The Complainant is The American Automobile Association of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.
The First Respondent is Shu Lin of Dalian, China.
The Second Respondent is David Woo, DNWDNS of Hong Kong, China.
The Third Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia.
The Fourth Respondent is Oliver Goldsmith of Glen Iris, Victoria, Australia.
The Fifth Respondent is Host Master, Transure Enterprise Ltd. of Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland (hereinafter the “Respondent”)
The disputed domain names <aaaautocarriers.com> <aaacarolias.com> <aaacations.com>
<aaacentralpa.com><aaacousa.com><aaadiscover.com><aaaeasttennessee.com>
<aaafuelguagereport.com><aaamn.com><aaamontana.com><aaamountainwest.com><aaa-nc.com>
<aaa-ny.com><aaaofwny.com><aaa-ohio.com><aaasignaturetransportation.com><aaa-socal.com>
<aaastudentloanconsolidation.com><aaatidewater.com><aaatn.com><aaatravel-maldives.com>
<aaatx.com><aaautoclub.com><aaautoloans.com><aaautosaleskc.com><aaautosalesonline.com>
<aaawest.com><aaawny.com><aaa-yacht.com><aaa11.com><aaa4insureance.com>
<swissaaa.com> are registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2011. On November 1, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 2, 2011, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 4, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 4, 2011.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on November 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2011.
The Center appointed Ross Carson as the sole panelist in this matter on December 12, 2011. 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.
Complainant is a not-for-profit federation of 50 motor clubs that serves more than 52 million members in the United States and Canada. Complainant has used its AAA trademark in the United States of America since 1902. Over the past century Complainant has become well known for offering a variety of goods and services in association with its AAA trademark, including, among others, automobile, travel, insurance, and financial goods and services. More particularly, Complainant provides member motor vehicle owners with ratings for tourist accommodations; arranging for discount purchases; providing emergency road service; placing insurance with underwriters; disseminating travel information and making travel arrangements. Some of the goods which Complainant offers and sells to its members in association with its AAA trademark are magazines, pamphlets, booklets, and directories in the field of travel information, traffic safety, vehicle information and repair, and driver instructions. In addition Complainant provides consumers with updated gasoline prices on its website through its well-known Fuel Gage Reports and Fuel Price Finder.
Complainant is the owner of numerous trademark registrations for or including AAA in the United States of America, Canada, Mexico, Benelux, France, Germany, Italy, Norway, Spain, China as well as Community trademarks. Complainant is the owner of United States Trademark Registration No. 829265 registered on May 23,1967 in relation to goods and services in International Classes 42,35,36, 37,39 41. The date of first use in commerce varies from 1902 to 1924.
Numerous UDRP panels have found that Complainant’s trademark AAA is well known and distinctive of Complainant in relation to its goods and services. See AM. AUTO Ass’n v. Private Registration/ Telecom Tech. Corp, WIPO Case No. D2011-0367 (the AAA marks have “established an extensive reputation for the goods and services which it offers under the trademark, not only in the United States, but internationally”); see also, Am. Auto. Ass’n,, v. Mike Oglesby, WIPO Case No. D2009-1554. United States courts have made similar findings: Am. Auto Ass’n, Inc. 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 on by a significant segment of the public as indicating AAA and its services “.
Complainant states that its registered and common law trademarks AAA are famous and distinctive of Complainant throughout the United States of America in relation to a variety of goods and services including automobile, travel, insurance, financial, and discount products based on extensive use and advertising of the trademarks throughout the United States of America since at least as early as 1902. Complainant is in contact with its 52 million members in the United States of America. Particulars of some of Complainant’s trademark registrations and use in the United States are summarized in section 4 immediately above.
Complainant states that all the disputed domain names are confusingly similar to Complainant’s AAA trademark. All the disputed domain names include the entire AAA trademark as part of the disputed domain name. A domain name is confusingly similar to a trademark when it includes the trademark in its entirety, even if one or more generic terms are added in the disputed domain name. See, e.g. AM. AUTO. ASS’n, v. Guaranteed Sales a/k/a Paul Sellers, NAF Claim No. 1233514 (<aaatravelsite.com> and <aaatravelsite.info> domain names confusingly similar to AAA trademark for travel services).
