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Generic Top Level Domain Name (gTLD) Decisions |
American Automobile Association Inc. v.
NordNet
Claim Number: FA0204000112438
Complainant
is American Automobile Association Inc.,
Heathrow, FL, USA (“Complainant”)
Kristina Rosette, of Covington & Burling. Respondent is NordNet, Croix, FRANCE (“Respondent”).
The
domain name at issue is <aaa.biz>,
registered with Nordnet.
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.
James
A. Crary as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on
May 2, 2002.
On
May 7, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 28,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
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 17 2002, pursuant to STOP Rule 6(b), the Forum
appointed James A. Crary as
the single 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 STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the
Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response
from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<aaa.biz> domain name is identical to Complainant's AAA mark.
Respondent
has no rights or legitimate interests in the <aaa.biz> domain
name.
Respondent
registered the <aaa.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
Complainant has used the AAA mark to
identify its travel information-related services since 1902. Complainant registered its mark with the
United States Patent and Trademark Office as Registration Numbers 703,556 and
829,265. Complainant
also owns seventy-five trademark registrations of its AAA
mark in forty-five countries throughout the world, including France and
other
European countries. Complainant
currently spends over $3 million annually to promote its non-profit
services. Complainant is the registrant
of <aaa.com> and operates a website at that domain name to promote its
services.
Respondent registered the disputed domain
name on March 27, 2002. Complainant’s
investigation has not found any trademark or service marks for AAA owned by
Respondent. Respondent is not a
licensee of Complainant.
Paragraph 15(a) of the STOP 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 STOP Rules
and draw such inferences it considers appropriate
pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the 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.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established that it has rights to its AAA mark through registration in the
United States and throughout the world.
Respondent’s <aaa.biz> domain name is identical to
Complainant’s AAA mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See 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”).
Respondent has not come forward and there
is no evidence on record to establish that Respondent has a trademark or
service mark for
AAA or <aaa.biz>. Therefore Respondent has not established that it has rights or
legitimate interests in the disputed domain name under STOP Policy
¶
4(c)(i). See Nat’l Acad. Of
Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb.
11, 2002) (finding that, because Respondent did not come forward with a
Response, the Panel could
infer that it had no trademark or service marks
identical to <grammy.biz> and therefore had no rights or legitimate
interests
in the domain name).
Based on the fame of Complainant’s AAA
mark it can be inferred that any intended use by Respondent of the disputed
domain is intended
to attract Complainant’s customers to Respondent’s
website. The use of Complainant’s
trademark to attract Complainant’s customers to Respondent’s website is not
considered to be a bona fide
offering of goods or services pursuant to STOP
Policy ¶ 4(c)(ii). See William L.
Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21,
2002) (finding the Respondent’s
“intent to trade [on] the goodwill of Complainant’s mark, by attracting
Internet users confused as to the
likely affiliation between Complainant and
Respondent’s website” indicated the Respondent had no rights or legitimate
interests pursuant
to STOP Policy ¶ 4(c)(ii)); see also Credit Suisse Group
o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb.
25, 2002) (“The use of another's trademark to attract users to Respondent's
domain is not considered
to be a bona fide offering of goods or services
pursuant to STOP Policy ¶ 4(c)(ii)”).
There is no evidence, and Respondent has
not come forward to establish that it is commonly known as AAA or <aaa.biz>. Therefore, Respondent has not established
any rights or legitimate interests in the disputed domain name pursuant to STOP
Policy ¶
4(c)(iii). See Great
S. Wood Pres., Inc. v. TFA Assocs.,
FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not
commonly known by the domain name <greatsouthernwood.com>
where
Respondent linked the domain name to <bestoftheweb.com>); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in domain name when Respondent is not known
by the mark).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Based on the STOP IP Claim procedure
Respondent received actual notice of Complainant’s rights in the AAA mark when
it registered
<aaa.biz>.
Therefore Respondent’s registration of the disputed domain name was in
bad faith. See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was
on notice of Complainant’s rights in PAINT.BIZ when it registered the
disputed
domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed
domain name despite this notice when Respondent had no right or legitimate
interest in the
domain name is evidence of bad faith”); see also Gene
Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that
the unique nature of the STOP Policy and the notice given to Respondent
regarding
existing IP Claims identical to its chosen domain name precluded good
faith registration of <genelogic.biz> when Respondent
registered it with
“full knowledge that his intended business use of this domain name was in
direct conflict with a registered trademark
of a known competitor in exactly
the same field of business”).
Based on the fame of Complainant’s AAA
mark it can be inferred that Respondent registered the disputed domain name in
order to create
a likelihood of confusion as to the source, sponsorship, and
affiliation of <aaa.biz> for its own commercial gain. The registration of a domain name identical
to Complainant’s mark for Respondent’s commercial gain is evidence of bad faith
registration
pursuant to STOP Policy ¶ 4(b)(iv). See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan.
31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name
was identical to the
Complainant’s FLUOR mark, Internet users would likely
believe an affiliation between the Respondent and Complainant); see also
Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum
Jan. 31, 2002) (finding registration of a domain name identical to
Complainant’s mark to be in bad faith
under STOP Policy ¶ 4(b)(iv) when use of
the domain name would likely cause confusion as to the affiliation between
Respondent and
Complainant).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall
be hereby granted.
Accordingly, it is Ordered that the
domain name <aaa.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
James A. Crary, Panelist
Dated: June 21, 2002
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