualify on the one hand as recognition of claims made by the Complainant within the frames of ICANN Policy 4 (a) (i)-(iii), and on the other as consent to the remedy sought by the Complainant, i.e. the transfer of the domain name.
Nevertheless, for the sake of completeness, the conditions of ICANN Policy 4 (a) (i)-(iii) are examined in detail below.
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.
The Panel finds that the trademark extracts filed by the Complainant are sufficient to establish Complainant’s rights in its AAA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the <aaaclubcard.com> domain name is confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). Respondent added two generic terms, “club”
and “card”, and a generic top-level domain (“gTLD”) to Complainant’s mark. The Panel finds that altering Complainant’s
mark in this way does not negate the confusingly similar aspects of
Respondent’s disputed domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant provided evidence that the disputed domain name resolves to a website advertising links to Complainant’s website as well as third-party commercial websites referencing products of Complainant’s competitors. The Panel presumes Respondent’s website to be a pay-per-click (”PPC”) website, generating commercial gain for Respondent when confused consumers click through the advertised links. The Panel finds that Respondent is exploiting the international recognition of Complainant’s AAA mark to attract confused Internet users for commercial gain. Thus, the Panel concludes that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds no evidence that Respondent is commonly known by the disputed domain name. The WHOIS information identifies Respondent as “CCG.” The Panel therefore concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent contends that it holds a copyright in the name, “CampusClubCard” while it sold discount cards in college. However, Respondent did not provide any evidence of such a copyright or its use. Furthermore, the subject-matter of the alleged copyright is different from the disputed domain name, thus the claims of the Respondent are rejected by the Panel.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant cited a previous UDRP case in which Respondent was ordered to transfer several infringing domain names to the complainant in that case. See Diners Club Int’l Ltd. v. CCG, FA 1074819 (Nat. Arb. Forum Oct. 24, 2007). The Panel finds that Respondent has engaged in a pattern of bad faith registration and use, which provides additional evidence of Respondent’s bad faith in this case pursuant to Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s use of the disputed domain name to display links advertising the products of Complainant’s competitors evidences bad faith. The Panel finds that Respondent’s actions disrupt Complainant’s business, and therefore evidence bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant alleges that Respondent’s use of the disputed domain name is likely to cause confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s disputed domain name. Complainant asserts that Respondent has created this confusion for its own commercial gain. The Panel finds this to be true, thus the Panel concludes that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
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 <aaaclubcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: December 31, 2008
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