Complainant submits that the disputed domain names <aaacarolias.com>, <aaacentralpa.com>, <aaaeasttennessee.com>, <aaamn.com>, <aaamontana.com>, <aaamountainwest.com>, <aaa-nc.com>, <aaa-ny.com>, <aaaofwny.com>, <aaa-ohio.com>, <aaa-socal.com>, <aaatidewater.com>, <aaatn.com>, <aaatx.com>, <aaawest.com> and <aaawny.com> comprising half of the domain names in dispute are comprised of Complainant’s trademark AAA and geographically descriptive terms corresponding to the names of AAA’s affiliate clubs or describe areas in which AAA’s affiliate clubs carry on business. Complainant further submits that the addition of such descriptive geographical terms does not reduce the inherent confusion because it does not alter the underlying trademark. In Am. Auto. Ass’n, Inc, v. Private Whois Escrow Domains Private Limited, WIPO Case No. D2009-0822, the panel found that “ the addition of the name ‘carolina’, does nothing to dilute the impact and distinctiveness of the AAA service mark.”
Complainant further submits that the disputed domain names <aaaautocarriers.com>, <aaacations.com>, <aaadiscover.com>, <aaafuelguagereport.com>, <aaasignaturetransportation.com>, <aaastudentloanconsolidation.com>, <aaatravel-maldives.com>, <aaautoclub.com>, <aaautoloans.com>, <aaautosaleskc.com>, <aaautosalesonline.com> and <aaa4insureance.com> each include Complainant’s trademark AAA in combination with descriptive generic terms such as “auto”, “travel”, “insurance”, “consolidated student loan”, and “fuel guage”, which relate to services offered by Complainant. Complainant submits that the addition of such descriptive generic terms to Complainant’s AAA trademark in the disputed domain names in all likelihood heightens the confusion. See, Am. Auto. Ass’n Inc, v. New Cars Lowest Prices, WIPO Case No. D2011-0337, “because the Complainant uses its AAA trademark in connection with a wide variety of services related to cars, the addition of the descriptive wording in this case is likely to exacerbate confusion with the Complainant’s mark.”.
Complainant states that it is the owner of United States Trademark Registration No. 2,120,266 for the trademark AAA VACATIONS registered on December 9, 1997 in association with the goods and services: arranging travel tours and vacations; making registrations and books for temporary lodging. Complainant states that it is also the owner of Swiss Trademark Registration No. 543640 for use in connection with auto rental goods and services among various others. The remaining disputed domain names <aaa11.com>, <aaa-yacht.com>; and <swissaaa.com> are confusingly similar to Complainant’s trademarks AAA and AAA VACATIONS.
Complainant states that certain of the disputed domain names such as <aaacarolias.com>; <aaacations.com>; <aaa4insureance> and <aaautoloans.com> which contain misspellings or obviously omitted letters constitute typosquatting and are confusingly similar to Complainant’s trademarks. See, Amazon.com Inc. v. Steven Newman, WIPO Case No. D2006-0517; Wachovia Corporation v. America Consumers First, WIPO Case No. D2004-0150, “[W]here the domain name is a slight alphabetical variation for a famous mark…, the Panel has found the circumstances of “typosquatting” to constitute confusing similarity”.
Complainant submits that it has established rights in its trademarks for or including AAA and has not licensed or authorized Respondent to use its trademarks in association with a business or as part of the disputed domain names.
Complainant states that there is no evidence that Respondent is commonly known by the disputed domain names. Respondent did not register the disputed domain names under a name containing the trademark AAA; rather, Respondent registered the disputed domain names under the alias “Above.com Domain Privacy”, which has no affiliation with Complainant. This is evidence that Respondent does not have rights or a legitimate interest in the disputed domain names. See, Am. Auto. Ass’n, v. Nevis Domains LLC., WIPO Case No. D2006-0489.
Complainant further states that Respondent is using the disputed domain names, which are confusingly similar to Complainant’s trademarks for or including AAA, to confuse and attract Internet visitors to Respondent’s websites which contain links to Complainant’s or Complainant’s competitors goods or services for pay-per-click income. It is well established that such use does not constitute a bona fide offer of goods or services under the Policy. See, Balglow Finance S.A. v. Name Administration Inc., WIPO Case No. D2008-1216.
