DECISION

 

American Association of State Highway and Transportation Officials v. Big Fly

Claim Number: FA2601002201628

 

PARTIES

Complainant is American Association of State Highway and Transportation Officials ("Complainant"), represented by Melissa A. Vallone of Barnes & Thornburg LLP, Illinois, USA. Respondent is Big Fly ("Respondent"), Slovenia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aashtostandards.com> and <aashtowebstore.com>, registered with NameCheap, 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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 26, 2026. Forum received payment on January 26, 2026.

 

On January 26, 2026, NameCheap, Inc. confirmed by e-mail to Forum that the <aashtostandards.com> and <aashtowebstore.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On January 27, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2026 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@aashtostandards.com, postmaster@aashtowebstore.com. Also on January 27, 2026, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registrations as technical, administrative and billing contacts.

 

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

 

On February 18, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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

Complainant, American Association of State Highway and Transportation Officials, is a nonprofit, nonpartisan association representing highway and transportation departments in the 50 states, the District of Columbia, and Puerto Rico. Complainant represents all transportation modes: air, highways, public transportation, active transportation, rail and water. Its primary goal is to foster the development, operation and maintenance of an integrated national transportation system. It operates the website at https://transportation.org. Complainant has used the AASHTO word and logo marks in connection with its goods and services since at least as early as January 1974 and is commonly referred to as "AASHTO" by the relevant public and industry. Complainant owns both registered and common law trademark rights in the AASHTO marks, embodying invaluable goodwill. Furthermore, the AASHTO marks are exceedingly strong, based on inherent distinctiveness and commercial strength.

 

Respondent's <aashtostandards.com> and <aashtowebstore.com> domain names are confusingly similar to Complainant marks.

 

Respondent has no rights or legitimate interests in the <aashtostandards.com> and <aashtowebstore.com> domain names. Respondent has never been known or referred to as the domain names and/or any of the AASHTO marks or any variation thereof; is not affiliated with, licensed or otherwise authorized by Complainant to use the AASHTO marks; has not used the domain names in connection with a bona fide offering of goods or services; and registered the domain names using a privacy service to conceal its identity.

 

The <aashtostandards.com> and <aashtowebstore.com> domain names were registered and are being used by Respondent in bad faith. Respondent's use of the domain names, which are confusingly similar to Complainant's AASHTO marks, disrupts Complainant's business; Respondent had constructive and actual notice of Complainant's rights to the AASHTO marks prior to registering the domain names; and Respondent is not using them for a legitimate purpose.

 

Through Complainant's extensive investment in and promotion of its goods and services under the AASHTO marks, the marks had been in use for more than 30 years prior to the registration of the domain names and had become well-known and associated with Complainant well before Respondent's registration and use of the domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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.

 

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has shown that it has rights in the word mark AASHTO, USPTO Registration No. 7,769,132, registered on April 22, 2025 and in the AASHTO logo mark, USPTO Registration No. 7,776,306, registered on April 29, 2025, both upon applications filed on July 31, 2024 for inter alia "Printed publications, namely Books, Guides, Pamphlets and Newsletters on Transportation Matters", in International Class 16.

 

Complainant has also shown that it has long held common law rights in the AASHTO word mark, as found in American Association of State Highway and Transportation Officials v. Shepherd Maners, FA 2172959 (Forum September 23, 2025) (transferring to Complainant the <aashtosafety.org> domain name).

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name. WIPO Overview 3.1, ¶ 1.7.

 

The Panel finds Respondent's <aashtostandards.com> and <aashtowebstore.com> domain names to be confusingly similar to Complainant's AASHTO marks, only differing by the addition of the descriptive words "standards" and "webstore", which differences are insufficient to distinguish the domain names from Complainant's marks. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored under this element. See Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000).

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):

 

(i)                      before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)                      Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)        Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <aashtostandards.com> and <aashtowebstore.com> domain names were registered on April 16, 2025, long after Complainant established common law rights in its AASHTO marks. They resolve to websites prominently  displaying Complainant's AASHTO word and logo marks, together with text copied from Complainant's website, falsely  representing that the websites are operated by Complainant, and purporting to offer for sale Complainant's publications. There is no disclaimer of any affiliation with Complainant.

 

These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <aashtostandards.com> and <aashtowebstore.com> domain names. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA 1849706 (Forum July 17, 2019). Respondent has made no attempt to do so.

 

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

Paragraph 4(a)(iii) of the Policy is expressed in the conjunctive: "the domain name has been registered and is being used in bad faith" and Paragraph 4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii), including:

 

(iv)                      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.

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant and its AASHTO marks when Respondent registered the <aashtostandards.com> and <aashtowebstore.com> domain names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's websites and of the products promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).

 

Complainant has established this element.

 

DECISION

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

 

Accordingly, it is Ordered that the <aashtostandards.com> and <aashtowebstore.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Alan L. Limbury, Panelist

Dated: February 25, 2026