Generic Top Level Domain Name (gTLD) Decisions

Complainant is American Automobile Association, Inc., Heathrow, FL, USA ("Complainant") represented by Anessa Owen Kramer, of Brooks & Kushman P.C. Respondent is Motown Insurance, Inc., Waterford, MI, USA ("Respondent").

The domain names at issue are "aaamich.net" and "aaamich.org" registered with Network Solutions.

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.

John J. Upchurch as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 22, 2001; the Forum received a hard copy of the Complaint on May 25, 2001.

On May 23, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names "aaamich.net" and "aaamich.org" are registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 May 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 18, 2001 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 mailto:postmaster@ and postmaster@aaamich.org by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 the Respondent to the Complainant.

A. Complainant

Complainant makes the following arguments:

B. Respondent

Respondent has not responded.

AAA is a national non-profit network of automobile clubs engaged in the business of providing automobile, homeowners, and life insurance, emergency road assistance, travel assistance, lobbying activities, and educational services to its members. AAA has over 43 million members nationwide.

AAA began in 1902 when nine individual automobile clubs joined together in Chicago, Illinois as the American Automobile Association. Today, the national organization of AAA has 82 smaller automobile club affiliates.

AAA Michigan is one such automobile club. Incorporated in 1916 as a Michigan non-profit corporation, AAA Michigan, itself and through its related companies, provide automobile, homeowners, and life insurance, as well as a wide range of travel services, emergency roadside assistance, and educational services to members primarily located in the state of Michigan. AAA Michigan has over 1.7 million members today and has more than 1.5 million automobile insurance policies in effect.

AAA owns a number of United States trademark registrations for the AAA mark and marks incorporating "AAA", including the following:

AAA’s trademark rights in the mark AAA and variations thereof, based on its trademark filings and common law rights acquired through use of the AAA mark and trade name, directly and by its licensees, long predate the registration of the domain names by Respondent.

AAA Michigan has operated under the AAA MICHIGAN name and service mark, and has advertised and promoted itself in Michigan as "AAA Michigan," for at least 14 years. Michigan customers who purchase insurance services through AAA Michigan receive proof of insurance papers and invoices bearing the AAA MICHIGAN name and mark. Michigan consumers who join the AAA Roadside Assistance Club receive membership cards identifying the club as "AAA Michigan." The cards provide a customer service number of 1-800-AAA-MICH. AAA Michigan members also receive a monthly copy of its Michigan Living magazine, which has a circulation of more than 1 million. This magazine bears the AAA MICHIGAN mark throughout, including on the cover. It also contains several references to AAA Michigan’s AAAMICH.COM domain name and website, and its 1-800-AAA-MICH telephone number.

AAA Michigan also owns the domain name <aaamich.com>, which it targets to its Michigan members. AAA Michigan registered the <aaamich.com> domain name with NSI on January 2, 1996.

Respondent registered "aaamich.net" and "aaamich.org" with NSI on October 21, 2000.

When users type either of Respondent’s Domain Names into their Internet browser, they are taken directly to a website promoting insurance services, including automobile, life, health, and homeowners insurance. The website bears a promotional banner for "Motown Insurance Agency, Inc." and provides quotes for insurance online. The site states that it serves the "Metro Detroit area" and provides a Michigan address. Respondent states on the "aaamich.net" and "aaamich.org" websites that "we can beat auto insurance rates from . . . AAA Michigan . . ."

At no time has Complainant authorized Respondent to register either of the domain names or use Complainant’s marks.

On April 20, 2001, Complainant sent a cease and desist letter to Respondent requesting that Respondent immediately cease and desist use of the domain names for insurance services, and that the names be transferred to AAA Michigan. Although Complainant requested Respondent’s response by April 30, 2001, to date, it has received no response.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Based on its longstanding exclusive and continuous use of the name and mark AAA MICHIGAN, Complainant owns common law trademark rights in the AAA MICHIGAN service mark for insurance services, travel services, automobile assistance and repair services, and other services provided under the AAA MICHIGAN service mark. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require "that a trademark be registered by a governmental authority for such rights to exist").

Respondent’s domain names are confusingly similar to Complainant’s AAA MICHIGAN mark. Abbreviating the word "Michigan" to "mich" does not create a distinct and separate mark under which Respondent has rights. See Minnesota State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).

Thus, Complainant has satisfied the burden set forth in Policy ¶ 4(a)(i).

Respondent uses the domain names to intentionally attract, for commercial gain, Internet users to its websites by taking advantage of users who mistakenly type .NET or .ORG when searching for AAA Michigan on the Internet. This is not a bona fide use of the domain names as required by Policy ¶ 4(c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark. Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).

Given Complainant’s established use of the AAA MICHIGAN mark, Respondent cannot claim to be commonly known by the AAAMICH mark. Policy ¶ 4(c)(ii).

Given the commercial nature of the website connected to the domain names, Respondent also cannot claim to be using the domain name in connection with a legitimate or fair purpose. Policy ¶ 4(c)(iii).

The Panel concludes that Respondent registered the domain names to take advantage of Complainant’s reputation and goodwill and the AAA Marks. Therefore, the Panel determines that Respondent has no rights or legitimate interests in the domain name in dispute. Complainant has satisfied the burden set forth in Policy ¶ 4(a)(ii).

Respondent relies upon user confusion, by diverting Internet users attempting to reach Complainant’s website to a site that is designed to sell insurance services, thereby trading on the goodwill of the well-known AAA Marks and name for Respondent’s financial gain. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the UDRP. See MathForum.com, LLC v. Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a math-related website run by the Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website).

Further, such use and registration has the primary purpose and effect of disrupting Complainant’s business. Given that Respondent’s business competes with Complainant’s business, registration and use of the disputed domain names constitutes bad faith under paragraph 4(b)(iii) of the UDRP. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

Therefore, the Panel concludes that Complainant has satisfied the burden set forth in Policy ¶ 4(a)(iii).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names "aaamich.net" and "aaamich.org" be transferred from the Respondent to the Complainant.