The American Automobile
Association, Inc. v. QTK Internet c/o James M. van Johns
Claim Number: FA0905001261364
PARTIES
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 <aaa.net>, registered with Uk2 Group
Ltd.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Michael A. Albert, Houston Putnam Lowry, and The Honourable Neil
Anthony Brown QC as Panelists. Michael
A. Albert, presiding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 6, 2009; the
National Arbitration Forum received a hard copy of the Complaint on May 7, 2009.
On May 14, 2009, Uk2 Group Ltd. confirmed by e-mail to the
National Arbitration Forum that the <aaa.net> domain name is registered
with Uk2 Group Ltd. and that the
Respondent is the current registrant of the name. Uk2 Group Ltd.
has verified that Respondent is bound by the Uk2
Group Ltd. 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 20, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 9, 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@aaa.net by e-mail.
Respondent requested an extension of seven days to the time in which to
file the Response, and after that extension was granted, requested another
extension to the filing deadline. The
second extension was also granted, with a final deadline for the filing of a Response
of June 23, 2009.
A timely Response was received and determined to be complete on June 23, 2009.
An Additional Submission was received from Complainant on June 29,
2009, and was determined to be timely and complete in compliance with the
National Arbitration Forum’s Supplemental Rule 7.
An additional submission was received from Respondent on July 6, 2009,
and was determined to be timely and complete.
On July 8, 2009, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum appointed
Michael A. Albert, Houston Putnam Lowry, and The Honourable Neil Anthony
Brown QC as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
The American Automobile Association, Inc. (“Complainant”) has used AAA
and associated marks in commerce since at least 1902, and has obtained a
federally registered trademark for the mark AAA for automobile association
services (US Reg. No. 829,265), travel agency services (US Reg. No. 2,158,654),
and printed maps (US Reg. No. 3,162,780), among others. Complainant also owns several international
trademark registrations.
The disputed domain name <aaa.net>
is identical to Complainant’s AAA marks.
QTK Internet (“Respondent”) has no legal rights to or legitimate
interest in the disputed domain name.
Complainant has neither licensed nor authorized Respondent to use the
AAA marks as part of a domain name.
There is no evidence that Respondent is commonly known by the disputed
domain name, and Respondent is not using the domain name in connection with a bona fide offering of goods or services,
or for a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bad
faith. Respondent registered a domain
name identical to Complainant’s famous marks to attract Internet users for
commercial gain, and has done so while attempting to conceal its identity, ultimately
changing the WHOIS registry information the day it was served with the
Complaint. Respondent also has an
extensive history of registering domain names that infringe trademark rights,
which establishes a pattern of bad faith registration and use.
B. Respondent
Respondent contends as follows:
Respondent registered the disputed domain name on March 4, 1999,
choosing <aaa.net> because
“AAA” is a very desirable term, used for bond ratings, battery and shoe sizes,
and a variety of organizations. It is
also desirable because it is a three-letter string, of which there are
relatively few. Respondent did not
register the domain name with Complainant or Complainant’s marks in mind.
Respondent takes no position on the enforceability of Complainant’s
trademarks but asserts that Complainant must prove that Respondent targeted its
marks to establish that the disputed domain is identical or confusingly
similar.
Respondent has rights and a legitimate interest in the domain name,
both because it did not target Complainant’s trademark in registering the
domain name and because Respondent has used the domain name in connection with
legitimate pay-per-click advertisements that are unrelated to the goods and
services covered by Complainant’s mark.
Complainant cannot demonstrate that Respondent registered and is using
the domain name in bad faith because there is no evidence that Respondent
registered the domain name with Complainant’s trademark in mind. Past domain name disputes involving
Respondent are both irrelevant—since Respondent is not aiming to prevent
Complainant from reflecting its marks in a corresponding domain name—and
distinguishable. Similarly, the fact
that Respondent changed the contact information for the disputed domain name is
irrelevant, particularly since both the original and modified contact
information enabled Complainant to contact Respondent. Also, although laches is not recognized under
the Policy, the ten-year period between Respondent’s registration and
Complainant’s Complaint indicates that Complainant did not truly believe the
disputed domain name was registered in bad faith.
