The American Automobile
Association, Inc. v.
Claim Number: FA0812001239514
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@aaaactioncars.com, postmaster@aaaautoassociation.com, postmaster@aaautogroupinc.com, postmaster@aaa-autosound.com, postmaster@aaabustours.com, postmaster@aaaclubsouth.com, postmaster@aaa-georgia.com, postmaster@aaampas.com, postmaster@aaa-south.com, postmaster@aaasoutherncalifornia.com,
postmaster@aaawierlessservice.com, and postmaster@tripleaaamaps.com 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.”
FINDINGS
The Panel will not make any findings of fact,
for the reasons explained below.
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.”
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.”).
DECISION
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