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DECISION

 

The American Automobile Association, Inc. v. Vincent Nedjetti and Vincent Nedjetti c/o Cayman Holdings

Claim Number: FA0910001288833

 

PARTIES

Complainant is The American Automobile Association, Inc. (“Complainant”), represented by Peter D. Saharko of Covington & Burling LLP, Washington D.C., USA.  Respondent is Vincent Nedjetti and Vincent Nedjetti c/o Cayman Holdings (“Respondent”), Grand Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aaabargains.com> and <aaadiscountmart.com>, registered with Dotster, Enom, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically October 12, 2009; the National Arbitration Forum received a hard copy of the Complaint October 13, 2009.

 

On October 12, 2009, Dotster, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaabargains.com> and <aaadiscountmart.com> domain names are registered with Dotster, Enom, Inc. and that Respondent is the current registrant of the names.  Dotster, Enom, Inc. verified that Respondent is bound by the Dotster, Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On October 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 3, 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@aaabargains.com and postmaster@aaadiscountmart.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain names that Respondent registered, <aaabargains.com> and <aaadiscountmart.com> are confusingly similar to Complainant’s AAA mark.

 

2.      Respondent has no rights to or legitimate interests in the <aaabargains.com> and <aaadiscountmart.com> domain names.

 

3.      Respondent registered and used the <aaabargains.com> and <aaadiscountmart.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The American Automobile Association, Inc., holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AAA mark (e.g., Reg. No. 829,265 issued May 23, 1967) in connection with a variety of goods and services, specifically including automotive, discount, travel, insurance, and financial products and services.  

 

Respondent, Vincent Nedjeti c/o Cayman Holdings, registered the <aaabargains.com> and <aaadiscountmart.com> domain names March 30, 2003 and June 2, 2005, respectively.  The disputed domain names resolve to websites that offer click-through links to third-party websites in competition with Complainant. 

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant asserts rights in its AAA mark through its holding of multiple trademark registrations for the AAA mark with the USPTO (e.g., Reg. No. 829,265 issued May 23, 1967).  The Panel finds that Complainant established rights in the AAA mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Complainant argues that Respondent’s <aaabargains.com> and <aaadiscountmart.com> domain names are confusingly similar to Complainant’s AAA mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain names contain Complainant’s AAA mark in its entirety, add generic terms, and add the generic top-level domain (“gTLD”) “.com.”  The Panel finds that addition of generic terms creates a confusing similarity between the disputed domain names and the complainant’s mark.  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark).  The Panel also finds that the addition of a gTLD to a registered mark is irrelevant in distinguishing a disputed domain name from a mark.  See 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.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <aaabargains.com> and <aaadiscountmart.com> domain names are confusingly similar to Complainant’s AAA mark.

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Based on the arguments made in the Complaint, the Panel finds that Complainant established a prima facie case in support of its contentions and Respondent has failed to submit a response to these proceedings.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case 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 it does have rights or legitimate interests.”).  Nevertheless, the Panel will examine the record to determine of Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).

 

The WHOIS information lists the registrant as “Vincent Nedjetti c/o Cayman Holdings.”  No additional evidence shows that Respondent is authorized to use Complainant’s AAA mark for any purpose.  Without evidence to the contrary, the Panel finds that Respondent is not commonly known by either of the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).

 

Respondent’s <aaabargains.com> and <aaadiscountmart.com> domain names were registered March 30, 2003 and June 2, 2005, respectively.  These disputed domain names resolve to Respondent’s website displaying click-through links to third party websites that compete with Complainant.  The Panel finds that Respondent’s use of the disputed domain names is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); 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 Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent’s registration and use of the <aaabargains.com> and <aaadiscountmart.com> domain names to operate a click-through website in direct competition with Complainant constitutes a disruption of Complainant’s business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Respondent’s use of the confusingly similar disputed domain names in order to intentionally attract Internet users to its website by creating a strong likelihood of confusion with Complainant’s AAA mark is further evidence of bad faith.  Therefore, the Panel finds this use of the disputed domain names constitute bad faith registration and use under Policy ¶ 4(b)(iv).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel finds that Complainant satisfied the elements of ICANN 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 <aaabargains.com> and <aaadiscountmart.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: November 24, 2009.

 

 

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