The American Automobile
Association, Inc. v. CCG
Claim Number: FA0811001234708
PARTIES
Complainant is The American Automobile Association,
Inc. (“Complainant”), represented by Erin C. Smith, of Covington &
Burling LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aaaclubcard.com>, registered with Network
Solutions, Inc.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@aaaclubcard.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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
the
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.
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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.
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 <aaaclubcard.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: December 31, 2008
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