WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The American Automobile Association, Inc. v. Bao Shui Chen, Poste restante

Case No. D2016-0229

1. The Parties

Complainant is The American Automobile Association, Inc. of Heathrow, Florida, United States of America ("US"), represented by Covington & Burling, US.

Respondent is Bao Shui Chen, Poste restante of Prague, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <ouraaa.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 5, 2016. On February 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on February 16, 2016.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on February 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 10, 2016.

The Center appointed Roberto Bianchi as the sole panelist in this matter on March 21, 2016. 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 is a corporation organized under the laws of Connecticut, with a principal place of business in Heathrow, Florida.

Complainant owns the following US trademark registrations:

According to the WhoIs data of the current Registrar, the record corresponding to the disputed domain name was created on February 7, 2000.

5. Parties' Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is confusingly similar to Complainant's AAA marks as it includes the entire AAA mark, with the addition of the generic term "our". Adding this generic term here heightens the likelihood of consumer confusion because the AAA mark is well known for providing automobile and insurance services, the same services advertised on the website of the disputed domain name. "Our" is a particularly generic term that adds no meaning or descriptive quality to the term it is modifying.

Complainant offers auto insurance, home and renters insurance, and life, health, and travel insurance, as shown in Complainant's website screen captures in Annex E of the Complaint. Respondent, in purporting to offer "AAA Insurance", "AAA Auto", "AAA Insurance Quote", and "AAA Insurance Company" information (Annex A of the Complaint) is holding itself out to the public as offering the same services as Complainant's trademarked services. Accordingly, Respondent's use of the disputed domain name is likely to cause, and may have already caused, consumers to become confused as to the source, sponsorship, affiliation, or endorsement of Respondent's website.

Respondent has neither rights nor any legitimate interests to use the disputed domain name. Complainant has established rights to the AAA marks and has not licensed or authorized Respondent to use the marks in connection with its business or as part of the disputed domain name. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name. Respondent did not register the disputed domain name under a name containing the AAA marks; rather, the disputed domain name is registered to a party, who has no connection to or affiliation with AAA. Respondent's use of the disputed domain name to advertise auto and insurance services constitutes neither bona fide offerings of goods or services nor legitimate noncommercial or fair uses. Respondent assuredly was aware of Complainant and its AAA marks when registering the confusingly similar domain name and intends to divert Internet users seeking Complainant's products and services to Respondent's website.

Respondent registered the disputed domain name in bad faith as demonstrated by the facts set forth above. First, Respondent registered the disputed domain name confusingly similar to the AAA marks to divert Internet users seeking Complainant's services to Respondent's website. Respondent's use of the disputed domain name to advertise insurance and automobile services, without any legitimate interest in the name and for purposes of pecuniary gain, is prima facie evidence of bad faith under UDRP Policy, paragraph 4(b)(iv). Second, Respondent's registration and use of the disputed domain name to advertise insurance and automobile services is disruptive of Complainant's business and is further evidence of bad faith registration under UDRP Policy, paragraph 4(b)(iii). Third, and finally, Respondent's actual or constructive knowledge of AAA's marks, based on US and international registrations and the marks' substantial fame in the US and abroad, is further evidence of its bad faith. Respondent first registered the disputed domain name in 2000, nearly a century after Complainant began using its famous marks in commerce in 1902. Respondent also has no excuse for its continued infringing registration and use of the disputed domain name after Complainant put it on actual notice of its rights in the AAA marks.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting printouts of its trademark certificates, Complainant has shown to the satisfaction of the Panel that it has rights in the AAA marks. See Section 4 above.

The Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant's AAA marks. It is well established that the addition in a domain name of a generic or common term to a mark generally is inapt to distinguish the domain name from the mark. In particular, prior UDRP panels have found that the addition in a domain name of the term "our" to a mark does nothing to distinguish one identifier from the other. See Celgene Corporation v. Ourcelgene.com / Milan Kovac, WIPO Case No. D2011-2094, finding that the domain name <ourcelgene.com> was confusingly similar to the complainant's CELGENE mark; see also Wal-Mart Stores, Inc. v. OUR Walmart, WIPO Case No. D2011-0783, finding that the domain name <ourwalmart.org> was confusingly similar to the WALMART mark.

The first element of the Policy is thus met.