Complainant has abused the Policy and engaged in reverse domain name
hijacking, since Complainant knew or should have known that it could not prove
the essential elements required by the policy.
C. Additional Submissions
In its additional submission, Complainant responds that prior cases
involving common terms are distinguishable because they did not involve famous
marks like AAA, and that the timing of the Complaint is irrelevant to the
dispute. There is no evidence of reverse
domain name hijacking because Complainant’s claim satisfies the elements of the
Policy and was brought in good faith.
Additionally, Complainant asserts and submits additional evidence suggesting
that, contrary to Respondent’s contentions, the disputed domain name has
displayed advertisements related to goods and services covered by Complainant’s
mark. Respondent’s bad faith is further
evidenced by the fact that it once displayed “FUCK YOU” (hereinafter “the
profanity”) in giant block letters on the web site associated with the disputed
domain name.
In its additional submission, Respondent asserts that it did not make a
false statement regarding the links that have appeared on its web site, since
it maintains only that it never knowingly displayed advertising related to
Complainant’s goods and services. The
advertisements to which Complainant refers were auto-generated links of which
Respondent had no knowledge. Respondent
asserts that it has no idea how the profanity appeared on its web site and
notes that the same message has appeared on many of its web sites, perhaps due
to hacking.
FINDINGS
Complainant has trademark rights in the mark
AAA by virtue of its registration with the United States Patent and Trademark
Office, and also by virtue of its use in commerce since 1902 and foreign
registrations.
The disputed domain name is identical to
Complainant’s mark.
Complainant has not established that
Respondent lacks rights or legitimate interests in the domain name, or that the
domain name has been registered and used in bad faith.
Complainant has not engaged in reverse domain
name hijacking.
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.”
Paragraph 4(a) of the Policy requires that the Complainant 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 disputed domain name <aaa.net> is identical to Complainant’s registered AAA
mark. The only difference is the
addition of the generic top-level domain “.net,” which is not sufficient to
distinguish the domain name from Complainant’s mark. See
Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding that
the addition of a generic top-level domain is “not relevant” to the Policy
¶ 4(a)(i) inquiry because it is necessary and functional). Respondent’s reasons for registering the
domain name are irrelevant to whether the domain name is identical to
Complainant’s mark, and Respondent does not otherwise dispute the identity
between its domain name and Complainant’s mark.
Complainant must first make a prima facie showing that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does
have rights or legitimate interests. See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18,
2006). While Complainant has established
a prima facie case, Respondent has
successfully rebutted the prima facie
case, and thus Complainant has not proven that Respondent lacks rights or
legitimate interests in the domain name.
Complainant asserts and Respondent does not
deny that Respondent is not commonly known by the <aaa.net> domain name, which is registered to QTK
Internet. Because the threshold for a prima facie showing under
¶ 4(a)(ii) is low, and because there is no evidence that Complainant has
licensed or authorized Respondent’s use of the AAA mark, we conclude that
Complainant has made a prima facie showing
that the Respondent lacks rights or legitimate interests in the disputed domain
name. See Magnetic Shield Corp. v.
MuShield, FA 1158545 (Nat. Arb. Forum Apr. 29, 2008).
The burden thus shifts to the Respondent to
affirmatively demonstrate its rights or interests in the disputed domain
name. Paragraph 4(c) of the Policy lists
three representative circumstances that can demonstrate a registrant’s rights
or legitimate interests. Of these, only
¶ 4(c)(i) is relevant here: “before any notice to you of the dispute, your
use of, or demonstrable preparations to use, the domain name or name
corresponding to the domain name in connection with a bona fide offering of
goods or services . . . .”
Policy ¶ 4(c)(i). There is
no controversy over the relevant timing, as both parties agree that Respondent
had long used the domain name for pay-per-click advertisements before the
instant dispute arose. The only question
is whether this advertising is a bona fide offering of goods or services under
the Policy.