Complainant submits that it has made a prima facie showing that Respondent has no rights or legitimate interests in respect of any of the disputed domain names. Complainant further submits that this showing shifts the burden to Respondent to adduce evidence showing Respondent’s rights or legitimate interests in the disputed domain names. See Am. Auto. Ass’n, v. Nevis Domains, supra.
Complainant states it is a not-for-profit federation of 50 motor clubs that serves more than 52 million members in the United States and Canada. Complainant has used its AAA trademark in the United States of America since 1902. Complainant states that its AAA trademarks have become well known throughout the United States by offering a variety of goods and services to its millions of members in association with its AAA trademark for over one hundred years. Some of the services which Complainant provides to its members in association with its AAA trademarks include among others providing member motor vehicle owners with ratings for tourist accommodations; arranging for discount purchases; providing emergency road service; placing insurance with underwriters; disseminating travel information and making travel arrangements. Some of the goods which Complainant offers and sells to its members in association with its AAA trademark are magazines, pamphlets, booklets, and directories in the field of travel information, traffic safety, vehicle information and repair, and driver instructions. In addition, Complainant provides consumers with updated gasoline prices on its website through its well-known Fuel Gage Reports and Fuel Price Finder.
Complainant states it is the owner of numerous trademark registrations for or including its AAA trademark in the United States of America, Canada, Mexico, Benelux, France, Germany, Italy, Norway, Spain, China, as well as Community trademarks. Complainant is the owner of United States Trademark Registration No. 829265 registered on May 23,1967 in relation to goods and services in International Classes 42,35,36, 37,39 41. The date of first use in commerce varies from 1902 to 1924.
Complainant further states that numerous UDRP panels have found that Complainant’s trademark AAA is well known and distinctive of Complainant in relation to its goods and services. See AM. AUTO Ass’n v. Private Registration/ Telecom Tech. Corp, WIPO Case No. D2011-0367 (the AAA marks have “established an extensive reputation for the goods and services which it offers under the trademark, not only in the United States, but Internationally”).
Complainant further states that all the disputed domain names include Complainant’s entire AAA trademark as part of each disputed domain name. In addition, substantially all the disputed domain names incorporate either a descriptive geographic term corresponding to the name or geographical location of the member AAA clubs or a descriptive generic term corresponding to the goods or services which Complainant offers in association with its AAA trademark.
Complainant submits that the Respondent must have been aware of Complainant’s AAA trademark; the names and geographical locations of AAA member clubs and the goods and services distributed or advertised in association with Complainant’s AAA trademark before registering or acquiring the confusingly similar disputed domain names.
Complainant submits that Respondent registered the disputed domain names in order to prevent Complainant from reflecting its AAA trademarks in corresponding domain names and states that Respondent has engaged in a pattern of such conduct. See Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798 (respondent’s pattern of registering domain names that resemble famous trademarks of third parties constitutes conduct “expressly forbidden by paragraph 4(b)(ii) of the Policy”).
Complainant states that since 2009, Above.com Domain Privacy was found to have violated the UDRP Policy in over 50 separate UDRP proceedings. See, e.g. Ikarus Security Software GmbH v. Above.com Domain Privacy, WIPO Case No. D2011-1287; Revlon Consumer Products Corp. v. Above.com Domain Privacy / Host Master, Transure Enter. Ltd, David Smith, WIPO Case No. D2010-1497.
Complainant submits that Respondent’s registration of the disputed domain names was primarily for the purpose of disrupting the business of a competitor and is evidence of bad faith use under paragraph 4(b)(iii) of the Policy. See AM. Auto. Ass’n ,Inc. v. AAA Vacation Club.COM c/o Conrad Nizynski, NAF Claim No. 1169994, “respondents use of the confusingly similar domain name AAAVACATIONCLUB.COM to advertise the services of AAA’s competitors disrupted AAA’s business and constituted bad faith use and registration”.
Complainant states that Respondent is capitalizing on the goodwill associated with Complainant’s well known AAA trademark by using the confusingly similar disputed domain names to attract Internet users to the websites associated with the disputed domain names containing links to Complainant, its competitors and advertising sites for pay-per-click income in violation of paragraph 4(b)(iv) of the Policy. Respondent’s registration or acquisition of the disputed domain names, without any legitimate interest in the disputed domain names, for the purpose of pecuniary gain, demonstrates a bad faith intent to capitalize on the goodwill associated with Complainant’s AAA trademark. See Am. Auto. Ass’n, Inc. v. Private Registration / Telecom Tech Corp., WIPO Case No. D2007-0592.
