WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Automobile Association, Inc. v. Nevis Domains LLC
Case No. D2006-0489
1. The Parties
The Complainant is American Automobile Association, Inc., Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
The Respondent is Nevis Domains LLC, Charlestown, Nevis, KN, United States of America.
2. The Domain Name and Registrar
The disputed domain name <aaaautomotive.com> (the “Domain Name”) is registered with Moniker Online Services, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2006. On April 19, 2006, the Center transmitted by email to Moniker Online Services, Inc. its first request for registrar verification in connection with the Domain Name. After repeated attempts to contact Moniker Online Services, Inc., on May 3, 2006, 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 for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 5, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2006.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 2, 2006. 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.
4. Factual Background
Complainant American Automobile Association (“AAA”) was founded at the turn of the 20th century as an automotive club. Through its many local member clubs, AAA offers various products and services including emergency road service, discounts and information about automotive repairs, pre-negotiated car buying services, automotive financing, travel information and insurance.
Since 1956, Complainant has owned registrations issued by the U.S. Patent and Trademark Office (“PTO”) for several “AAA” trademarks which it has used in commerce since at least 1903 in connection with its products and services. Those registrations include: United States Reg. Nos. 632,210, 829,265, 2,158,654, 2,659,703, and 3,046,905. In addition to those federal rights, Complainant has common law and state law rights in “AAA” (collectively, the “AAA Marks.”). Furthermore, Complainant maintains several web sites on its nearly 100 Internet domains that include <aaa.com>, <aaa.biz>, <aaamidatlantic.com>, <aaasouth.com> and <aaacarolinas.com> (collectively, the “AAA Domains.”). Complainant registered the <aaa.com> domain on August 3, 1990, and began using the AAA trademarks in connection with a website in 1997.
For many years, Complainant has invested substantial resources in extensive advertising campaigns and promotions of its products and services under the AAA Marks. The result is that the AAA Marks are widely recognized by consumers in the United States and abroad and they have acquired significant goodwill as identifying the products and services of Complainant and its local member clubs. Likewise, Complainant created and has operated its web sites, in part, to attract potential members and customers and to offer its products and services to them.
5. Parties’ Contentions
A. Complainant
The Domain Name is confusingly similar to Complainant’s AAA Marks and AAA Domains. Respondent has no legal rights to or legitimate interests in the Domain Name. Respondent registered and is using the Domain Name in bad faith.
B. Respondent
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, 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:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.
Complainant has established its rights in the AAA Marks based on its long-standing use of them on products and services that include automotive, insurance, financial, and travel-related and multiple registrations of the AAA Marks with the PTO. Those registrations are entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004). It is also uncontroverted that Complainant has rights in the AAA Domains such as <AAA.com>.
Regarding likelihood of confusion, it is well settled that the use of lower case letter format and the addition of the gTLD “.com” are not significant in determining whether the Domain Name is identical or confusingly similar to Complainant’s AAA Marks. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). Furthermore, the Domain Name <aaaautomotive.com.com> incorporates the dominant portion of the AAA Marks and AAA Domains simply adding the descriptive term “automotive.” It is well established that a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation.” Nicole Kidman v. Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001); Rolex Watch U.S.A., Inc. v. Spiders Webs, Ltd., WIPO Case No. D2001-0398 (July 2, 2001) (the issue of confusing similarity should be evaluated solely based on a comparison of the complainant’s mark and the accused domain name). The use of the descriptive term “automotive” does not serve to eliminate the confusing similarity. In fact in this case where the Complainant and Respondent are offering competitive product and services (e.g., insurance, roadside assistance) and Respondent even refers to Complainant and its products and services on its website, use of “automotive” actually serves to increase the likelihood of confusion. Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795 (November 27, 2003); Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 (April 1, 2003).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant has established its rights in the AAA Marks for, among other things, automobile related products and services that overlap those that Respondent provides on its website. It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use its AAA Marks or AAA Domains in connection with Respondent’s business or as part of the Domain Name. Insofar as Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004)), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Name. See, e.g,. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, 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; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it 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 consumers or to tarnish the trademark or service mark at issue.
Respondent has provided no evidence to carry its burden. For example, there is no evidence that Respondent has been commonly known by the Domain Name. Rather, it is undisputed that Complainant adopted and used the AAA Marks and AAA Domains long before Respondent registered the Domain Name. Furthermore, the evidence strongly suggests that by using a domain name that is confusingly similar to Complainant’s AAA Marks and AAA Domains to sell services that overlap with those of Complainant, Respondent is not making a legitimate or fair use of the Domain Name without the intent to gain a commercial benefit and to divert customers from a competitor. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004); see also, Household International, Inc. v. Cyntom Enterprises, NAF Case No. FA0010000095784 (holding that Respondent could not have any legitimate interest in the domain name at issue where “[t]he only inference is that he knew perfectly well that he would create confusion, or was willfully blind to this fact”). It also appears that Respondent earns money from click-throughs to third parties and pop-up advertisements. The use of pop-up advertisements has been found to constitute commercial activity. See, e.g., Southern Commc’ns Svcs., Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214 (May 10, 2004).
For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
Respondent had both constructive and actual notice of Complainant, its AAA Marks and AAA Domains when registering the Domain Name because (1) since 1956 Complainant has owned various federal registrations for its AAA Marks which marks have been used in commerce since at least 1903; (2) Complainant registered the <aaa.com> domain on August 3, 1990, and began using the AAA Marks in connection with a web site at “www.aaa.com”in 1997; (3) Complainant has spent millions of dollars over many years advertising and promoting its products and services under the AAA Marks; and (4) Respondent even refers to Complainant and the goods and services Complainant provides on its website using the Domain Name. In the face of these uncontested facts Respondent adopted a domain name that is confusingly similar to the AAA Marks and AAA Domains for providing goods and services that directly compete with Complainant’s goods and services. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002) (holding that to have proceeded with registration of an infringing domain name knowing of Complainant’s rights in the mark and use of the mark demonstrates Respondent’s bad faith registration); Beemak Plastics, Inc. v. WestRep Group, WIPO Case No. D2001-1023 (October 5, 2001) (holding that the use of an identical mark in connection with the offering for sale of products that directly compete with the trademarked products of Complainant is evidence of bad faith). Accordingly, the Panel finds that Respondent registered the Domain Name in bad faith.
It is unrebutted that Respondent is using a confusingly similar domain name to Complainant’s AAA Marks and AAA Domains in connection with a website that offers competing services to those of Complainant. On the record before it the Panel finds that Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the AAA Marks and AAA Domains as to the source, sponsorship, affiliation, or endorsement of the website. The Panel further finds that Respondent is using the Domain Name primarily for the purpose of diverting potential customers from Complainant’s business (e.g., website and local AAA member clubs) thus disrupting Complainant’s business.
As further evidence of Respondent’s bad faith use of the Domain Name, Complainant had notified Respondent of its senior rights in the AAA Marks in two separate letters and numerous emails and telephone conversations. Respondent took no action in response to Complainant’s concerns and suggested by email that Complainant bring this proceeding against it.
For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <aaaautomotive.com> be transferred to the Complainant.
Harrie R. Samaras
Sole Panelist
Dated: June 13, 2006