The Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America (“United States”), represented by Covington & Burling LLP, United States.
The Respondent is Private Registration, WhoIsGuardService.com of Nanjing, Jiangsu, China.
The disputed domain name <aaamyprepaidbalance.com> is registered with Vautron Rechenzentrum AG (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2015 in German. On September 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Registrar disclosed the language of the registration agreement as English. On September 8, 2015, the Complainant submitted the Complaint in English. The Center continued the administrative proceeding in English.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2015.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 13, 2015. 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 Panel finds the proper language of this administrative proceeding is in English.
The Complainant is a corporation organized under the laws of Connecticut, United States with its principal place of business in Florida, United States.
The Complainant is the owner of various United States federal trademark registrations for the mark AAA. These registrations include United States trademark number 1,678,804 for AAA registered on March 10, 1992 for credit card and auto loan services.
The Complainant offers payment card services under the name and mark AAA, including prepaid card services, in conjunction with various credit card providers.
The Complainant states (and the Respondent does not dispute) that it has for a number of years operated a website at “www.aaa.myprepaidbalance.com” in connection with its payment card program.
The disputed domain name was registered on March 12, 2008.
The Complainant has submitted evidence that the disputed domain name has been used to resolve to an Internet parking page including links to credit and payment card services. The web page also offered the disputed domain name for sale.
The Complainant submits that it owns unregistered rights in the mark AAA in addition to its trademark registrations referred to above. It submits that its AAA marks have been used in commerce since 1902 and are valuable and famous in the United States and abroad. The Complainant does not provide further details but refers to the findings of several previous UDRP panels in support of this assertion.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant relies on its registered and unregistered rights in the mark AAA and points out that the disputed domain name comprises that mark in its entirety together with the generic terms “my”, “prepaid” and “balance”. The Complainant states that the addition of these generic terms does not prevent the risk of confusion between the disputed domain name and the Complainant’s mark and in fact heightens that risk because the Complainant is well known for providing payment card services under the AAA mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its AAA marks for the purposes of a domain name or otherwise. The Complainant further submits that the Respondent’s use of the disputed domain name for the purposes of a parking page is neither bona fide use nor legitimate noncommercial or fair use of the disputed domain name, in circumstances where the Respondent was assuredly aware of the Complainant’s trademark and is seeking to divert the Complainant’s customers to its website.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith.
Concerning the registration of the name, the Complainant relies on the Respondent’s actual or constructive knowledge of its trademarks. The Complainant states that the Respondent registered the disputed domain name more than a century after the Complainant began to use its trademarks in commerce. The Complainant states that given the distinctive nature and reputation of the Complainant’s AAA trademarks it is inconceivable that the Respondent registered the disputed domain name without knowledge of those marks. The Complainant relies in particular on the similarity between the disputed domain name and the Complainant’s own URL “www.aaa.myprepaidbalance.com”.
The Complainant submits that the Respondent has used the disputed domain name misleadingly to divert Internet users to the Respondent’s website where the Respondent advertises payment card services in competition with the Complainant. The Complainant adds that the Respondent’s actions are disruptive of the Complainant’s business. The Complainant further submits that by offering to sell the disputed domain name the Respondent is attempting in bad faith to profit from the infringing use of the name.
The Complainant states that it wrote to the Respondent concerning the disputed domain name on two occasions in July 2015 but that the Respondent failed to reply on either occasion. The Complainant states that this is further evidence of the Respondent’s bad faith and also establishes that the Respondent had actual knowledge of the Complainant’s trademark rights from at least this time.
The Complainant requests a transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has not contested the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.
The Complainant has established that it has registered trademark rights in the mark AAA for credit card and auto loan services. The disputed domain name comprises the term “aaa”, the terms “my”, “prepaid” and “balance” and the generic Top Level Domain (“gTLD”) “.com” which is typically to be ignored for the purposes of comparison.
While the Panel does not consider that the term “aaa” would necessarily be understood by Internet users to refer only to the Complainant, the Complainant’s ownership of the trademark AAA satisfies the threshold test of giving the Complainant sufficient standing to bring this proceeding. The Panel agrees with the Complainant’s submission that the addition of the terms “my”, “prepaid” and “balance” does not obviate the likelihood of confusion between the disputed domain name and the Complainant’s mark, and in fact makes confusion more likely owing to their connection with credit services.
In the circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel accepts the Complainant’s submission (which the Respondent has not contradicted) that the Complainant has not authorized the Respondent to use the mark AAA for the purposes of the disputed domain name or otherwise.
The Panel also accepts that the Respondent has used the disputed domain name for the purposes of a parking page website which offers links to payment card services (presumably on a pay-per-click basis) and also offers the disputed domain name for sale. The use of a domain name for the use of a parking page can in certain circumstances give rise to rights or legitimate interests where it is used in connection with the generic meaning of a domain name and without capitalizing on trademark value. In this case, however, the Complainant submits that the Respondent must have been aware of the Complainant’s widely known mark AAA and must have chosen the disputed domain name with that trademark in mind. The Panel notes that the disputed domain name is virtually identical to the Complainant’s web address at “www.aaa.myprepaidbalance.com” and does not consider it credible that the Respondent could have registered the disputed domain name without the Complainant’s trademark in mind. Furthermore, while it was open to the Respondent to answer the Complainant’s case by explaining its choice of the disputed domain name and advancing, for example, any of the circumstances set out in paragraph 4(c) of the Policy, the Respondent has failed to file any Response in this proceeding or to challenge the Complainant’s submissions.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The issue of bad faith involves similar considerations as above. For the reasons set out above, the Panel has accepted the Complainant’s submissions that the Respondent is likely to have registered the disputed domain name with the Complainant’s AAA mark in mind and with the intention of taking unfair commercial advantage of that mark. The Panel further concludes that the Respondent has taken such advantage of the Complainant trademark by using the domain name for the purposes of a pay-per-click website to which Internet users are likely to be misleadingly diverted by virtue of the combination of the Complainant’s AAA mark with the phrase “myprepaidbalance”. The Panel concludes specifically that, by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website or of a product or service on that website (paragraph 4(b)(iv) of the Policy).
In the circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aaamyprepaidbalance.com> be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: October 20, 2015