The American Automobile Association, Inc. v. Phillip Kelley
Claim Number: FA0907001275287
Complainant is The American Automobile Association,
Inc. (“Complainant”), represented by Hope Hamilton, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aaatravelfares.com>, <aaatravelfares.info>, <aaatravelfares.net>, and <aaatravelfares.org>, 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 23, 2009.
On July 23, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaatravelfares.com>, <aaatravelfares.info>, <aaatravelfares.net>, and <aaatravelfares.org> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names. 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 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 17, 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 email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
Respondent's Response was received in electronic copy only on July 28, 2009. However, because no hard copy was received by the Response deadline, the Response is considered deficient under ICANN Rule 5. The Panel shall address this issue below.
On August 5, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
- Complainant bases its claim on exclusive ownership of American and international service mark registrations for its famous service mark, AAA. Complainant has also established common law rights in that mark. Since at least 1902, Complainant has used the mark in its provision of automobile-related services and products.
- Respondent registered the disputed domain names in April 2008, and utilized them initially in what appeared to be a pyramid scheme organized by a third party. After Complainant contacted both said third party and Respondent, who did not respond directly, the names were used to host a website that provides links to the websites of third party competitors of Complainant, presumably furnishing Respondent with so-called “click-through fees.”
- In May 2009, Complainant requested the transfer of the disputed domain names from Respondent, whereupon Respondent demanded a payment of $4,000. After assessing Respondent’s out-of-pocket registration costs at no more than $80, Complainant offered that amount. Respondent rejected that counter-offer and continued to use the disputed domain names as described above.
- All of the disputed domain names, <aaatravelfares.com>, <aaatravelfares.info>, <aaatravelfares.net>, and <aaatravelfares.org>, are confusingly similar to Complainant’s AAA mark. Those names include Complainant’s full mark, adding to it only a generic term. Moreover, that specific generic term, “travel fares,” adds to potential consumer confusion because it applies directly to Complainant’s travel-related services.
- Respondent has no rights or legitimate interests in the domain names at issue. Complainant has not licensed or authorized Respondent to use the AAA mark in any manner. There is no evidence that Respondent, nominally Phillip Kelly, has ever been commonly known by any of the disputed domain names. Furthermore, Respondent’s use of the names – either as a part of a pyramid scheme or to provide click-through links to competing websites – constitute neither a “bona fide offering of goods or services” nor “noncommercial or fair use” of the same.
- Respondent registered and is maintaining the disputed domain names in bad faith. Respondent is, through confusion with Complainant’s mark, attempting to attract internet users to Respondent’s website for its commercial gain. Moreover, Respondent is attempting to disrupt Complainant’s business through such use of the names. Finally, Respondent attempted to exact from Complainant a transfer fee far in excess of Respondent’s actual out-of-pocket expenses in obtaining those names.
- Respondent was unaware of Complainant’s service mark and agrees to transfer the disputed domain name.
Complainant is a
Respondent registered the disputed domain names, <aaatravelfares.com>, <aaatravelfares.info>, <aaatravelfares.net>, and <aaatravelfares.org>, on April 10, 2008. Respondent uses the names currently to host a website that provides links to the websites of third parties, some of which offer services that compete directly with those offered by Complainant.
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 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;
(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 Respondent has filed a terse email Response that does not conform to the requirements of the Rules because there was no follow-up hard copy. Citing this technical violation, the Panel could disregard said Response and then proceed to analyze the case as if no Response had been received. Though the lack of a Response could be interpreted as circumstantial evidence that the Respondent agrees to a transfer of the disputed domain names, almost all panels in prior Policy cases have initiated full analyses of the three elements enumerated in Policy paragraph 4(a) despite the failure to receive a Response. In fact, in a number of such cases, respondents have prevailed. See, e.g., Think Service, Inc. v. Juan Carlos aka Juan Carlos Linardi, D2005-1033 (WIPO Nov. 18, 2005); see also Asset Marketing Systems, LLC v. Silver Lining, D2005-0560 (WIPO July 22, 2005).
However, in this case the Response, though delivered in non-compliance with the prescribed formalities, serves as tangible direct evidence that the Respondent wishes to renounce all rights to the disputed domain names. The Panel believes that it should accept this evidence into the record and ignore the technical Rule 5 violation. It does so not to preserve the Respondent’s right to due process in this proceeding, but to conform to a basic principle of arbitration that an arbiter should render a full opinion only when there is, in fact, a dispute between the parties. See United Pet Group, Inc. v. Texas International Property Associates, D2007-1039 (WIPO Sept. 25, 2007) (“This Panel holds that in this UDRP proceeding, in accordance with a general legal principle governing arbitrations as well as national court proceedings, that it would not be appropriate for it to act nec ultra petita nec infra petita, that is, that it should not here issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel recognizes the common request, and finds it unnecessary in the circumstances to make findings of fact or of compliance (or not) with the three requisite elements of the Policy.”); see also Disney Enterprises, Inc. v. Elmer Morales, FA 475191 (Nat. Arb. Forum June 24, 2005).
This course of action seems particularly appropriate to the Panel in the present case where the service mark, AAA, upon which Complainant bases its interest in the disputed domain names, is not merely established but is world famous. Thus, since it finds no dispute in this proceeding, the Panel shall enter an order that follows the wishes of both parties to transfer all rights in the disputed domain names.
Having established that Complainant has a legitimate interest in the disputed domain names and that Respondent consents to the requested relief, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaatravelfares.com>, <aaatravelfares.info>, <aaatravelfares.net>, and <aaatravelfares.org> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Dated: August 19, 2009
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