Complainant argues that a pay-per-click
advertising site cannot give rise to a legitimate claim to a domain name,
citing several prior cases in which Complainant was granted relief under the
Policy. See, e.g., Am. Auto Ass’n,
Inc. v. CCG, FA 1234708 (Nat. Arb. Forum Dec. 31, 2008). But in cases like CCG, the panel found that the registrant used pay-per-click
advertisements for services that directly competed with services offered by
AAA, and that the registrant capitalized on consumer confusion. We decline Complainant’s invitation to find
that pay-per-click advertising is per se
illegitimate, even where it is unrelated to goods or services associated with a
trademark. Whether the advertising is a
bona fide offering of goods or services thus turns on whether Respondent is
exploiting Complainant’s mark by offering advertisements that confuse Internet
users for commercial gain. See id. (finding that Respondent
“exploit[ed] the international recognition of Complainant’s AAA mark to attract
confused Internet users for commercial gain”).
For two reasons, we conclude that
Respondent’s pay-per-click advertising is a bona fide offering of goods or
services under the Policy, rather than an illegitimate exploitation of consumer
confusion. First, while <aaa.net> is identical to
Complainant’s marks, it is also a desirable domain name for a variety of other
reasons. “AAA” is the top rating for a
bond, a battery and shoe size, and an acronym associated with many different
organizations. It is also a short,
three-letter string. Kis v. Anything.com Ltd., D2000-0770
(WIPO Nov. 20, 2000) (recognizing the value of a three-letter domain
name). Respondent may have registered <aaa.net> for any of a number of
reasons that have nothing to do with Complainant’s business. This distinguishes the instant case from
cases cited by the Complainant, such as The
American Automobile Association, Inc. v. Transure Enterprise Ltd., FA
1234734 (Nat. Arb. Forum Jan. 9, 2009), where the disputed domain names were
more clearly targeted at the relevant mark.
See id. (resolving disputes
over <aaa-insurance.net>, <aaatravelservice.com> and
<tripleainsuranceagency.com>).
Second, Respondent’s pay-per-click advertisements
are generally not related to the goods or services associated with
Complainant’s mark. While Complainant
has found among the sea of auto-generated advertisements some related to its
business, these appear to be few, and do not seem likely to create or exploit
consumer confusion, and on this record could plausibly have been
inadvertent. For example, Complainant
submitted one screenshot with over a dozen advertisements, two of which
mentioned mortgages—links for “Bad Credit Mortgages” and “UK Mortgage
Loans.” Because such advertisements are
auto-generated and rare, they do not appear to be targeted at Complainant’s
mark. The lack of targeted
advertisements combined with the fact that <aaa.net>
is a desirable domain name for reasons unrelated to Complainant’s business
suggest that Respondent’s pay-per-click advertising is a bona fide offering of goods or services. See
EU Portfolio Ltd. v. Salvia Corp., FA
873726 (Nat. Arb. Forum Feb. 7, 2007) (holding that the use of pay-per-click
advertising is a bona fide offering of goods or services).
Respondent has not registered or used the disputed domain name in bad faith. The Policy provides four representative circumstances that may constitute evidence of bad faith, and Complainant relies exclusively on ¶ 4(b)(iv). That paragraph provides:
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Policy ¶ 4(b)(iv). Whether Respondent’s registration and use of
the domain name falls within ¶ 4(b)(iv) depends on whether Complainant has
established that Respondent had an intent to create a likelihood of
confusion as to the source, affiliation, or endorsement of the web site. For reasons similar to those discussed above,
we find that Complainant has not shown bad faith.
The domain name <aaa.net> is desirable for a variety of reasons, and the lack
of advertisements targeting goods or services offered by Complainant suggest
that Respondent did not intend to confuse Internet users into thinking that
Complainant was somehow associated with Respondent’s web site. Without establishing any such intent,
Complainant’s claim cannot succeed under ¶ 4(b)(iv). See
HP Hood LLC v. hood.com, FA 313566
(Nat. Arb. Forum Oct. 20, 2004) (“To prove bad faith registration under the
Policy, it must be proven that a domain name was registered with Complainant’s
trademark in mind.”).
