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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The American Automobile Association Inc. v. PerkinsPestControl c/o Del Rich and 1 & 1 Internet Inc.

Case No. D2009-1379

1. The Parties

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

The Respondents are PerkinsPestControl c/o Del Rich of Kaysville, Utah, United States of America and 1 &1 Internet, Inc. of Chesterbrook, Pennsylvania, United States of America.

2. The Domain Names and Registrars

Each of the disputed domain names <aaasaver.com>, <aaasavers.com>, <tripleasaver.com>, and <tripleasavers.com> is registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on October 16, 2009. On October 16, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with each of the disputed domain names. On October 19, 2009, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent 1&1 Internet, Inc. had been identified as the registrant of two of the domain names, <aaasaver.com> and <tripleasavers.com>, pursuant to a privacy service offered by the registrar. The registrar further stated that, pursuant to its terms and conditions, the WhoIs record had been updated to reflect that Respondent PerkinsPestControl was the true holder and registrant of those domain names; the registrar also confirmed that Respondent PerkinsPestControl is the registrant of the other two domain names <aaasavers.com> and <tripleasaver.com>, provided contact details, and confirmed other details of its registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent`s default on November 12, 2009.

The Center appointed Debra J. Stanek as the sole panelist in this matter on November 25, 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.

4. Factual Background

Complainant has used the mark AAA in connection with a wide variety of goods and services, including automotive, discount, travel, insurance, and financial products and services. It owns several United States federal trademark registrations for AAA marks, the earliest of which was issued in 1967 for discount purchases and automobile association services, among other things. Its United States federal registrations also include one for the mark TRIPLE A, which issued in 1981.

Each of the disputed domain names were registered in April 2008. It does not appear that any of the domain names is currently active. However, at some point, it appears that each directed visitors to a website at "www.aaasavers.com", which offered a free membership that appeared to include discounts on an array of goods and services, including automobile, insurance, and financial products. The <aaasavers.com> domain name is prominently displayed in a form that emphasizes the letters "AAA".

5. Parties` Contentions

A. Complainant

(1) The disputed domain names are confusingly similar to Complainant`s AAA marks

Complainant has for many years used the mark AAA in connection with a wide variety of goods and services, including automotive, discount, travel, insurance, and financial products and services. It owns several United States federal trademark registrations for AAA marks, including for discount purchases and automobile association services. It also owns registrations for the AAA mark in other countries as well as at common law. Its registrations also include one for the mark TRIPLE A, which issued in 1981.

As a result of its long use and extensive promotion, these marks have become well-known throughout the world.

Each of the disputed domain names is confusingly similar to Complainant`s marks because each incorporates one of Complainant`s marks in its entirety, adding the generic term "savers" or "saver." Here, the generic term relates to a central aspect of Complainant`s business, heightening any confusion.

(2) Respondent has no rights or legitimate interests in respect of any of the domain names

Complainant has not authorized or licensed Respondent to use its marks.

There is no evidence that Respondent is commonly known by any of the disputed domain names. The registration information does not disclose any names that include any of Complainant`s marks. Rather the registrations were under the names PerkinsPestControl and the registrar`s privacy service.

Finally, while it appears that Respondent PerkinsPestControl registered the name "AAASAVERS.COM" as a business entity in Utah – this was not until after it had registered the domain names. In any case, Complainant`s rights in its marks long predate the registration of the domain names.

(3) The disputed domain names were registered and are being used in bad faith

Respondent has registered multiple domain names in order to attract visitors to its website. This use creates a likelihood of confusion. Further, use of the domain names to attract visitors to a site that offers discounts similar or competitive to those offered by Complainant disrupts Complainant`s business, constituting bad faith.

Respondent had constructive notice of Complainant`s trademark rights, based on Complainant registrations in the United States Patent and Trademark Office.

B. Respondent

The Respondent did not reply to the Complainant`s contentions.

