The American Automobile Association, Inc. v. Hector Cancel
Claim Number: FA0909001282775
Complainant is The American Automobile Association, Inc. (“Complainant”), represented by Peter
D. Saharko, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aaa-major-creditcardsonline.com>, registered with Name.com LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2009.
On September 3, 2009, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <aaa-major-creditcardsonline.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.Com LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@aaa-major-creditcardsonline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aaa-major-creditcardsonline.com> domain name is confusingly similar to Complainant’s AAA mark.
2. Respondent does not have any rights or legitimate interests in the <aaa-major-creditcardsonline.com> domain name.
3. Respondent registered and used the <aaa-major-creditcardsonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The American Automobile Association, Inc., has offered a wide range of credit card and insurance products since 1902. Complainant owns a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AAA mark (e.g., Reg. No. 1,678,804 issued March 10, 1992).
Respondent registered the <aaa-major-creditcardsonline.com> domain name on April 26, 2001. Respondent’s disputed domain name resolves to a website offering credit card products in direct competition with Complainant.
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."
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.”).
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 and is being used in bad faith.
Complainant obtained a number of trademark registrations for
the AAA mark with the USPTO (e.g., Reg. No. 1,678,804 issued March 10, 1992). The Panel finds that Complainant has
established rights in the AAA mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Reebok Int’l Ltd. v.
Complainant argues that Respondent’s <aaa-major-creditcardsonline.com> domain name is confusingly
similar to Complainant’s AAA mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, adds the terms “major,” “credit,” “cards,”
and “online,” adds hyphens, and adds the generic top-level domain (“gTLD”)
“.com.”
The Panel finds that the addition of generic terms with an obvious
relationship to a complainant’s business, as well as other generic terms such
as “online” create a confusing similarity between the disputed domain name and
the complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2,
2006) (finding that the addition of the generic term “finance,” which described
the complainant’s financial services business, as well as a gTLD, did not
sufficiently distinguish the respondent’s disputed domain name from the
complainant’s mark under Policy ¶ 4(a)(i)); see
also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23,
2001) (finding the <broadcomonline.com> domain name is confusingly
similar to the complainant’s BROADCOM mark).
In addition, the Panel finds that a disputed domain name that adds hyphens
between the terms of a domain name containing Complainant’s mark create a
confusing similarity between the disputed domain name and the established
mark. See Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <aaa-major-creditcardsonline.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a response to these proceedings. 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”).
Respondent’s WHOIS registration is evidence that Respondent
is not commonly known by the <aaa-major-creditcardsonline.com>
domain name, in that the registrant is listed as “Hector Cancel.” Without evidence to the contrary, the Panel
finds that Respondent is not commonly known by the disputed domain name pursuant
to Policy ¶ 4(c)(ii).
See Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding
that the respondent was not commonly known by the disputed domain names where
the WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
Respondent’s disputed domain name
was registered on April 26, 2001 and resolves to Respondent’s commercial
website offering credit card products in direct competition with
Complainant. The Panel finds that
Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s]
SAFLOK mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the <aaa-major-creditcardsonline.com> domain name to operate a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to 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)); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s use of the confusingly similar <aaa-major-creditcardsonline.com> domain name in order to intentionally attract Internet users to its website by creating a strong likelihood of confusion with Complainant’s AAA mark and in order to offer credit card products in direct competition with Complainant is further evidence of bad faith. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaa-major-creditcardsonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: October 15, 2009
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