The American Automobile Association, Inc. v. Gary S. Kibizoff a/k/a Gary Kibizoff
Claim Number: FA0906001267823
Complainant is The American Automobile Association, Inc. (“Complainant”), represented by Peter
D. Saharko, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <aaa-cruises.com>, <aaa-cruising.com>, <aaa-vacation.com>, <aaacruise.net>, <aaacruiser.com>, <aaacruisers.com>, <aaacruising.com>, <aaacruising.net>, <cruiseaaa.com>, and <cruiseraaa.com>, registered with Register.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 June 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 12, 2009.
On June 15, 2009, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaa-cruises.com>, <aaa-cruising.com>, <aaa-vacation.com>, <aaacruise.net>, <aaacruiser.com>, <aaacruisers.com>, <aaacruising.com>, <aaacruising.net>, <cruiseaaa.com>, and <cruiseraaa.com> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.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 June
19, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 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-cruises.com, postmaster@aaa-cruising.com, postmaster@aaa-vacation.com, postmaster@aaacruise.net, postmaster@aaacruiser.com, postmaster@aaacruisers.com, postmaster@aaacruising.com, postmaster@aaacruising.net, postmaster@cruiseaaa.com, and postmaster@cruiseraaa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 16, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aaa-cruises.com>, <aaa-cruising.com>, <aaa-vacation.com>, <aaacruise.net>, <aaacruiser.com>, <aaacruisers.com>, <aaacruising.com>, <aaacruising.net>, <cruiseaaa.com>, and <cruiseraaa.com> domain names are confusingly similar to Complainant’s AAA mark.
2. Respondent does not have any rights or legitimate interests in the <aaa-cruises.com>, <aaa-cruising.com>, <aaa-vacation.com>, <aaacruise.net>, <aaacruiser.com>, <aaacruisers.com>, <aaacruising.com>, <aaacruising.net>, <cruiseaaa.com>, and <cruiseraaa.com> domain names.
3. Respondent registered and used the <aaa-cruises.com>, <aaa-cruising.com>, <aaa-vacation.com>, <aaacruise.net>, <aaacruiser.com>, <aaacruisers.com>, <aaacruising.com>, <aaacruising.net>, <cruiseaaa.com>, and <cruiseraaa.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant provides automotive, booking, and travel services for cruise vacations under the AAA mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on May 23, 1967 (Reg. No. 829,265). Complainant has used the AAA mark continuously in commerce since at least as early as 1902.
Respondent registered the <aaa-cruises.com> and <aaa-vacation.com> domain names on November 12, 2002. Respondent registered the <aaa-cruising.com> and <aaacruising.com> domain names on November 14, 2002. Respondent registered the <aaacruise.net> and <aaacruising.net> domain names on June 16, 2003. Respondent registered the <aaacruiser.com>, <aaacruisers.com>, <cruiseaaa.com>, and <cruiseraaa.com> domain names on November 15, 2004. The <aaa-cruises.com>, <aaa-vacation.com>, <aaa-cruising.com>, <aaacruisers.com>, and <cruiseraaa.com> domain names resolve to a website that features links to third-party websites that compete with Complainant’s business. The <aaacruising.net> domain name resolves to a website where services that compete with Complainant’s business are offered. The <cruiseaaa.com>, <aaacruise.net>, <aaacruising.com>, and <aaacruiser.com> domain names do not resolve to an active website.
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 established rights in
the AAA mark through its federal trademark registration with the USPTO pursuant
to Policy ¶ 4(a)(i). See
Expedia,
Inc. v. Tan, FA 991075 (Nat. Arb.
Forum June 29, 2007) (“As the [complainant’s] mark is registered with
the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v.
Complainant contends that the disputed domain names are confusingly similar to its AAA mark, because all of the disputed domain names have had
descriptive terms and generic top-level domains (gTLDs) added to each mark. In addition, the <aaa-cruises.com>, <aaa-cruising.com>,
and <aaa-vacation.com> domain names
have a hyphen added to the mark. The
Panel finds that none of these additions have a sufficiently distinguishing
effect on the disputed domain names pursuant to Policy ¶ 4(a)(i). See
Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the
<wellfargobank.com> domain name is confusingly similar to the WELLS FARGO
mark, because altering the mark by one letter and adding “…the word ’bank,’ a word that both describes
the type of business that Complainant engages in and is included in its
<wellsfargobank.com> domain name, does not alleviate any confusing
similarity.”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept.
