The Complainant is The American Automobile Association Inc., Florida, United States of America, represented by Covington & Burling, United States of America.
The Respondent is Abadaba S.A., Panama, Panama.
The disputed domain name <aaadiscounts.com> is registered with Fabulous.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2009.
On October 13, 2009, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name.
On October 14, 2009, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 October 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2009.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 6, 2009.
On November 16, 2009, the Center appointed James Bridgeman as the sole panelist in this matter 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 owner of the following United States federal trademark registrations:
|
Registration No. |
Mark |
Registration Date |
Classes |
|
829,265 |
AAA |
May 23, 1967 |
International classes, 35, 36, 39, 3, 41, 42. |
|
2,158,654 |
AAA |
May 19, 1998 |
International classes, 16, 35, 36, 37, 39, 42. |
|
2,456,403 |
AAA. EVERY DAY. |
May 29, 2000 |
International class 35 |
|
2,855,273 |
AAA MEMBER FARES |
June 15, 2004 |
International class 39. |
|
2,935,481 |
AAA PREMIER |
March 22, 2005 |
International classes 35, 36, 39, 3, 42, 43, 45. |
|
2,846,491 |
AAA. USE IT FOR ALL IT'S WORTH |
May 25, 2004 |
International classes 35, 36, 37, 39, 41, 43. |
Each of the above trademarks is registered for use of the mark inter alia in relation to discounted goods and services.
The Complainant is also the owner of the following trademark registrations in Panama, being the place at which the Respondent appears to be established:
Panama trademark registration no. 78352 AAA & Design, registered on November 23, 2001, in respect of goods and services in class 16;
Panama trademark registration no. 140165, AAA & Design, registered on June 13, 2005, in respect of goods and services in class 39;
Panama trademark registration no. 140161 AAA & Design, registered on June 13, 2005, in respect of goods and services in class 37;
Panama trademark registration no. 140163 AAA & Design, registered on June 13, 2005, in respect of goods and services in class 36;
Panama trademark registration no. 140162 AAA & Design, registered on June 13, 2005, in respect of goods and services in class 16; and
Panama trademark registration no. 142342 AAA & Design, registered on September 14, 2005, in respect of goods and services in class 43;
The disputed domain name <aaadiscounts.com> was registered on August 8, 2003.
In the absence of any Response or other communication from the Respondent, there is no information available about the Respondent except the information in the Registrar's WhoIs database and the information provided in the Complaint.
The disputed domain name resolves to a parking page on which there appears to be links to various categories of websites including car insurance, travel and other categories.
The Complainant bases this Complaint inter alia on its exclusive ownership of above-listed trademark registrations in the United States and Panama. In support of its claim, the Complainant has furnished evidence of its ownership of the above registrations as an annex attached to the Complaint.
The Complainant also relies on its common law rights in its trademark AAA and associated trademarks, which it claims it has long used in commerce in the United States (since at least 1902) in connection with a broad variety of goods and services, including automotive, travel, financial, insurance and discount services. The Complainant submits that many of the above-listed U.S. federal trademark registrations are incontestable pursuant to 15 U.S.C. § 1065.
The Complainant argues its AAA marks have become valuable and famous in the United States and abroad as a result of continued and extensive use by the Complainant and its member clubs in advertising, promotion, and sales of products and services under the AAA marks, including on the Internet. The Complainant cites: Am. Auto. Ass'n, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489 (June 13, 2006) (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”); American Automobile Association v. AAA Ins. Agency, Inc., 618 F. Supp. 787, 790 (W.D. Tex. 1985) (“AAA is a widely known organization that has been extensively advertised and promoted throughout the United States. . . [T]he ‘AAA' name has come to be relied upon by a significant segment of the public as indicating AAA and its services.”); American Automobile Association v. AAA Auto. Club of Queens, Inc., No. 97 CV 1180, 1999 WL 97918 at *5 (E.D.N.Y. Feb. 8, 1999) (“[T]he AAA Marks strongly indicate the source of the services provided and are therefore entitled to the greatest degree of protection under the Lanham Act.”).
The Complainant submits that under United States law, the registration certificates for the AAA marks constitute prima facie evidence of the validity of those registrations dating back to the Complainant's first use of those marks, and of the Complainant's exclusive right to use those trademarks in commerce on or in connection with the products and services specified in the registration certificates. See 15 U.S.C. § 1057(b); see also J.C. Hall Co. v. Hallmark Cards, Inc, 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965).
