The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling LLP, United States of America.
The Respondent is ICS Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom and Northern Ireland.
The disputed domain name <aaadrivingandtraffic.com> (the “Domain Name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2014. On January 28, 2014, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On January 28, 2014, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. As per the Center’s request, on February 4, 2014, the Complainant clarified the mutual jurisdiction paragraph in the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2014.
The Center appointed Tee Jim Tan as the sole panelist in this matter on March 17, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is The American Automobile Association, Inc., a corporation whose corporate headquarter is located at Heathrow, Florida, United States. The Complainant is the owner of the word mark AAA (the “AAA Mark”) and associated marks bearing the word mark (the AAA Mark and the associated marks are hereinafter collectively referred to as the “AAA Marks”). The Complainant commenced use of the AAA Marks since at least 1902 in respect of a variety of products and services, including automobile, driving and traffic-related products and services. It also has trademark registrations for the AAA Marks in the United States, including United States Federal Trademark Registration Nos. 829,265; 2,158,654 and 3,162,780 in respect of, amongst others, magazines, pamphlets, booklets and directories in the field of travel information as well as automobile association services rendered to motor vehicle owners, motorists and travelers generally.
The Respondent is the registrant of the Domain Name at which the website “www.aaadrivingandtraffic.com” is located (the “Website”). The Domain Name was registered on August 4, 2013. The Website hosts pay-per-click advertisements for goods and services relating to automobile, driving and traffic-related products and services.
5.1 The Complainant contends that it has very strong rights in the AAA Marks based on (a) its use of the marks since 1902 in relation to the provision of automobile, driving and traffic-related products and services in the United States and abroad and (b) a number of trademark registrations for the AAA Marks, including United States Federal Trademark Registration Nos. 829,265, 2,158,654 and 3,162,780. It claims that, as a result of the Complainant’s history and experience in providing high-quality products and services under the AAA Marks as well as its member clubs’ continuous advertising and promotions, the AAA Marks have acquired significant goodwill as identifying the products and services of the Complainant and its member clubs. In this regard, the Complainant cites the decision in American Automobile Association, Inc. v Nevis Domains LLC, WIPO Case No. D2006-0489, in support.
5.2 The Complainant says that the Domain Name is confusingly similar to the AAA Marks for the following reasons:
5.2.1 The Domain Name incorporates in its entirety the Complainant’s registered AAA Marks, with the addition of the generic terms “driving” and “traffic”. This is sufficient to establish that the Domain Name is confusingly similar for purposes of the Policy.
5.2.2 Given the reputation and renown of the AAA Marks, most Internet users who see the Domain Name are likely to immediately recognize the AAA Marks and assume that the Domain Name is owned, controlled or approved by the Complainant. In addition, consumers and other third parties who search the Internet for legitimate information about the Complainant and its products or services bearing any of the AAA Marks may be directed to the Internet address incorporating the Domain Name, creating a probability of confusion.
5.2.3 The risk of consumer confusion is particularly great in the present case because the generic or descriptive terms “driving” and “traffic” describe a central aspect of the Complainant’s business and because the Complainant is well known for offering automobile, driving and traffic-related products and services to its members.
5.3 The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name for the following reasons:
5.3.1 There is no evidence that the Respondent is commonly known by the Domain Name. The Respondent did not register the Domain Name under a name containing any of the AAA Marks. Rather, it registered the Domain Name under an entity known as “ICS Inc.”. That entity has no connection to or affiliation with the Complainant.
5.3.2 The Respondent’s only use of the Domain Name is to host a parking site with pay-per-click links for goods and services that compete with the Complainant’s. This, according to the Complainant, does not constitute bona fide offerings of goods or services.
5.4 The Complainant further contends that the Domain Name was registered and used in bad faith for the reasons set out above as well as for reasons which include the following:
5.4.1 The Respondent’s use of the Domain Name that incorporates the word mark AAA to direct consumers to a website with pay-per-click advertisements for the Complainant’s competitors is prima facie evidence of bad faith. Also, the registration and use of the Domain Name to host a website with pay-per-click advertisements for, among other things, products and services that compete with those offered by the Complainant constitute disruption of the Complainant’s business and further evidence of bad faith.
5.4.2 The Respondent’s registration and use of the Domain Name in 2013 was well after the Complainant had begun using the AAA Marks in 1902. The Respondent also has no excuse for its continued registration and use of the Domain Name after the Complainant had put it on notice of the Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in order to succeed:
(i) The Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in absence of exceptional circumstances, decide the dispute based on the Complaint.