6. Discussion and Findings

A. Procedural Matters

(1) Multiple Respondents

The Complaint purports to identify two Respondents. The Rules define respondent as "the holder of a domain-name registration against which a complaint is initiated." See Rules, paragraph 1, s.v. "Respondent." Based on the record, it appears that the Complaint correctly named as Respondent PerkinsPestControl as well as the registrar`s privacy service, which were the registrants of record for each of the domain names at the time that the Complaint was filed. It was only after this proceeding was filed and commenced that the registrar changed the registration records for the <aaasaver.com> and <tripleasavers.com> domains names and identified as the "registrant" the individual who was using its privacy service –PerkinsPestControl.

For the purposes of this proceeding, the Panel considers both the privacy service and PerkinsPestControl, jointly, as proper respondents. However, references to "Respondent" in this decision, means PerkinsPestControl.

(2) Multiple Domain Names

The Complaint also seeks relief as to four domain names. The Rules provide that: "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." See Rule 3(c). Here, the domain names at issue are registered, through the privacy service, to the same entity.

B. Substantive Discussion

In order to prevail, Complainant must prove, as to each of the domain names at issue, that:

(i) The disputed domain name is identical or confusingly similar to Complainant`s mark.

(ii) Respondent has no rights or legitimate interests in respect to the domain name.

(iii) The domain name has been registered and is being used in bad faith.

Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent`s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent`s bad faith registration and use, see Policy, paragraph 4(b).

(1) Identical or Confusingly Similar

Complainant has established its rights in the AAA mark and the TRIPLE A mark by virtue of the evidence of its United States federal trademark registrations as well as the registrations from other countries.

The disputed domain names are not identical to Complainant`s mark. Complainant asserts that the disputed domain names are confusingly similar because they include Complainant`s entire mark. While the Panel agrees that, as a general matter, a domain name is likely to be found confusingly similar to a mark if it incorporates the mark or a variation of the mark, such a finding is not automatic. However, the Panel does agree that here, the addition of the phrase "saver" and "savers" after Complainant`s mark (even absent the spaces, which are not relevant for these purposes), does nothing to effectively differentiate or distinguish the domain name from Complainant`s mark, which remains the dominant portion of the domain name.

Accordingly, the Panel finds that each of the domain names is confusingly similar to a mark in which Complainant has rights.

(2) Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).

Paragraph 4(c) of the Policy sets out the following examples:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It does not appear that Respondent engaged in – or could under the circumstances have engaged in – any legitimate use of any of the domain names. There is no reason to believe, from the WhoIs record or otherwise, that Respondent is or could be known by any of the domain names. It does not appear that Respondent is making a legitimate noncommercial or fair use of any of the domain names.

The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c)(i)-(iii) of the Policy, which the Respondent has not rebutted. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain names.

(3) Bad Faith

Under the Policy, Complainant must establish that each disputed domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):

(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).

(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).

(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).

(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant`s mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).

Complainant`s rights in its marks long predate Respondent`s registration and use of the domain names. Complainant`s rights in its marks are well-established and well-known throughout the United States and in other parts of the world. Given the fame of Complainant`s marks in the United States, where Respondent is located, the Panel believes that it is highly probable that Respondent had actual knowledge of Complainant`s trademark rights at the time he registered the domain names.

Further, the Panel has already concluded that Respondent has no right or legitimate interest in the domain names and that the use of the domain names, (as summarized under "Factual Background" above) was not in connection with a bona fide offering of goods or services.

Under these circumstances, combined with the adverse inferences drawn by Respondent`s failure to respond, the Panel finds that Complainant has established that Respondent has registered and is using the domain names in bad faith.

7. Decision

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, <aaasaver.com>, <aaasavers.com>, <tripleasaver.com>, and <tripleasavers.com> be transferred to the Complainant.


Debra J. Stanek
Sole Panelist

Dated: December 7, 2009

 

Источник информации: https://internet-law.ru/intlaw/udrp/2009/d2009-1379.html

 

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