B. Rights or Legitimate Interests

Complainant contends that it has established rights to the AAA marks and has not licensed or authorized Respondent to use the marks in connection with its business or as part of the disputed domain name. Complainant denies that Respondent is commonly known by the disputed domain name. Complainant also says that Respondent's use of the disputed domain name to advertise auto and insurance services constitutes neither bona fide offerings of goods or services nor legitimate noncommercial or fair uses. Complainant concludes that it has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

In the opinion of the Panel, Complainant's contentions are supported by the available evidence and thus are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. According to the WhoIs data provided by the Registrar to the Center, the registrant of the disputed domain name, i.e. Respondent, is Bao Shui Chen, Poste restante, which means that Policy, paragraph 4(c)(ii) does not apply. Complainant also has evidenced with a printout of the website at the disputed domain name obtained on November 19, 2015 that Respondent has posted "related links" containing the AAA mark, where auto and insurance services are advertised, presumably in competition with Complainant. Since on the website there appears no explanation as to these postings, the Panel agrees with Complainant that this use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, which makes Policy, paragraphs 4(c)(i) and 4(c)(iii) also inapplicable.

According to the consensus view of UDRP panels, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP" (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.)

The Panel notes that Respondent failed to submit any explanations or arguments in its own favor. Also, the website at the disputed domain name presently does not show any contents, which leads this Panel to infer that Respondent cannot display any contents on the website other than the "related links" referred to above.

Based upon all these facts and circumstances, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the registration of Complainant's AAA marks predates the registration of the disputed domain name by many years. See Section 4 above. Also, as shown by Complainant, the contents of the website at the disputed domain name basically consisted of "related links" such as "AAA Auto", "AAA Insurance", "AAA Insurance Quote", and "AAA Insurance Company", i.e. names containing Complainant's AAA marks and corresponding to services covered by such marks. This suggests that at the time of the registration of the disputed domain name Respondent was well aware of, and that it targeted, Complainant and its AAA marks and services. In the circumstances of this case, this means that the registration of the disputed domain name was in bad faith.

In the Panel's opinion, by posting those links, Respondent was using the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with Complainant's AAA mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location, which is a circumstance of registration and use in bad faith under Policy, paragraph 4(b)(iv).

On March 23, 2016, under its general powers pursuant to Rules, paragraph 10(a), the Panel connected its browser to the website at the disputed domain name, and found a completely blank page. In the Panel's view this suggests that Respondent does not contemplate any use for this website other than profiting from Complainant's AAA marks as described above, in a manner clearly contrary to the UDRP. On the same day, the Panel also searched on the Wayback Machine at "www.archive.org" for archived pages of the website at the disputed domain name, and found a legend stating, "Page cannot be crawled or displayed due to robots.txt." Because Respondent implemented the robot.txt device after having been put on notice of the present dispute, the Panel believes such a use also supports a finding of bad faith. See WIPO Overview 2.0, paragraph 3.10 ("Can the use of 'robots.txt' or similar mechanisms to prevent website content being accessed in an on-line archive form a basis for finding bad faith? […] Panels have found that, absent convincing justification in a given case for the employment of 'robots.txt' or other similar circumvention mechanisms to prevent access to historical website content on a repository such as the Internet Archive (at www.archive.org), the use of such device may be considered as an attempt by the domain name registrant to block access by the panel to relevant evidence (for example, if robots.txt is implemented only after the registrant is put on notice of third party rights). In such a case, a panel may be entitled to assume that appropriately evidenced prima facie reasonable factual allegations made by a complainant as to the historical use of the website to which the domain name at issue resolves are true, and that, depending on those allegations, the use of mechanisms such as 'robots.txt' in the particular case may be a relevant (though not necessarily dispositive) consideration for purposes of assessing bad faith.")

Lastly, as reported by the courier entrusted with the delivery of the Center's Written Notice of the Complaint, the corresponding shipment could not be delivered at the address provided by Respondent to the Registrar, on the ground of "Wrong address and tel number"[SIC]. The Panel shares with prior UDRP panels the opinion that providing false contact details is an indication of bad faith. See Steelcase Development Corporation v. Admin, Domain, WIPO Case No. D2005-1352 ("The Respondent's bad faith is further demonstrated by the false contact information he provided to the registrar with which the domain names are registered. See Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775)

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

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, <ouraaa.com>, be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: March 30, 2016