Complainant cites three other factors as
evidence of bad faith, but none is sufficient to carry Complainant’s
burden. First, Complainant explains that
Respondent attempted to conceal its identity by registering under an alias and
changing the WHOIS registry information when served with a complaint. This is probative of bad faith registration,
but it is not by itself necessarily sufficient to prove that the domain name
“has been registered and is being used
in bad faith.” Policy
¶ 4(a)(iii). See also Grupo Televisa,
S.A., de C.V. v. Autosya S.A. de C.V., DTV2001-007 (WIPO June 11, 2001)
(“Although it is clear that supplying incorrect information cannot be
considered by itself as an act of bad faith; when considered jointly with other
elements, it can be interpreted as evidence of such bad faith.”).
Second, Complainant cites Respondent’s
extensive history of registering domain names that allegedly infringe trademark
rights, which is said to establish a pattern of bad faith registration and
use. But even assuming that
Complainant’s factual allegation is accurate, the Policy does not invite us to
consider a pattern of conduct except under ¶ 4(b)(ii). Complainant does not allege that Respondent’s
conduct falls within that paragraph and has proffered no evidence to suggest
that Respondent “registered the domain name in order to prevent the owner of
the trademark or service mark from reflecting the mark in a corresponding
domain name.” Policy
¶ 4(b)(ii). Even if it were proper
to consider Respondent’s alleged history of bad faith registration, it, by
itself, would not be enough to establish bad faith registration and use here.
Third, Complainant cites the profanity that
appeared on the web site associated with the disputed domain name as evidence
of bad faith. By Complainant’s own
account, the profanity was “once displayed,” suggesting that the profanity
appeared on the web site for a very limited period of time. The fact that it appeared on sites located at
several other of Respondent’s domain names—themselves not alleged to be
identical to famous marks like AAA—suggests that the profanity was not targeted
at Complainant or its customers.
Bad faith is at its core a question of
intent, whether proven under the representative circumstances of ¶ 4(b) or
otherwise. Complainant has proffered
evidence of Respondent’s questionable practices, including supplying incorrect
information during registration. But
taken together, the evidence on this record is insufficient to prove that
Respondent had illicit motives in the instant case—regardless of past
practices—and we cannot conclude that Respondent has both registered and used
the disputed domain name in bad faith.
Because Complainant has acted in good faith,
it has not engaged in reverse domain name hijacking. The Rules provide that reverse domain name
hijacking “means using the Policy in bad faith to attempt to deprive a
registered domain-name holder of a domain name.” Rules ¶ 1. To demonstrate reverse domain name hijacking,
Respondent must show that “Complainant knew of Respondent’s unassailable right
or legitimate interest in the disputed domain name or the clear lack of bad
faith registration and use, and nevertheless brought the Complaint in bad
faith.” Creative Software Specialists, LLC v. Printers Plus, FA 1251542
(Nat. Arb. Forum Apr. 29, 2009). While
we find that Respondent does have rights or a legitimate interest in the domain
name and has not acted in bad faith, we nevertheless believe this case to be a
close one. Additionally, Complainant is
undisputedly the owner of a longstanding, federally registered trademark to which
the disputed domain name is identical.
Complainant reasonably believed that it should prevail on each element
of the Policy, and it did not act in bad faith.
DECISION
Having failed to established two of the three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Michael A. Albert, presiding, Panelist, and The
Honourable Neil Anthony Brown QC, Panelist.
Dated: July 25, 2009
SEPARATE
DECISION BY THE HONOURABLE NEIL ANTHONY BROWN QC ON THE ISSUE OF REVERSE DOMAIN
NAME HIJACKING
I agree with the majority opinion on the
result in this proceeding, that the Complaint should be denied and the grounds
on which that decision is reached, namely that Respondent has a right or
legitimate interest in the disputed domain name and that Respondent did not
register and use the domain name in bad faith.
