The American Automobile Association, Inc. v. Dealwave
Claim Number: FA1002001308676
Complainant is The American Automobile Association, Inc. (“Complainant”), represented by Patrick
M. Phelan, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wwwaaa4insurance.com> and <aaa4insurace.com>, registered with Fabulous.com Pty Ltd.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On February 19, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwaaa4insurance.com> and <aaa4insurace.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 February 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2010 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@wwwaaa4insurance.com and postmaster@aaa4insurace.com. Also on February 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 March 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwaaa4insurance.com> and <aaa4insurace.com> domain names are confusingly similar to Complainant’s AAA mark.
2. Respondent does not have any rights or legitimate interests in the <wwwaaa4insurance.com> and <aaa4insurace.com> domain names.
3. Respondent registered and used the <wwwaaa4insurance.com> and <aaa4insurace.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The American Automobile Association, Inc., offers automotive, insurance, travel and financial information and discount services to consumers around the world. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AAA mark (e.g., Reg. No. 829,265 issued on May 23, 1967).
Respondent registered the <wwwaaa4insurance.com> and <aaa4insurace.com> domain names on November 23, 2005. Respondents disputed domain names resolve to a website that displays third-party links to websites both in competition with and unrelated to Complainant’s business.
Complainant offers evidence that Respondent has a history of registering domain names that infringe on the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See LD Prods., Inc. v. Dealwave, FA 1265963 (Nat. Arb. Forum July 14, 2009); see also Direct Line Ins. V. Dealwave, FA 1247733 (Nat. Arb. Forum March 31, 2009); see also Boston Green Goods, Inc. v. Dealwave, FA 1115186 (Nat. Arb. Forum January 5, 2008).
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 has obtained multiple trademark registrations for the AAA mark with the USPTO (e.g., Reg. No. 829,265 issued on May 23, 1967). The Panel finds that Complainant has established rights in the AAA mark for the purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that Respondents <wwwaaa4insurance.com> and <aaa4insurace.com>
domain names are confusingly similar to its AAA mark. Complainant notes that both disputed domain
names contain its AAA mark in its entirety followed by the descriptive term “4
insurance,” and the misspelled version of the descriptive term “4 insurace,”
which describe a large portion of Complainant’s business dealings. Further Complainant argues that Respondent’s <wwwaaa4insurance.com> domain name, which omits
the period after “www,” is not sufficient to distinguish it from Complainant’s
mark. Complainant also notes that the
addition of the generic top level domain (“gTLD”) “.com” is not relevant in
distinguishing the disputed domain names from its mark. The Panel finds that Respondent’s disputed
domain names are confusingly similar because they contain Complainant’s entire
AAA mark and simply contain misspellings of the descriptive terms and
punctuation errors along with the addtion of the gTLD “.com.” See Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to the complainant’s
registered trademark BANK OF
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the <wwwaaa4insurance.com> and <aaa4insurace.com>
domain names. Complainant is required to
make a prima facie case in support of
these allegations. Once the Complainant
has produced a prima facie case the
burden shifts to Respondent to show it has a right or legitimate interest in
the disputed domain names. See Domtar,
Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It
is well established that, once a complainant has made out a prima facie case in support of its
allegations, the burden shifts to respondent to show that it does have rights
or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin,
Domain, FA 873137 (Nat. Arb.
Forum Feb. 13, 2007) (finding that once a prima
facie case has been established by the complainant, the burden then shifts
to the respondent to demonstrate its rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has
established a prima facie case. Due to the Respondent’s failure to respond to
these proceedings the Panel may assume Respondent does not have any right or
legitimate interest in the disputed domain names. See Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Complainant argues that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant submits that Respondent is using the confusing similarity of its domain names with Complainant’s marks to divert Internet users to its website where it receives referral fees for each Internet user who clicks on the links of Complainant’s competitors. The Panel finds that Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant further contends that Respondent is neither commonly known by the <wwwaaa4insurance.com> and <aaa4insurace.com> domain names, nor has Complainant given Respondent permission to use Complainant’s AAA mark. The WHOIS information for the disputed domain names shows Respondent as the registrant of the domain names, and there is no further evidence on record showing, that the Respondent is commonly known by the disputed domain names. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <wwwaaa4insurance.com> and <aaa4insurace.com> domain names under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in other UDRP
proceedings, where the disputed domain names were ordered to be transferred
from Respondent to the respective complainant’s in those cases. See LD Prods., Inc. v.
Dealwave,
FA 1265963 (Nat. Arb. Forum July 14, 2009); see
also Direct Line Ins. V. Dealwave, FA 1247733 (Nat. Arb. Forum March 31,
2009); see also Boston Green Goods, Inc.
v. Dealwave, FA 1115186 (Nat. Arb. Forum January 5, 2008). The Panel finds that Respondent has engaged
in a pattern of bad faith registration and use pursuant to Policy ¶
4(b)(ii). See Sony Kabushiki Kaisha v.
Anderson, FA 198809 (Nat. Arb. Forum Nov.
20, 2003) (finding a pattern of registering domain names in bad faith pursuant
to Policy ¶ 4(b)(ii) when the respondent previously registered domain names
incorporating well-known third party trademarks); see also Calvin Klein,
Inc. v. Spanno Indus., FA 95283 (Nat. Arb. Forum Aug. 21, 2000) (finding
that the respondent has registered numerous domain names containing sexual
references and domain names which are confusingly similar to third party
trademarks; which points to a pattern of conduct on the part of the respondent,
revealing that the respondent is registering domain names in order to prevent
trademark owners from reflecting their marks in corresponding domain names).
Complainant argues that Respondent’s use of the <wwwaaa4insurance.com> and <aaa4insurace.com>
domain names to attract Internet users to its websites for commercial gain
disrupts Complainant’s online insurance and automotive business and is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel finds that Respondent’s
registration and use of the disputed domain names constitutes bad faith because
Respondent’s disputed domain names interferes with and disrupts Complainant’s
online business. See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further alleges that Respondent is using the <wwwaaa4insurance.com> and <aaa4insurace.com> domain names to intentionally divert Internet users to Respondent’s website that displays third party links to competing businesses and websites. In this case the Panel presumes that Respondent is collecting click-through fees and is attempting to profit by creating a likelihood of confusion between the Complainant’s AAA mark and the confusingly similar disputed domain names. The Panel finds that Respondent’s use to divert Internet users to the websites of Complainant’s competitors for financial gain is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
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 <wwwaaa4insurance.com> and <aaa4insurace.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 2, 2010
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