Complainant further submits that Respondent’s provision of demonstrably false information to Complainant in an effort to avoid detection is further evidence of bad faith. See Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886. Respondent’s April 8, 2010 communication with Complainant was sent under the alias “David Smith”. The Registrar later confirmed that the true underlying registrant of the disputed domain names is Oliver Goldsmith.
Complainant submits that Respondent’s practice of typposquatting, only strengthens the inference of bad faith. See Amazon.com Inc. v. Steven Newman, WIPO Case No. D2006-0517.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Complainant alleges that Above.com Domain Privacy is the proper Respondent because it was the listed domain name holder at the time of the filing of the complaint and furthermore, Complainant contends as follows:
“On information and belief, Respondent is also known as Oliver Goldsmith, Above.com Domain Privacy’s customer and the true registrant of the disputed domain name, as revealed by the registrar in June 2011 as part of a related proceeding. Indeed, Oliver Goldsmith has admitted to AAA that he is the true underlying registrant of the disputed domain names;
AAA originally filed the Complaint on October 14, 2011. On November 4, WIPO sent an email to AAA (i) stating that the registrar revealed that 23 of the disputed domain names are registered to Transure Enterprise Ltd., seven of the Disputed Domain Names are registered to David Woo, and two of the Disputed Domain Names are registered to Shu Lin, and (ii) requesting that AAA file an amendment to the complaint demonstrating that these registrants are the same entity. These purported underlying registrants are clearly aliases of Oliver Goldsmith and Above.com Domain Privacy for two specific and independent reasons;
First, the newly listed registrants David Woo, Shu Lin, and Transure Enterprise Ltd. are well-known aliases of Above.com Domain Privacy, as has been examined and confirmed in numerous WIPO proceedings. See, e.g., Revlon Consumer Products Corp. v. Above.com Domain Privacy / Host Master, Transure Enter. Ltd, David Smith, WIPO Case No. D2010-1497 (Nov. 5, 2010); TRS Quality, Inc. v. Above.com Domain Privacy/ Transure Enter. Ltd, WIPO Case No. D2009-0630 (July 3, 2009); LEGO Juris A/S v. Shu Lin/Transure Enter. Ltd/Above.com Domain Privacy, WIPO Case No. D2010-1648 (Nov. 19, 2010); F. Hoffman-LaRoche AG v. Above.com Domain Privacy/ Shu Lin/ Shu Lin Enterprises Ltd./ Host Master, Transure Enter. Ltd, WIPO Case No. D2010-1986 (Jan. 19, 2011); LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enter. Ltd, Host master, WIPO Case No. D2010-0138 (March 10, 2010); Intesa Sanpaolo S.p.A. v. Above.com Po. Ltd./ David Woo, WIPO Case No. D2010-1611 (Nov. 3, 2010); Revlon Consumer Products Cop./ David Woo, WIPO Case No. D2010-1483 (Oct. 27, 2010);
Second, as described above, the registrar confirmed in a related proceeding that Oliver Goldsmith is the true underlying registrant of the disputed domain names, and Mr. Goldsmith himself confirmed registration of the disputed domain names prior to the filing of this complaint. On November 3, one day before AAA received the email from WIPO in which the registrar averred that these aliases, and not Mr. Goldsmith, are the true underlying registrants, Mr. Goldsmith once again confirmed his registration of the domain names.”.
Therefore, Complainant argues that unless otherwise stated, the term "Respondent" in the Complaint refers to Above.com Domain Privacy, Oliver Goldsmith, and the aliases David Woo, Shu Lin, and Transure Enterprise Ltd.
The Panel accepts Complainant’s contentions which Respondent has not rebutted.
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:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant is the owner of numerous trademark registrations for or including AAA in the United States of America, Canada, Mexico, Benelux, France, Germany, Italy, Norway, Spain, China, as well as Community trademarks. Complainant is the owner of United States Trademark Registration No. 829265 registered on May 23,1967 in relation to goods and services in International Classes 42,35,36, 37,39 41. The date of first use in commerce in relation to the variety of goods and services varies from 1902 to 1924.