However, I would also have made a finding of
Reverse Domain name Hijacking against Complainant.
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as:
“using the Policy in bad faith to attempt to deprive a registered
domain-name holder of a domain name.”
Paragraph 15(e) provides:
“If after considering the submissions the Panel finds that the
complaint was brought in bad faith, for example in an attempt at Reverse Domain
Name Hijacking or was brought primarily to harass the domain-name holder, the
Panel shall declare in its decision that the complaint was brought in bad faith
and constitutes an abuse of the administrative proceeding.”
I would have made a finding of Reverse Domain
Name Hijacking for the following reasons.
First, I agree with the majority that there
would be a finding of Reverse Domain Name Hijacking if “Complainant knew of
Respondent’s unassailable right or legitimate interest in the disputed domain
name or the clear lack of bad faith registration and use, and nevertheless
brought the Complaint in bad faith.” Creative Software Specialists, LLC v.
Printers Plus, FA 1251542 (Nat. Arb. Forum Apr. 29, 2009).
But on the facts of the case Complainant must
be taken to have known or should have known that there was no bad faith
registration or use on the part of Respondent and that to make the Complaint in
those circumstances was itself an act of bad faith. That is so for the
following reasons.
First, there were no facts to support the
position that there was any such bad faith registration or use and the Panel
has already dealt with those issues.
Secondly, the facts that were known or should
have been known to Complainant showed the opposite, namely that Respondent had
not used the domain name in bad faith. Complainant relied on, with approval,
the comments in Am. Auto. Ass’n, Inc v.
CCG NAF Case No.FA1234708 that “Respondent is exploiting the international
recognition of Complainant’s AAA mark to attract confused Internet users for
commercial gain.” However, it must have been apparent that whatever Respondent
had done with the domain name in the10 years since it had registered it, it had
not used it to target Complainant or its services. It had not given the
impression that it was the Complainant itself or was authorized by it to set up
the website and had not sought to attract consumers by confusing them, all of
which could easily be seen from using the WayBack machine at <www.archive.org>
and other avenues of inquiry that were available to the Complainant.
Thirdly and more
significantly, Complainant made some very serious accusations against the
Respondent, namely that its conduct was “unsavoury”, that it was playing “fast
with the facts and the law”, making “false statements” and “blatantly false”
ones and that it had shown “ willful blindness” even in registering the domain
name. Allegations of that kind, like the allegation of bad faith itself, may of
course be made in UDRP proceedings, but if they are not supported by facts,
which is the case in the present proceeding, parties run the risk of adverse
findings against them.
Finally, the fact that
Complainant brought the Complaint some 10 years after the domain name was
registered raises some additional questions. It is true that laches is not
normally regarded as a defence in UDRP proceedings, as Respondent concedes, but
it is wrong to say, as Complainant says, that the delay is irrelevant. It is
very relevant in, for example, the present case, for it shows that an
allegation that a domain name was registered 10 years before in bad faith, with
all that that implies, could not be made or persisted with properly without
some evidence to support it. In the present case, that evidence was not there.
Moreover, the passage of such a lengthy time casts doubt on whether the
Complainant could ever have believed that the allegation, or the allegation
that Respondent was using the domain name in bad faith, was true.
The combination of all of
these factors amounts to bringing the Complaint in bad faith within the meaning
of Creative Software Specialists, LLC v. Printers Plus, FA 1251542 (Nat. Arb. Forum Apr. 29, 2009)
and paragraph 15 (e) of the Rules.
As was said in the recent decision in Shoe Land Group LLC v. Development, Services c/o Telepathy Inc.No: FA0904001255365 ( NAF Case, June 9, 2009) “Obviously, a panel should not lightly make a finding of Reverse Domain Name Hijacking against a complainant, but nor should it shy away from making such a finding in a clear case.”
For these reasons I would
have made a finding of Reverse Domain name Hijacking.
The Honourable Neil Anthony
Brown QC, Panelist
Dated: 25 July 2009
DISSENT
I would dissent from my brother panelists.