Referring to Paragraph 4(a)(i) of the Policy and Rules Paragraph 3(b)(viii) and (b)(ix)(1), the Complainant submits that disputed domain name is substantially and confusingly similar to the Complainant's AAA trademarks.
The Complainant submits that under the Policy, a domain name is confusingly similar to a trademark when the domain includes the entire mark, even if one or more generic terms are added. Citing American Automobile Association ‘71, Inc. v. Gary Witcher, NAF Case No. 1259306 (June 9, 2009) (<aaadiscountcruises.com> confusingly similar to AAA marks for discount and travel services); American Automobile Association v. AAA Vacation Club c/o Conrad Nizynski, NAF Case No. 1169994 (May 14, 2008) (<aaavacationclub.com> confusingly similar to AAA Marks for travel and vacation services).
Moreover, the Complainant argues that although the risk of consumer confusion exists any time a mark is combined with a generic or geographically descriptive term in a domain name, that risk is particularly great where, as in casu, the term describes a central aspect of a complainant's businesses. Such a combination “in all likelihood heightens the confusion.” American Automobile Association v. PSI, WIPO Case No. D2008-1931 (Feb. 6, 2009) (<aaaautorewards.com> confusingly similar to AAA marks for automotive services).
The Complainant submits that it has registered and uses the above US trademark registrations in relation to discounted goods and products and as such the combination of the trademark and the word discount heightens the confusion. The Complainant submits that the following list is illustrative of its use of the marks in relation to discounted goods and services:
|
Reg. No. |
Mark |
Examples of claimed goods and services |
|
829,265 |
AAA |
Arranging for discount purchases, collecting damage claims; offering rewards for information leading to arrest and conviction of persons stealing members' automobiles; and placing insurance with underwriters; disseminating travel information and making travel arrangements. |
|
2,158,654 |
AAA |
Arranging for discount purchases; adjusting and collecting insurance damage claims; insurance brokerage services, namely, obtaining insurance, placing insurance with underwriters; financial services, namely issuing, paying, and collecting traveller's checks; banking services, namely time deposits; investment advice counselling services; credit card and auto loan services; reimbursement for legal services; travel agency services, namely, making reservations and booking for transportation. |
|
2,456,403 |
AAA EVERY DAY |
Arranging for discount purchases for members of an automobile club. |
|
2,855,273 |
AAA MEMBER FARES |
Arranging and booking discount airline transportation for others. |
|
2,935,481 |
AAA PREMIER |
Administration of a discount program for enabling participants to obtain discounts on goods and services through a discount membership card. |
|
2,846,491 |
AAA. USE IT FOR ALL IT'S WORTH |
Administration of a discount program for enabling participants to obtain discounts on goods and services through use of a discount membership card. |
The Complainant submits that accordingly, the Respondent's use of the disputed domain name is likely to cause, and may already have caused, consumers to become confused as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.
Referring to Policy, Paragraph 4(a)(ii) and Rules Paragraph 3(b)(ix)(2), the Complainant asserts that it has made a prima facie case showing that the Respondent has no rights or legitimate interests in the domain name.
The Complainant states that it has established its rights to the AAA marks for discounts, travel, and other services, and it has not licensed or authorized Respondent to use the AAA marks in connection with the domain name. See American Automobile Association v. Nevis Domains, supra. As described above, Complainant has used the AAA marks in commerce since 1902. This prima facie showing shifts the burden to Respondent to show concrete evidence of rights or legitimate interests in the disputed domain name.
The Complainant argues that there is no evidence that the Respondent is commonly known by the disputed domain name. Referring to the WhoIs record, the Complainant points out that the Respondent has not registered the disputed domain name under a name containing the AAA mark; rather, it is registered to Abadaba S.A., and submits that this is evidence that Respondent does not have rights to or a legitimate interest in the disputed domain name. Citing American Automobile Association v. Nevis Domains LLC., supra.