Complainant has also established common law trademark rights in the United States in its trademark AAA in relation to goods and services including, among others, automobile, travel, insurance, and financial goods and services. Complainant is a not-for-profit federation of 50 motor clubs that serves more than 52 million members in the United States and Canada. Complainant has used its AAA trademark in the United States of America since as early as 1902. Over the past century Complainant has become well known for offering a variety of goods and services in association with its AAA trademark. Complainant provides member motor vehicle owners with ratings for tourist accommodations; arranging for discount purchases; providing emergency road service; placing insurance with underwriters; disseminating travel information and making travel arrangements. Some of the goods which Complainant offers and sells to its members in association with its AAA trademark are magazines, pamphlets, booklets, and directories in the field of travel information, traffic safety, vehicle information and repair, and driver instructions. In addition Complainant provides consumers with updated gasoline prices on its website through its well-known Fuel Gage Reports and Fuel Price Finder.
Numerous UDRP panels have found that Complainant’s trademark AAA are well known and distinctive of Complainant in relation to its goods and services. See AM. AUTO Ass’n v. Private Registration/ Telecom Tech.Corp, WIPO Case No. D2011-0367, “the AAA marks have established an extensive reputation for the goods and services which it offers under the trademark, not only in the United States, but Internationally”; Am. Auto. Ass’n, v. Mike Oglesby, WIPO Case No. D2009-1554. United States Courts have made similar findings, See, Am. Auto Ass’n, Inc. 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 on by a significant segment of the public as indicating AAA and its services”..
All the disputed domain names are confusingly similar to Complainant’s AAA trademark. All the disputed domain names include the entire AAA trademark as part of the disputed domain name. A domain name is confusingly similar to a trademark when it includes the trademark in its entirety, even if one or more generic terms is added in the disputed domain name. See, e.g. AM. AUTO. ASS’n, v. Guaranteed Sales a/k/a Paul Sellers, NAF Claim No. 1233514 (<aaatravelsite.com> and <aaatravelsite.info> domain names confusingly similar to AAA trademark for travel services).
The disputed domain names <aaacarolias.com>, <aaacentralpa.com>, <aaaeasttennessee.com>, <aaamn.com>, <aaamontana.com>, <aaacousa.com>, <aaamountainwest.com>, <aaa-nc.com>, <aaa-ny.com>, <aaaofwny.com>, <aaa-ohio.com>, <aaa-socal.com>, <aaatidewater.com>, <aaatn.com>, <aaatx.com>, <aaawest.com>, and <aaawny.com> comprising half of the domain names in dispute are comprised of Complainant’s trademark AAA and geographically descriptive terms corresponding to the names of AAA’s affiliate clubs or describe areas in which AAA’s affiliate clubs carry on business. The addition of such descriptive geographical terms does not reduce the inherent confusion because it does not alter the underlying trademark. In Am. Auto. Ass’n, Inc, v. Private Whois Escrow Domains Private Limited, WIPO Case No. D2009-0822, the panel found that “ the addition of the name ‘carolina’, does nothing to dilute the impact and distinctiveness of the …AAA service mark.”.
The disputed domain names <aaaautocarriers.com>, <aaacations.com>, <aaadiscover.com>, <aaafuelguagereport.com>, <aaasignaturetransportation.com>, <aaastudentloanconsolidation.com>, <aaatravel-maldives.com>, <aaautoclub.com>, <aaautoloans.com>, <aaautosaleskc.com>, <aaautosalesonline.com>, and <aaa4insureance.com> each include Complainant’s trademark AAA in combination with descriptive generic terms such as “auto”, “travel”, “insurance”, “consolidated student loan”, and “fuel guage”, which relate to services offered by Complainant. The addition of such descriptive generic terms to Complainant’s AAA trademark in the disputed domain names in all likelihood heightens the confusion. See Am. Auto. Ass’n. Inc, v. New Cars Lowest Prices, WIPO Case No. D2011-0337, “because the Complainant uses its AAA trademark in connection with a wide variety of services related to cars, the addition of the descriptive wording in this case is likely to exacerbate confusion with the Complainant’s mark.”.
The remaining disputed domain names <aaa11.com>, <aaa-yacht.com> and <swissaaa.com> are confusingly similar to Complainant’s trademarks AAA.
