NATIONAL ARBITRATION FORUM

 

DECISION

 

The American Automobile Association, Inc. v. Dave Wright c/o FinestNames.com

Claim Number: FA0903001252299

 

PARTIES

Complainant is The American Automobile Association, Inc., (“Complainant”) represented by Erin C. Smith, of Covington & Burling LLP, California, USA.  Respondent is Dave Wright c/o FinestNames.com (“Respondent”), Nevada, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us>, registered with Moniker Online Services, 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 13, 2009; the Forum received a hard copy of the Complaint on March 16, 2009.

 

On March 13, 2009, Moniker Online Services, LLC confirmed by e-mail to the Forum that the <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us> domain names are registered with Moniker Online Services, LLC and that Respondent is the current registrant of the names.  Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On March 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On April 16, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us> domain names are confusingly similar to Complainant’s AAA mark.

 

2.      Respondent does not have any rights or legitimate interests in the <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us> domain names.

 

3.      Respondent registered and used the <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us> domain names in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The American Automobile Association, Inc., has used the AAA mark since at least as early as 1902.  Complainant holds several trademark registrations of the AAA mark with the United States Patent and Trademark Office (“USPTO”) in connection with various services including providing bail bonds (Reg. No. 829,265 issued May 23, 1967), credit cards (Reg. No. 1,678,804 issued March 10, 1992), and home equity loans (Reg. No. 1,806,416 issued Nov. 23, 1993).

 

Respondent registered the <aaabailbond.us> domain name on July 9, 2005; the <aaacredit.us> domain name on May 15, 2008, and the <aaamortgage.us> domain name on October 8, 2008.  All of the disputed domain names resolve to websites displaying links to third-party websites, some of which are Complainant’s direct competitors.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 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; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s multiple, long-standing trademark registrations with the USPTO establish its rights in the AAA mark under Policy ¶ 4(a)(i).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO).

 

The <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us> domain names incorporates Complainant’s entire AAA mark, adds the country-code top-level domain (“ccTLD”) “.us,” and adds terms that describe services provided by Complainant to its members.  The Panel finds that the addition of a ccTLD is irrelevant under Policy ¶ 4(a)(i).  The Panel finds that the addition of a term that describes Complainant’s business renders the disputed domain name confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the UDRP).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us> domain names pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under [UDRP] ¶ 4(a)(ii).”). 

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us> domain names.  Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by any of the disputed domain names.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the AAA mark, and the WHOIS information identifies Respondent as “Dave Wright c/o FinestNames.com.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(iii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Respondent is using the <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us> domain names to link to third-party websites, some of which are in direct competition with Complainant.  Respondent’s use of domain names that are confusingly similar to Complainant’s AAA mark to redirect Internet users interested in Complainant’s online services to websites that offer competition for those services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s use of Complainant’s AAA mark in the disputed domain names to divert Internet users to Complainant’s competitors suggests that Respondent registered the disputed domain names intending to disrupt Complainant’s business.  The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to [UDRP] ¶¶ 4(b)(iii) [and] (iv).”).

 

The Panel infers that Respondent receives click-through fees for diverting Internet users to Complainant’s competitors.  Because Respondent’s domain names are confusingly similar to Complainant’s AAA mark, Internet users accessing Respondent’s disputed domain names may become confused as to Complainant’s affiliation with the resulting websites.  Respondent is attempting to profit from this confusion via the click-through-fees.  Thus, Respondent’s use of the <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us> domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <aaabailbond.us>, <aaacredit.us>, and <aaamortgage.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

John J. Upchurch, Panelist

Dated:  April 30, 2009

 

 

NATIONAL ARBITRATION FORUM