The American Automobile Association, Inc. v. Gary Witcher
Claim Number: FA0904001259306
Complainant is The American Automobile Association, Inc. (“Complainant”), represented by Peter
D. Saharko, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aaadiscountcruises.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 27, 2009.
On April 27, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaadiscountcruises.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 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@aaadiscountcruises.com by e-mail.
Respondent submitted an e-mail on May 22, 2009 which was not accepted as an official response because of formal deficiencies.
Having received no proper response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aaadiscountcruises.com> domain name is confusingly similar to Complainant’s AAA mark.
2. Respondent does not have any rights or legitimate interests in the <aaadiscountcruises.com> domain name.
3. Respondent registered and used the <aaadiscountcruises.com> domain name in bad faith.
B. Respondent failed to submit a proper Response in this proceeding. Respondent did state he did not oppose the transfer of the domain name to Complainant.
Complainant, The American Automobile Association, Inc., uses its AAA mark in commerce in connection with automotive, travel and booking services for cruise vacations, insurance, financial, and discount products and services. Complainant holds a registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 829,265 issued May 23, 1967).
Respondent registered the <aaadiscountcruises.com> domain name on March 27, 2008. The disputed domain name resolves to a website that advertises Respondent’s cruise booking service business, which is in direct competition with Complainant. Respondent also attempted to sell the disputed domain name to Complainant for $2000.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 Complainant has sufficiently
established rights in the AAA mark under Policy ¶ 4(a)(i) because it holds a
registration of the mark with the USPTO.
Respondent’s <aaadiscountcruises.com> domain name contains Complainant’s mark in its entirety, merely adds the terms “discount” and “cruises” that are descriptive of Complainant, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that none of these additions to Complainant’s mark sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the <aaadiscountcruises.com> domain name is confusingly similar to Complainant’s AAA mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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 Policy ¶ 4(a)(ii).”).
Respondent’s
<aaadiscountcruises.com>
domain name resolves to a website that advertises
Respondent’s business, which directly competes with Complainant. The Panel finds that this use of the disputed
domain name is not a bona fide
offering of goods and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Clear
Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2,
2003) (finding that the respondent, as a competitor of the complainant, had no
rights or legitimate interests in a domain name that utilized the complainant’s
mark for its competing website).
Furthermore, Respondent is listed in the WHOIS information
as “Gary Witcher,” which does not
indicate that Respondent is commonly known by the <aaadiscountcruises.com> domain name. Respondent has not
offered any evidence to indicate otherwise.
The Panel finds that Respondent is not commonly known by the disputed
domain name under Policy ¶ 4(c)(ii). 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 Policy ¶ 4(c)(ii) does not
apply); see also Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”).
Finally, Complainant submitted
evidence of an email detailing a phone conversation between Complainant and
Respondent in which Respondent attempted to sell the disputed domain
name to Complainant for $2000. The Panel
finds that Respondent’s apparent
willingness to forfeit the disputed domain name is evidence that
Respondent lacks rights and legitimate interests in the <aaadiscountcruises.com> domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to
sell a domain name to the complainant suggests that a respondent has no rights
or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Reese v. Morgan, FA 917029
(Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to
sell a contested domain name for more than its out-of-pocket costs provided
additional evidence that Respondent had no rights or legitimate interests in
the contested domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent attempted to
sell the disputed domain name to Complainant for $2000. The Panel finds that Respondent’s attempt to
sell the confusingly similar disputed domain in excess of out-of-pocket costs
is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name
for $2,000 sufficient evidence of bad faith registration and use under Policy ¶
4(b)(i)); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale).
In addition, the Panel finds that Respondent’s use of the <aaadiscountcruises.com> domain name to divert Internet users to a website for Respondent’s competing business, thereby disrupting Complainant’s business constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Respondent’s <aaadiscountcruises.com>
domain name resolves to a website that advertises Respondent’s
business, which directly competes with Complainant’s business. The Panel finds that this use of the disputed
domain for commercial gain creates a likelihood of confusion as to
Complainant’s affiliation with the disputed domain name and constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See AOL
LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that
the respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining
from the likelihood of confusion between the complainant’s AIM mark and the
competing instant messaging products and services advertised on the
respondent’s website which resolved from the disputed domain name); 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 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 <aaadiscountcruises.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 9, 2009
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