The American Automobile Association, Inc. v. Joe Villa
Claim Number: FA1407001570918
Complainant is The American Automobile Association, Inc. (“Complainant”), represented by Danielle E. Johnson of Covington & Burling LLP, District of Columbia, USA. Respondent is Joe Villa (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aaainsuranceclaims.us> and <aaapropertyclaims.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2014; the National Arbitration Forum received payment on July 22, 2014.
On July 22, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <aaainsuranceclaims.us>, <aaapropertyclaims.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aaainsuranceclaims.us and postmaster@aaapropertyclaims.us. Also on July 23, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the USTLD Policy, USTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the AAA mark in connection with its automobile-related products and services offered to members of Complainant’s association. The AAA mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., 829,265 registered May 23, 1967). The <aaainsuranceclaims.us> and <aaapropertyclaims.us> domain names are confusingly similar to the AAA mark because the added terms are references to insurance claims and Complainant deals in insurance.
Respondent has no rights or legitimate interests in the domain names. First, Respondent has no trademarks similar or identical to <aaainsuranceclaims.us> and <aaapropertyclaims.us>. Second, Respondent is not known by either of the names. Third, Respondent uses the <aaainsuranceclaims.us> and <aaapropertyclaims.us> domain names to advertise competing insurance services.
Respondent has registered or used the domain name in bad faith. First, Respondent’s conduct in using the domain names for competing ventures is evidence of commercial disruption. Second, Respondent is profiting through a likelihood that Internet users will be confused as to the association between the AAA mark and the competitive offerings available on the domain names’ websites. Finally, Respondent has constructive and actual notice of Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant uses the AAA mark in connection with its automobile-related products and services offered to members of Complainant’s association. The AAA mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., 829,265 registered May 23, 1967).
Respondent, Joe Villa, registered the <aaainsuranceclaims.us> and <aaapropertyclaims.us> domain names on August 11, 2013.
Respondent uses the domain names to advertise competing insurance services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the AAA mark under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., 829,265 registered May 23, 1967). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Respondent’s <aaainsuranceclaims.us> and <aaapropertyclaims.us> domain names are confusingly similar to the AAA mark because the added terms are references to insurance claims and Complainant is in the insurance business.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent does not have any trademarks similar or identical to <aaainsuranceclaims.us> and <aaapropertyclaims.us>, so Respondent does not have any Policy ¶ 4(c)(i) rights in the domain names. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(iii). The WHOIS information for these domain names lists “Joe Villa” as the registrant of record. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (the panel found no reason to find a respondent to be commonly known by a disputed domain name when the record didn’t support such a finding).
Respondent uses the <aaainsuranceclaims.us> and <aaapropertyclaims.us> domain names to advertise competing insurance services. Both domain names resolve to GoDaddy parking pages that promote competing advertisements. Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (a series of competing links on the disputed domain name’s website show neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use).
Respondent’s conduct in using the domain names for competing ventures is evidence of commercial disruption and bad faith under Policy ¶ 4(b)(iii)). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
There is a likelihood that Internet users will be confused as to the association between the AAA mark and the competitive offerings available on the domain names’ websites. It is also likely that the click-through the hyperlinks on the resolving websites generate advertising revenue for Respondent. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”). Therefore, Respondent registered and uses the disputed domain names in bad faith under Policy 4(b)(iv).
Due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Therefore, Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Complainant having established all three elements required under the USTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaainsuranceclaims.us> and <aaapropertyclaims.us> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 29, 2014
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