The Complainant has provided evidence of its trademark registrations for the AAA Marks in the United States. It has also provided evidence of its use of the AAA Marks as well as the goodwill and reputation that each or any of the marks enjoys. Further, there is a UDRP decision (namely, American Automobile Association, Inc. v. Nevis Domains LLC, supra) in which the panel decided that the AAA Marks “are widely recognized by consumers in the United States and abroad and that they have acquired significant goodwill as identifying the products and services” of the Complainant and its local member clubs. In the premises, the Panel is satisfied that the AAA marks are distinctive of the Complainant’s products and services and that the Complainant has rights in the AAA Marks.
The Domain Name incorporates the AAA Mark in its entirety, with the addition of the terms “driving” and “traffic”. These terms are not only inherently descriptive but are also descriptive in relation to the products and services provided by the Complainant. As such, it is not inconceivable that the public and Internet users are likely to wrongly believe, and to act on the belief, that the Domain Name or the Website belongs to the Complainant or is in some way associated with or connected to the Complainant. In this respect, the Panel agrees with the decision in American Automobile Association, Inc. v John Costelac, WIPO Case No. D2013-1191, that a domain name is confusingly similar to a trademark when the domain name includes the entire mark, even if one or more generic terms are added.
Hence, the Panel finds that the Domain Name is confusingly similar to the Complainant’s AAA Marks, and therefore, the first condition of the Policy is met.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a respondent’s rights or legitimate interests to a disputed domain name. Accordingly, the Respondent may demonstrate any of the following:
(1) the Respondent’s use 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 before any notice to the Respondent of the dispute; or
(2) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(3) the Respondent is making a legitimate, noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As the Respondent has not filed a Response, the Panel does not have before it any evidence of the circumstances specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Domain Name.
Numerous cases under the Policy have adopted the approach that if a respondent fails to respond and dispute the complainant’s claims, it may be inferred that the claims are true and that the respondent knows its website bearing the offending domain name is misleading. See, e.g., Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441. In Pomellato S.p.A v Richard Tonetti, WIPO Case No. D2000-0493, the panel inferred the lack of response as “indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”. In the present case, the Panel would make the same inference.
There is also no evidence that prior to the registration of the Domain Name in 2013, the Respondent was known by the AAA Mark or the Domain Name or that it had any registered trademarks that are identical with or similar to the AAA Marks or the Domain Name. Nor is there evidence that it has been using the AAA Mark or a name corresponding to the Domain Name prior to the registration of the Domain Name. The Panel is satisfied that when the Domain Name was registered in 2013, the Respondent knew or must have known that the AAA Marks have been used since at least 1902 by the Complainant and are well-known and/or that the Complainant owns or must have owned some legal rights to the AAA Marks.
In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name and finds for the Complainant in respect of paragraph 4(a)(ii) of the Policy.
In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) Circumstances showing that the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances showing that the Respondent has registered the Domain Name primarily for the purposes of disrupting the business of a competitor; or
(iv) The Respondent has, by using the Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
By failing to file a Response, the Respondent did not take the opportunity to invoke any circumstances which could demonstrate that it did not register and use the Domain Name in bad faith and to assist the Panel in this regard. If the Respondent had legitimately registered and/or used the Domain Name in good faith, there is no reason for it to fail to submit a response and challenge the Complainant’s contentions. The failure provides a strong indication that the Domain Name was registered and is being used in bad faith by the Respondent.
Numerous UDRP cases have decided that a finding of bad faith may be made pursuant to the Policy where the respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name. See, e.g., Turkcell Iletisim Hizmetleri A.S. v. Ozgur Karadag, WIPO Case No. D2011-2038. The Panel finds such cases persuasive in the present context in which the Complainant has been using the AAA Mark and/or the AAA Marks for decades in relation to automobile, driving and traffic-related products and services and has obtained registrations of the AAA Marks in the United States and elsewhere and the use and registrations pre-date the registration of the Domain Name in 2013. It is implausible that the Respondent was unaware of the Complainant’s use and/or registration of the AAA marks or any of them prior to the registration of the Domain Name in 2013. It may thus be inferred from the Respondent’s choice, registration and/or use of the Domain Name that its intent was or must have been to create a false impression that the Website is in some way affiliated to or associated with the Complainant and/or its products or services.
The inference is enhanced by the Respondent’s use of the Domain Name to direct users to a parking site offering pay-per-click advertisements for products and services that compete with the Complainant’s. In this regard, the Panel agrees with the line of UDRP cases that had held that such use constitutes neither “bona fide offerings of goods or services” nor legitimate noncommercial or fair use. See, e.g., American Automobile Association, Inc. v Jack Holder, NAF Claim No. FA 1227171.
On the whole, the Panel is satisfied that the Domain Name was registered and used in bad faith. It therefore finds for the Complainant in relation to paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <aaadrivingandtraffic.com> be transferred to the Complainant.
Tee Jim Tan
Sole Panelist
Date: March 31, 2014