Moreover, the Panel also notes that Complainant is the owner of United States Trademark Registration No. 2,120,266 for the trademark AAA VACATIONS registered on December 9, 1997 in association with the goods and services: arranging travel tours and vacations; making registrations and books for temporary lodging. Complainant is also the owner of Swiss Trademark Registration No. 543640 for the trademark AAA for use in connection with auto rental goods and services among various others.
Certain of the disputed domain names such as <aaacarolias.com>; <aaacations.com>; <aaa4insureance> and <aaautoloans.com> which contain misspellings or obviously omitted letters constitute typosquatting and the Panel finds that are confusingly similar to Complainant’s trademarks. See Amazon.com Inc. v. Steven Newman, WIPO Case No. D2006-0517; Wachovia Corporation v. America Consumers First, WIPO Case No. D2004-0150, (“[W]here the domain name is a slight alphabetical variation for a famous mark, the panel has found the circumstances of “typosquatting” to constitute confusing similarity”).
The inclusion of the top level domain descriptor “.com” in the disputed domain names does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven on a balance of probabilities that the disputed domain names are confusingly similar to Complainant’s trademarks for or including AAA.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks for or including AAA.
Complainant has been using its AAA trademarks since 1902 to promote its services as found and described in greater detail in Section 4 above. Respondent registered or acquired the disputed domain names at least 100 years later. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.
Complainant contends that it has found no evidence that Respondent is known by Complainant’s trademarks or has registered or used the disputed domain name as a trademark, and is not aware that it is known by the disputed domain names. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (no legitimate interest where a registrant has not been licensed by complainant, has not registered or used domain name as a trademark, and has not been known by domain name); See also Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011 (no legitimate interest where domain registrant had not registered or used a domain name as a trademark); See also, Am. Auto. Ass’n, v. Nevis Domains LLC. WIPO Case No. D2006-0489.
In this Panel’s view, Respondent is using the disputed domain names, which are confusingly similar to Complainant’s trademarks for or including AAA, to confuse and attract Internet visitors to Respondent’s websites which contain links to Complainant’s or Complainant’s competitors goods or services for pay-per-click income. It is well established that such use does not constitute a bona fide offer of goods or services under the Policy. See Balglow Finance S.A. v. Name Administration Inc., WIPO Case No. D2008-1216.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of production shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response to avail itself of the benefits of paragraph 4(c) of the Policy. Am. Auto. Ass’n, v.Nevis Domains,supra.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain names.
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names have been registered and used in bad faith.
Complainant is a not-for-profit federation of 50 motor clubs that serves more than 52 million members in the United States and Canada. Complainant has used its AAA trademark in the United States of America since 1902. Complainant’s AAA trademark has become well known throughout the United States by offering a variety of goods and services to its millions of members in association with its AAA trademark for over one hundred years. Some of the services which Complainant provides to its members in association with its AAA trademarks include among others providing member motor vehicle owners with ratings for tourist accommodations; arranging for discount purchases; providing emergency road service; placing insurance with underwriters; disseminating travel information and making travel arrangements. Some of the goods which Complainant offers and sells to its members in association with its AAA trademark are magazines, pamphlets, booklets, and directories in the field of travel information, traffic safety, vehicle information and repair, and driver instructions. In addition Complainant provides consumers with updated gasoline prices on its website through its well-known Fuel Gage Reports and Fuel Price Finder.
Complainant is the owner of numerous trademark registrations for or including its AAA trademark in the United States of America, Canada, Mexico, Benelux, France, Germany, Italy, Norway, Spain, China, as well as Community trademarks. Complainant is the owner of United States Trademark Registration No. 829265 registered on May 23,1967 in relation to goods and services in International Classes 42,35,36, 37,39 41. The date of first use in commerce varies from 1902 to 1924 in respect of the various services.
Numerous UDRP panels have found that Complainant’s AAA trademark is well known and distinctive of Complainant in relation to its goods and services. See, AM. AUTO Ass’n v. Private Registration / Telecom Tech. Corp, WIPO Case No. D2011-0367, “the AAA marks have established an extensive reputation for the goods and services which it offers under the trademark, not only in the United States, but Internationally”.