Complainant registered the AAA mark with the United
States Patent and Trademark Office (“USPTO”) on
Complainant contends the <aaa.net> domain name is identical to the AAA mark. The <aaa.net>
domain name differs from Complainant’s mark only in that the generic
top-level domain (“gTLD”) “.net” has been added to the end of the mark. This single change does not suffice to
distinguish a disputed domain name from a mark, and finds the <aaa.net> domain name is
identical to the AAA mark pursuant to Policy ¶ 4(a)(i). See
SCOLA v. Wick, FA 1115109 (Nat. Arb.
Forum
While Respondent contends the disputed domain
name is comprised of common, descriptive terms and as such cannot be found to
be identical or confusingly similar to Complainant’s mark, such a determination
is not necessary under Policy ¶ 4(a)(i) because this portion of the Policy
considers only whether Complainant has rights in the mark and whether the
disputed domain name is identical or confusingly similar to Complainant’s mark.
See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum
Complainant must first make a prima
facie case Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent
to show it does have rights or legitimate interests. See Document Techs., Inc. v. Int’l Elec.
Commc’ns Inc., D2000-0270 (WIPO
Complainant contends Respondent is not commonly known by the disputed domain names nor has it ever been the owner or licensee of
the AAA mark (whether owned by this Complainant or anyone else with
rights). The WHOIS record for the <aaa.net> domain name lists Respondent as “QTK Internet c/o James M.
van Johns.” In its Additional
Submission, Complainant also contends that, because of the famous nature of
Complainant’s use of the AAA mark, Respondent cannot possibly claim rights or
legitimate interests in the disputed domain name without making a showing that
it’s commonly known by that domain name.
The WHOIS record suggests Respondent has never been commonly known by
any variant on the AAA mark, and therefore Respondent is not commonly known by
the <aaa.net> domain
name pursuant to Policy ¶ 4(c)(ii).
See Am. W. Airlines, Inc. v. Paik, FA
206396 (Nat. Arb. Forum
Respondent has used the disputed domain name
to host a website that features links to third-party websites, and furthermore,
that Complainant collects click-through fees and therefore gains commercially
from this use. This Panelist finds that
this use of the disputed domain name for the collection of click-through fees
is evidence that Respondent is not making a bona fide offering of goods or services under Policy
¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum
Respondent believes other have rights to the
AAA mark. Based upon the information
provided, this is almost certainly true.
However, the question is whether or not Respondent has rights, not
whether or not a third party has rights. See Mattel, Inc. v. RanComp Ltd.,
FA579563 (Nat. Arb. Forum
Complainant notes that in many
previous proceedings, Respondent has been ordered to transfer domain names to
the respective trademark holders in these cases. See
The Guess Who v. QTK Internet/Name Proxy,
James M. van Johns, D2007-0081 (WIPO
Complainant also contends
Respondent is using the disputed domain name to gain commercially from the
diversion of Internet customers from Complainant’s business, through the
collection of “click-through” fees.
Respondent has registered and is using the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) by creating a likelihood of confusion as to
Complainant’s affiliation with the disputed domain name. See
Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum
In its Additional
Submission, Complainant also contends Respondent has used the <aaa.net> domain
name to host a web page that displayed an obscenity in large block
letters. Complainant contends that this
was an attempt to tarnish Complainant’s AAA mark, and is therefore evidence of
bad faith registration and use on the part of Respondent pursuant to Policy ¶
4(a)(iii). While Respondent denies
knowingly doing this, it appears to have occurred. An obscenity in large block letters supports
a finding of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO
Respondent’s
business model is to take generic words and/or letter combinations and to
register them as domain names. Once
someone wants to acquire the domain name, Respondent will sell it (presumably
at a profit, otherwise Respondent could not stay in business). This Panel believes such practices were
intended to be prohibited by the policy, even though this case is a close call.
DECISION
Having established all three elements required under the ICANN Policy,
this Panel would have concluded that relief should have been granted.
Dated:
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