national arbitration forum

 

DECISION

 

The American Automobile Association, Inc. v. Alexander Velinov c/o SAVANT

Claim Number: FA0907001271541

 

PARTIES

 

Complainant is The American Automobile Association, Inc. (“Complainant”), represented by Peter D. Saharko, of Covington & Burling, Esq., Washington, D.C., USA.  Respondent is Alexander Velinov c/o SAVANT (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <aaatripinsurance.com>, registered with Godaddy.com, Inc.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 2, 2009.

 

On July 2, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaatripinsurance.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 July 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 27, 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@aaatripinsurance.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 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

 

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

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <aaatripinsurance.com> domain name is confusingly similar to Complainant’s AAA mark.

 

2.      Respondent does not have any rights or legitimate interests in the <aaatripinsurance.com> domain name.

 

3.      Respondent registered and used the <aaatripinsurance.com> domain name 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 insurance (Reg. No. 829,265 issued May 23, 1967) and travel services (Reg. No. 2,158,654 issued May 19, 1998).

 

Respondent registered the <aaatripinsurance.com> domain name on February 20, 2007.  The website resolving from the disputed domain name is entitled “AAA Trip Insurance” but advertises automobile, travel, and other insurance services offered by Red Carpet Insurance Services LLC.  These services directly compete with those offered by Complainant under its AAA mark.

 

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 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.

 

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).

 

Complainant contends that Respondent’s <aaatripinsurance.com> domain name contains Complainant’s AAA mark followed by the generic terms “trip insurance” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a gTLD 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).

 

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 <aaatripinsurance.com> domain name.  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 name 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 <aaatripinsurance.com> domain name pursuant to Policy ¶ 4(a)(ii).  Because no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the <aaatripinsurance.com> domain name.  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 Policy.”); 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.”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <aaatripinsurance.com> domain name.  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 “Alexander Velinov c/o SAVANT.”  Thus, 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 America 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 <aaatripinsurance.com> domain name to resolve to a commercial website offering insurance services that directly compete with Complainant’s services.  Respondent’s use of a domain name that is confusingly similar to Complainant’s AAA mark to redirect Internet users to a competing website is not a bona fide offering of goods or services under Policy ¶ (4)(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Bank of Am. Corp. v. Northwest 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 Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 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 <aaatripinsurance.com> domain name to redirect Internet users to a competing insurance services website suggests that Respondent registered the disputed domain name 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 Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Under Policy ¶ 4(b)(iv), a respondent is acting in bad faith when using a confusingly similar domain name to attract Internet users for commercial gain.  In this case, Respondent is using the <aaatripinsurance.com> domain name to attract users to a competing insurance services website.  The Panel finds that the disputed domain name is capable of creating a likelihood of confusion with Complainant’s mark and that Respondent has sought to profit from this confusion through a commercial website.  The Panel finds Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); 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).

 

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

 

DECISION

 

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

 

Accordingly, it is Ordered that the <aaatripinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  August 11, 2009

 

 

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