23, 2003) (“The addition of a hyphen to Complainant's mark does not create a
distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly
similar analysis.”); see also 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.”). Therefore, the Panel finds that despite the changes that
have been made to each disputed domain name, the disputed domain names are
nevertheless confusingly similar to Complainant’s AAA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant contends that Respondent is not commonly known
by the disputed
domain names nor has it ever been the owner or licensee of the AAA mark. The WHOIS records for the disputed domain
names list Respondent as “Gary S. Kibizoff a/k/a
Gary Kibizoff.” Because there is
no evidence contrary to Complainant’s contentions that Respondent is not known
by any variant on the AAA mark, the Panel finds that Respondent is not commonly
known by the disputed
domain names pursuant to
Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that the respondent was not commonly known by
the disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark).
The <aaa-cruises.com>, <aaa-vacation.com>, <aaa-cruising.com>, <aaacruisers.com>, and <cruiseraaa.com> domain names resolve to a website that features links to third-party websites that compete with Complainant’s business. Complainant contends that this use by Respondent of these disputed domain names is not 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). The Panel agrees, and finds that Respondent’s use of the <aaa-cruises.com>, <aaa-vacation.com>, <aaa-cruising.com>, <aaacruisers.com>, and <cruiseraaa.com> domain names is not 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)).
The <aaacruising.net> resolves to a website where Respondent is offering services that compete with the services offered by Complainant. Complainant contends that this use of the <aaacruising.net> domain name is also not 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). The Panel finds that the offering of competing services 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) at the website that resolves from the <aaacruising.net> domain name. See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
In
addition, Complainant contends that Respondent has failed to make an active use
of the <cruiseaaa.com>, <aaacruise.net>, <aaacruising.com>,
and <aaacruiser.com> domain names.
The Panel finds that Respondent’s failure to make an active use of these
domain names is evidence that Respondent is not using the <cruiseaaa.com>, <aaacruise.net>,
<aaacruising.com>, and <aaacruiser.com> domain names
to make 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 Am. Home Prods.
Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or
legitimate interests in the domain name <solgarvitamins.com> where the
respondent failed to make active use of the domain name); see also Nike, Inc. v.
Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or
legitimate interests where the respondent made no use of the infringing domain
names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is intentionally disrupting Complainant’s business by diverting Internet users to the website that resolves from the <aaacruising.net> domain name, where Respondent is offering services that compete with Complainant’s services for business. The Panel finds that Respondent has disrupted Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent is gaining
commercially from the diversion of Internet customers to Respondent’s websites
that resolve from the <aaacruising.net>, <aaa-cruises.com>,
<aaa-vacation.com>, <aaa-cruising.com>,
<aaacruisers.com>, and <cruiseraaa.com>
domain names, both through the competing services offered at the website that
resolves from the <aaacruising.net> domain name, and through
the click-through fees that Respondent is receiving from the third-party
websites advertised at the <aaa-cruises.com>, <aaa-vacation.com>,
<aaa-cruising.com>, <aaacruisers.com>, and <cruiseraaa.com> domain names. The Panel agrees that in all these instances,
Respondent is intentionally using the disputed domain names for commercial gain
by creating a likelihood of confusion with Complainant’s mark, and so the Panel
finds that, pursuant to Policy ¶ 4(b)(iv), Respondent’s use of the <aaacruising.net>, <aaa-cruises.com>,
<aaa-vacation.com>, <aaa-cruising.com>,
<aaacruisers.com>, and <cruiseraaa.com>
domain names for commercial gain is also evidence of Respondent’s registration
and use in bad faith. See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”); see also Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the site).
Finally,
Complainant contends that Respondent has failed to make an active use of the <cruiseaaa.com>,
<aaacruise.net>, <aaacruising.com>, and <aaacruiser.com>
domain names. Because the Panel
finds that failure to make an active use of a domain name is evidence is bad
faith registration and use pursuant to Policy ¶ 4(a)(iii), it therefore finds that
Respondent has registered and used the <cruiseaaa.com>, <aaacruise.net>,
<aaacruising.com>, and <aaacruiser.com> domain names
in bad faith pursuant to Policy ¶ 4(a)(iii). See
Caravan Club v. Mrgsale, FA 95314
(Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the
domain name or website that connects with the domain name, and that [failure to
make an active use] of a domain name permits an inference of registration and
use in bad faith); see also Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
the respondent made no use of the domain name in question and there are no other
indications that the respondent could have registered and used the domain name
in question for any non-infringing purpose).
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 <aaa-cruises.com>, <aaa-cruising.com>, <aaa-vacation.com>, <aaacruise.net>, <aaacruiser.com>, <aaacruisers.com>, <aaacruising.com>, <aaacruising.net>, <cruiseaaa.com>, and <cruiseraaa.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 29, 2009
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