The Complainant further submits that there is no evidence that the Respondent has used or plans to use the disputeddomain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The Complainant refers to the print out of the website to which the disputed domain name resolves and argues that the Respondent is using the disputed domain name as a parking page offering pay-per-click advertisements for products and services which compete with those offered by AAA. The Complainant submits that parking pages offering pay-per-click advertisements constitute “neither bona fide offerings of goods or services under [Policy Paragraph 4(c)(i)] nor legitimate non-commercial or fair uses under Policy Paragraph 4(c)(iii).” Citing American Automobile Association v. Jack Holder, NAF Case No. l227171 (Dec. 12, 2008); and American Automobile Association v. Nevis Domains, supra (panel found that use of a confusingly similar domain name to offer goods or services in competition with those offered by the mark's owner does not constitute a bona fide offering of goods and services).
Referring to Policy Paragraph 4(a)(iii) and Rules, Paragraph 3(b)(ix)(3), the Complainant submits that the domain name was registered and is being used in bad faith.
Firstly, the Complainant argues that the Respondent's intentional registration of a domain name incorporating the AAA mark, without any legitimate interest in the name, demonstrates a bad-faith intention to capitalize on AAA's valuable marks, in violation of Policy Paragraph 4(b)(iv), citing OfficeMax Inc. v. Li, WIPO Case No. D2003-0060 (Mar. 19, 2003); American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592 (“[T]he [p]anel is aware of no plausible reason in the circumstances that the Respondent would add the letters ‘aaa' to the word ‘maps' in the domain name at issue here, except that the Respondent desired to confuse Internet users with an association with the Complainant's famous AAA trademark.”).
Secondly, the Complainant submits that the Respondent's use of the disputed domain name to direct users to a website that offers discounts on the services of potential AAA competitors “constitutes a disruption of Complainant's business and is thus evidence of bad faith” under Policy Paragraph 4(b)(iii), citing American Automobile Association Inc. v. Texas International Property Associates, supra.
Thirdly, the Complainant submits that the Respondent's actual or constructive knowledge of the Complainant's AAA's marks, based on their registration with the United States. Patent and Trademark Office and their substantial fame in the United States and abroad, is further evidence of its bad faith. Citing American Automobile Association v. Nevis Domains LLC supra; See also American Automobile Association v. AAAVacationsunlimeted, WIPO Case No. D2009-0373, (May 3, 2009) (finding that Respondent's knowledge of AAA Marks may be inferred because the marks were registered with the USPTO and well known in the industry).
Moreover, the Complainant's attorney sent a cease and desist letter to the Respondent on November 28, 2009 demanding inter alia that the Respondent cease use of the domain name, desist from future use and transfer the domain name to the Respondent. The Respondent did not reply and the Complainant's attorney followed up with a further letter dated December 20, 2008 and a number of emails sent on December 20, 2008 and July 9, 2009. The Complainant submits that even following receipt of such actual notice of the Complainant's rights the Respondent continues to maintain the disputed domain name and website. The Complainant argues that such behaviour constitutes evidence of bad faith registration and use, citing American Automobile Association v. Nevis Domains, supra.
Fourthly, the Complainant submits that the Respondent has a history of registering domain names that infringe third parties' trademark rights, demonstrating a pattern of conduct in violation of Policy Paragraph 4(b)(ii). The Complainant alleges that Respondent has registered almost 2,500 domain names, many of which incorporate famous trademarks in combination with generic terms. In support of this allegation, the Complainant refers to the decisions of panels established under the Policy including:
- 1-800-Flowers.com, Inc. v. Domain Admin, Abadaba S.A., WIPO Case No. D2009-0325 (May 5, 2009);
- Rediff.com India Ltd. v. Abadaba S.A., Domain Admin, WIPO Case No. D2008-0803 (Aug. 27, 2008);
- Forest Laboratories Inc. v. Abadaba S.A., Domain Admin, WIPO Case No. D2008-0413 (May 9, 2008);
- Mastercard Int'l Inc. v. Abadaba S.A., Administrador de dominos, WIPO Case No. D2008-0325 (May 28, 2008);
- Banco de Brasil S.A.v. The Tidewinds Group, Inc., Abadada S.A. Domain Admin, WIPO Case No. D2007-1657 (Jan. 22, 2008);
- Eldorado Stone Operations LLC v. Abadaba S.A., Domain Admin, WIPO Case No. D2007-1580 (Jan. 4, 2008).
