The American Automobile
Association, Inc. v.
Claim Number: FA0812001239514
Complainant is The American Automobile Association,
Inc. (“Complainant”), represented by Sharron M. Nestor, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aaaactioncars.com>, <aaaautoassociation.com>, <aaautogroupinc.com>, <aaa-autosound.com>, <aaabustours.com>, <aaaclubsouth.com>, <aaa-georgia.com>, <aaampas.com>, <aaa-south.com>, <aaasoutherncalifornia.com>, <aaawierlessservice.com>, and <tripleaaamaps.com> registered with Compana, Llc.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 22, 2008.
On December 23, 2008, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <aaaactioncars.com>, <aaaautoassociation.com>, <aaautogroupinc.com>, <aaa-autosound.com>, <aaabustours.com>, <aaaclubsouth.com>, <aaa-georgia.com>, <aaampas.com>, <aaa-south.com>, <aaasoutherncalifornia.com>, <aaawierlessservice.com>, and <tripleaaamaps.com> domain names are registered with Compana, Llc and that the Respondent is the current registrant of the names. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 December 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 20, 2009 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, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on January 20, 2009.
On January 29, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant bases Complaint on its exclusive ownership of numerous
federal trademark registrations and state and common law rights in the
Complainant alleges that all the disputed domain names are substantially and confusingly similar to the entire AAA Mark or TRIPLE A Mark with the addition of generic terms.
Complainant contends that Respondent has no legitimate interest in the Disputed Domain Names, nor any legal right to use those names, that Respondent is not commonly known by any of the disputed domain names, and that Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services, or a legitimate noncommercial or fair use, but rather appears to have registered the disputed domain names with the purpose of profiting from pay-per-click advertisements, many of them for automotive, travel, insurance, financial, and discount goods and services which compete with AAA’s goods and services.
Complainant further contends that Respondent registered the disputed domain names in bad faith, which –among other facts– is evidenced by the fact that Respondent has registered multiple domain names that are confusingly similar to Complainant’s marks, and by the fact that in the past several UDRP Panels have ordered the Respondent to transfer 146 domain names, which amounts to a pattern of behavior.
Respondent requests that the Panel order the immediate transfer of the disputed domain names. Respondent does not dispute the factual allegations raised in the Complaint but states that its agreement to the relief requested by the Complainant “is not an admission to the three elements of 4(a) of the policy but rather an offer of ‘unilateral consent to transfer’ as prior Panels have deemed it.”
The Panel will not make any findings of fact, for the reasons explained below.
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.”
In this case, both parties have requested that the domain name be transferred from Respondent to Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, the Panel holds that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. The Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance with UDRP Policy. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Given the common request of the Parties, it is Ordered that the <aaaactioncars.com>, <aaaautoassociation.com>, <aaautogroupinc.com>, <aaa-autosound.com>, <aaabustours.com>, <aaaclubsouth.com>, <aaa-georgia.com>, <aaampas.com>, <aaa-south.com>, <aaasoutherncalifornia.com>, <aaawierlessservice.com>, and <tripleaaamaps.com> domain names be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: January 12, 2009
National Arbitration Forum