ADMINISTRATIVE PANEL DECISION
Case No. D2009-1544
1. The Parties
The Complainant is The American Automobile Association, Inc of Heathrow, Florida United States of America.
The Respondent is Mike Oglesby of Sunrise, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names , ,
, , and
are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2009. On November 18, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On November 20, 2009, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the 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, the Complainant filed an amendment to the Complaint on November 24, 2009. 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” 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 November 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2009.
The Center appointed Angela Fox as the sole panelist in this matter on December 28, 2009. 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 based in the United States and has been trading under the acronym AAA since at least 1902 in connection with, in particular, automotive, travel and insurance services.
It is the proprietor of numerous U.S. federal trademark registrations for AAA in plain and stylized forms, including registration nos. 703556, 829265, 2158654 and 3162780, dating from as early as 1958 and all pre-dating the registration of the disputed domain names, details of which were annexed to the Complaint. The Complainant also referred to its ownership of numerous foreign registrations for AAA, including in Canada, Mexico, the Benelux, France, Germany, Italy, Norway, Spain, Switzerland, Peoples’ Republic of China and the European Union.
The disputed domain names were registered on 12 and 13 October 2006. They have been used to host parking pages offering third-party advertisements for travel services that compete with those offered by the Complainant. At least one of the disputed domain names, , has also been used to redirect Internet users to a website at “www.vacationmedia.net”, which also offers travel-related services competing with those of the Complainant.
The Complainant wrote to the Respondent on January 22, 2008 and again on March 4, 2008 demanding the transfer of the disputed domain names, using the address listed in the WhoIs registry details. However, the letters were returned as undeliverable and emails sent to the Respondent were unanswered.
On November 17, 2009 the Complainant filed the Complaint.
5. Parties’ Contentions
The Complainant alleges that the disputed domain names are confusingly similar to its registered trademark. The disputed domain names include the Complainant’s AAA trademark in its entirety, adding only non-distinctive elements that are directly descriptive of the Complainant’s business in travel-related services. The Complainant submits that its AAA trademark is well-known and argues that the combination of AAA with generic terms descriptive of the Complainant’s business gives rise to confusing similarity.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondent to use its AAA trademark, and the Respondent is not commonly known by the disputed domain names. The Respondent appears to be using the disputed domain names to provide pay-per-click (“PPC”) links to travel-related third-party websites, and such use constitutes, in the Complainant’s submission, an effort to misleadingly divert customers for commercial gain, and is not therefore evidence of a bona fide commercial use. Likewise, the Respondent’s past use of one of the disputed domain names () to re-direct Internet users to a competing travel services website was not, in the Complainant’s submission, a bona fide commercial use.
Finally, the Complainant alleges that the disputed domain names were registered and are being used in bad faith. The Complainant claims that the disputed domain names were registered in order to derive commercial advantage from confusion by Internet users between the disputed domain names and the Complainant’s AAA trademark. The Complainant avers moreover that the Respondent’s past use of to re-direct Internet users to a website of one of the Complainant’s competitors amounts to disruption of the Complainant’s business and is further evidence of bad faith.
The Complainant further contends that the Respondent’s failure to provide accurate WhoIs contact information is further evidence of bad faith on its part.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved ownership of registered trademark rights in AAA in plain and stylized forms. The acronym AAA appears in its entirety in each of the disputed domain names.
The remaining elements in the disputed domain names are “travelandtours” and “traveltours”. Both are simply the conjoined words “travel” and “tours”, with and without the conjunctive “and.” These elements are directly descriptive of the Complainant’s business in the travel services sector.
The mere addition of a descriptive term to a trademark does not avoid confusing similarity between the trademark and a disputed domain name, particularly where the descriptor is in some way relevant to the Complainant’s business (see inter alia American Automobile Association, Inc. v Nevis Domains LLC, WIPO Case No. D2006 0489; The American Automobile Association, Inc. v AAA-Vacationsunlimeted, WIPO Case No. D2009-0373; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001 0778; Amazon.com, Inc. v. PDC, WIPO Case No. D2003 0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001 1338).
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered AAA trademark.
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on complainants, but panels have long recognised that the information needed to prove such a right or interest is normally in the possession of respondents.
In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of proof passes to the respondent to show that he does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004 0110). In this case, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. There is nothing on the record to indicate that the Respondent might enjoy such a right or interest, and it has not attempted to refute the Complainant’s assertion.