The Complainant submits that the evidence shows that the disputed domain name is confusingly similar to AAA's famous AAA marks, that Respondent has no rights or legitimate interests in the domain name, and that Respondent registered and has maintained the disputed domain name in bad faith. Accordingly, the panel should order the Respondent to transfer the disputed domain name to AAA.
The Respondent did not reply to the Complainant's contentions.
Policy Paragraph 4(a) requires the Complainant to prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
The Complainant has furnished evidence of its rights in the AAA trademark and similar trademarks incorporating the letters AAA, through the above-listed federal registrations and at common law.
The disputed domain name, <aaadiscounts.com>, consists of the three letters AAA, identical to the Complainant's trademark together with the generic and descriptive word “discounts”.
This Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks and service marks and the addition of the generic and descriptive word “discounts” does not distinguish the domain name in any substantial way. Because the additional word “discounts” describes a characteristic of some of the services offered by the Complainant, on the balance of probabilities the additional element will increase rather than decrease the likelihood of confusion.
This Panel finds therefore that the Complainant has satisfied the first element of the test in Policy Paragraph 4(a)(i).
This Panel accepts that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the domain name and in the circumstances the burden of proof shifts to the Respondent to demonstrarethat it has such rights or interest.
In the absence of a Response or other submissions from the Respondent, there is no explanation as to why the disputed domain name was chosen and registered on August 8, 2003.
The Complainant clearly has rights in the AAA trademark in numerous jurisdictions including both the United States where the Complainant is established and in Panama where the Respondent appears to be established. There is no evidence or even indication that the Respondent is known by the disputed domain name.
There is no evidence that the Respondent has used or plans to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The Respondent is using the disputed domain name as a parking page offering pay-per-click advertisements for products and services which compete with those offered by AAA. On the evidence, such use does not amount to bona fide noncommercial or fair use.
While a number of the trademark registrations relied upon by the Complainant post-date the date of registration of the domain name, i.e. August 8, 2003, the Complainant had established rights in the AAA trademark in both the United States and Panama prior to that date through its registration and use of the above-listed marks, each of which was registered for use in relation to discounted goods and services. On the evidence the Respondent has no rights or legitimate interests in a domain name that is confusingly similar to the Complainant's AAA mark where goods and services are advertised on the Respondent's parking page.
This Panel therefore accepts the Complainant's submissions and finds that on the balance of probabilities the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has therefore satisfied the second element of the test in Policy Paragraph 4(a)(ii).
The Complainant contends that the disputed domain name was registered in order to take advantage of the Complainant's goodwill and reputation in the AAA marks. This case has not been answered by the Respondent.
While the letters “aaa” are however, quite commonly used in business inter alia, in order to achieve priority in alphabetical listings for goods and services, this Panel accepts that the Complainant has exclusive rights to the use of the AAA mark in relation to the goods and services for which it is registered in the jurisdictions where it owns registrations. Furthermore the Complainant may have acquired common law, and similar rights through use of the mark on other goods and services and in other jurisdictions.
On the balance of probablities, the Complainant has established that the Respondent is likely to have had actual or constructive knowledge of the Complainant and its reputation and goodwill in the AAA mark.
Each of the trademarks relied upon by the Complainant was registered for use in relation to inter alia discounted goods and services. The Respondent must have had actual knowledge of the Complainant's rights when registering the domain name. Furthermore the Respondent has continued to use the disputeddomain name as the address of a website offering products in competition with the Complainant's services, and has continued to do so after having received the cease and desist letter from the Complainant's representative.
There is evidence that the Respondent has a history of registering domain names that infringe third parties' trademark rights, which the Complainant submits demonstrates a pattern of conduct in violation of the Policy. The Respondent has not filed any Response or provided any defence, denial, explanation or evidence in reply to the Complainant's allegations.
In the circumstances, this Panel accepts the Complainant's submission and finds that on the balance of probabilities the disputed domain name was registered in bad faith in order to take predatory advantage of the Complainant's goodwill in its AAA trademark and is being used by the Respondent with a bad-faith intention to capitalize on the Complainant's reputation and goodwill in the AAA marks, in violation of Policy Paragraph 4(b)(iv).
The Complainant has therefore satisfied the third and final element of the test in Policy Paragraph 4(a)(iii) and is entitled to succeed in this Complaint.
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 <aaadiscounts.com> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: November 30, 2009