All the disputed domain names include Complainant’s entire AAA trademark as part of each disputed domain name. In addition, substantially all the disputed domain names incorporate either a descriptive geographic term corresponding to the name or geographical location of the member AAA clubs or a descriptive generic term corresponding to the goods or services which Complainant offers in association with its AAA trademarks.
The Panel infers from the content of the websites associated with the disputed domain names that Respondent must have been aware of Complainant’s AAA trademarks; the names and geographical locations of AAA member clubs and the goods and services distributed or advertised in association with Complainant’s AAA trademarks before registering or acquiring the confusingly similar disputed domain names.
The Panel finds on a balance of probabilities that Respondent registered or acquired the disputed domain names in bad faith.
Paragraph 4(b)(ii) of the Policy provides that the following circumstances, in particular but without limitation shall be evidence of the registration and use of the domain name in bad faith: “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 you have engaged in a pattern of such conduct.”
The Panel infers from the evidence submitted by Complainant and not denied by Respondent that Respondent was aware at the date of registration or acquisition of the disputed domain names of the substantial value of Complainant's trademarks, and the demand for Complainant's goods and services, and registered or acquired the disputed domain names to prevent Complainant from using its own valuable trademarks as domain names.
Respondent has shown a pattern of registering domain names which have been found to be confusing with well known trademarks. Since 2009, Respondent Above.com Domain Privacy was found to have violated the UDRP Policy in over 50 separate UDRP proceedings. See, e.g. Ikarus Security Software GmbH v. Above.com Domain Privacy, WIPO Case No. D2011-1287; Revlon Consumer Products Corp. v. Above.com Domain Privacy / Host Master, Transure Enter. Ltd, David Smith, WIPO Case No. D2010-1497. See, Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798 (respondent’s pattern of registering domain names that resemble famous trademarks of third parties constitutes conduct “expressly forbidden by paragraph 4(b)(ii) of the Policy”).
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
Respondent’s webpages associated with the disputed domain names include links to entities providing products and services related to the kind of products and services offered by Complainant, without any information relating to Respondent, its purpose, business, or proposed business, if any. Respondent’s use of the disputed domain names enables Respondent to draw Internet users to its websites for profit by misleading Internet users associating the disputed domain names with Complainant. The Panel infers that Respondent is receiving click-through profits as the pages associated with the disputed domain names make no reference to Respondent, its purpose, business or proposed business. Linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use. See, e.g. The Carphone Warehouse Limited and The Phone House B. V. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2008-0483, "If the links are based on the trade mark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cyber squatting". See also Champagne Lanson v. Development Services / MailPlanet.com Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name). See Am.Auto. Ass’n, Inc. v. Private Registration / Telecom Tech Corp., WIPO Case No. D2007-0592.
Respondent’s provision of demonstrably false information to Complainant in an effort to avoid detection is further evidence of bad faith. See Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886.
Respondent’s April 8, 2010 communication with Complainant was sent under the alias “David Smith”. The Registrar later confirmed that the true underlying registrant of the disputed domain names is Oliver Goldsmith.
Respondent’s practice of typosquatting, only strengthens the inference of bad faith. See, Amazon.com Inc.v. Steven Newman, WIPO Case No. D2006-0517.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent registered the disputed domain names in order to prevent Complainant from reflecting its trademarks in the corresponding domain names within the meaning of paragraph 4(b)(ii) of the Policy and has used the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under 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 disputed domain names <aaaautocarriers.com>, <aaacarolias.com>, <aaacations.com>, <aaacentralpa.com>, <aaacousa.com>, <aaadiscover.com>, <aaaeasttennessee.com>, <aaafuelguagereport.com>, <aaamn.com>, <aaamontana.com>, <aaamountainwest.com>, <aaa-nc.com>, <aaa-ny.com>, <aaaofwny.com>, <aaa-ohio.com>, <aaasignaturetransportation.com>, <aaa-socal.com>, <aaastudentloanconsolidation.com>, <aaatidewater.com>, <aaatn.com>, <aaatravel-maldives.com>, <aaatx.com>, <aaautoclub.com>, <aaautoloans.com>, <aaautosaleskc.com>, <aaautosalesonline.com>, <aaawest.com>, <aaawny.com>, <aaa-yacht.com>, <aaa11.com>, <aaa4insureance.com> and <swissaaa.com> be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: December 26, 2011