The Panel notes that the Respondent appears to have used the disputed domain names for PPC landing pages hosting links to third-party commercial websites operating in the travel services field. Moreover, the Respondent has used at least one of the disputed domain names to re-direct Internet users to the commercial travel services website of one of the Complainant’s competitors.
There is no question that the attractiveness of the disputed domain names as addresses for PPC landing pages is bound up in their combination of the Complainant’s distinctive trademark with descriptive words directly relevant to the Complainant’s business. In the Panel’s view, the Respondent’s unauthorised use of domain names incorporating the Complainant’s registered trademark and relevant descriptors in order to attract Internet users to PPC landing pages promoting competing businesses is not a bona fide commercial use. Indeed, such activities have been regarded as evidence of cybersquatting behaviour by other panelists (see inter alia American Automobile Association, Inc. v Texas International Property Associates, WIPO Case No. D2007 0592: “By Respondent’s own admission, it uses the disputed domain name to collect revenues by providing links to advertisers who seek to sell, among other things, products (i.e., maps) similar to those offered by the Complainant. There have been many prior panels operating pursuant to the Policy that have declared this sort of disputed domain name use to fall short of the requirements of both paragraphs 4(c)(i) and 4(c)(iii)”; and mVisible Technologies Inc v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007 1141: “If the links on a given landing page...are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally… constitute abusive cybersquatting”; see, similarly, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007 1415; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inv. v. In Knot we Trust LTD, WIPO Case No. D2006 0340); and Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007 0353).
There is nothing in the evidence to suggest that the Respondent has any legitimate right or interest in using domain names including the Complainant’s trademark. The Panel finds that it has none.
C. Registered and Used in Bad Faith
Although the Complainant did not put forward evidence of reputation in this case, it did refer to other decisions in which panelists and courts have found the Complainant’s AAA trademark to be well-known in the United States and abroad (American Automobile Association, Inc. v Nevis Domains LLC, WIPO Case No. D2006-0489, in which the Panel observed, “…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”; see also American Automobile Association, Inc. v AAA Insurance Agency, Inc. 618 F. Supp. 787, 790 (W.D. Tex. 1985); American Automobile Association, Inc. v AAA Automobile Club of Queens, Inc., No. 97 CV 1180, 1999 WL 97918).
The Respondent is based in the United States, the Complainant’s home market. Given the long-standing use and fame of the AAA mark in the travel sector in the United States, it is highly improbable that the Respondent had no knowledge of the Complainant’s AAA mark when it registered the disputed domain names. Indeed, it is likely that such knowledge is what prompted the registration of the domain names and the Respondent’s use of them to host links to websites of the Complainant’s competitors in the travel services field. It is hard to see why else the Respondent would have chosen domain names including the acronym AAA and descriptive terms directly relevant to the Complainant’s travel services business, and the Respondent has offered no alternative explanation (see American Automobile Association, Inc. v. Texas International Property Associates, WIPO Case No. D2007 0592: “the Panel is aware of no plausible reason…that the Respondent would add the letters “aaa” to the word “maps” in the domain name…, except that the Respondent desired to confuse Internet users with an association with the Complainant’s famous AAA trademark.”)
Under paragraph 4(b)(iv) of the Policy, the Panel is entitled to find both registration and use in bad faith where there is evidence that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s web site or location or of a product or service on it.
In this case, the Respondent deliberately set out to derive PPC revenue from Internet users by creating a likelihood of confusion with the Complainant’s trademark. It adopted confusingly similar domain names and used them to host PPC links to third-party websites offering services in the travel sector, the Complainant’s own field of activity. Such conduct is inherently misleading, and the use of a confusingly similar domain name to lure Internet users to a site hosting links to providers of competing products or services is prima facie evidence of bad faith (see inter alia American Automobile Association, Inc. v Texas International Property Associates, supra; and mVisible Technologies Inc v. Navigation Catalyst Systems, Inc, supra: “Because Respondent’s many domain names resolve to landing pages at which competitive services are offered, Complainant has established that Respondent’s use of these domain names is in bad faith. The domain names appear designed to attract Internet users who are looking for Complainant’s MYXER TONES services, appear to cause confusion with Complainant’s marks and websites, appear to disrupt Complainant’s business by diverting consumers away from Complainant’s websites, and do all of these things for commercial gain because Respondent profits from the PPC revenue generated by these websites”; see also inter alia Mudd (USA), LLC v. Unasi, Inc., WIPO Case No. D2005 0591; and Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005 0556).
The Panel finds that the Respondent’s conduct constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
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 names, , , , , and be transferred to the Complainant.
Dated: January 9, 2010