Aaautorepair.com + 12 more domains

The timeline behind aaautorepair.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION The American Automobile Association, Inc. v. R. MacKinnon d/b/a Prism Vantage Inc. Claim Number: FA0804001173262 PARTIES Complainant is The American Automobile Association, Inc. (“Complainant”), represented by Hope Hamilton, of Covington & Burling LLP, Washington, DC, USA. Respondent is R. MacKinnon d/b/a Prism Vantage Inc. (“Respondent”), Massachusetts, USA. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <aaautorepair.com>, <aaautorepairs.com>, <aaaaautorepair.com>, <aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>, <aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>, <tripleaapprovedautorepair.com> and <tripleaautorepair.com>, registered with Wild West Domains, Inc., and <aaaautorepair.com> and <aaaautorepairs.com>, registered with Godaddy.com, Inc. PANEL 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. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 1, 2008. On April 1, 2008, Wild West Domains, Inc., confirmed by e-mail to the National Arbitration Forum that the <aaautorepair.com>, <aaautorepairs.com>, <aaaaautorepair.com>, <aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>, <aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>, <tripleaapprovedautorepair.com> and <tripleaautorepair.com> domain names are registered with Wild West Domains, Inc., and that the Respondent is the current registrant of the names. Wild West Domains, Inc., has verified that Respondent is bound by the Wild West Domains, Inc., Inc. 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 April 1, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaaautorepair.com> and <aaaautorepairs.com> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 April 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 24, 2008 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@aaautorepair.com, postmaster@aaautorepairs.com, postmaster@aaaautorepair.com, postmaster@aaaautorepairs.com, postmaster@aaaaautorepair.com, postmaster@aaaaautorepairs.com, postmaster@aaapproved.com, postmaster@aaapprovedautorepair.com, postmaster@aautorepair.com, postmaster@aautorepairs.com, postamster@tripleaapproved.com, postmaster@tripleaapprovedautorepair.com and postmaster@tripleaautorepair.com by e-mail. A timely Response was received and determined to be complete on April 21, 2008. On April 29, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS 1. Respondent’s domain names <aaautorepair.com>, <aaautorepairs.com>, <aaaaautorepair.com>, <aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>, <aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>, <tripleaapprovedautorepair.com>, <tripleaautorepair.com>, <aaaautorepair.com> and <aaaautorepairs.com> domain names (the domain names at issue) are confusingly similar to Complainant’s AAA and TRIPLE A marks. 2. Respondent has no rights or legitimate interests in Complainant’s AAA marks. 3. Respondent has registered and used the disputed domain names in bad faith. B. Respondent 1. Respondent denies that the domain names at issue are identical or confusingly similar to Complainants AAA marks. 2. Respondent says that, as an auto repair services business and member of the AAA affiliated auto repair providers, he was entitled to register and use the domain names at issue in connection with his business. 3. Respondent denies that he registered or used the domain names at issue in bad faith. FINDINGS Complainant, The American Automobile Association, Inc. ("AAA"), has exclusive ownership of numerous federal trademark registrations (some of which are incontestable) and common law rights in the United States in the "AAA," "AAA APPROVED," "AAA APPROVED AUTO REPAIR," and "TRIPLE A" marks, all for use in connection with automobile and automobile repair services, among other things (the "AAA" Marks.). Registrations include U.S. Reg. Nos. 829,265; 1,168,790; 1,449,079; 2,158,654; 3,046,904; 3,046,905; 3,162,780; 3,260,840. Complainant also owns numerous domain names incorporating its marks, including <aaa.com>, <aaa.biz>, <aaaapprovedautorepair.com>, and <tripleainfo.com>. AAA has used its AAA trademark in commerce since at least 1902, and has used its AAA APPROVED, TRIPLE A, and AAA APPROVED AUTO REPAIR marks since at least as early as 1910, 1971, and 1975, respectively. It appears that Respondent was recruited to affiliate his auto repair service business with AAA and to become a member of the AAA network of providers. In connection with that affiliation, he was encouraged to advertise with use of the AAA marks and to direct the public’s attention to the <aaa.com> website. Respondent, however, without Complainant’s permission, registered the domain names <aaautorepair.com>, <aaautorepairs.com>, <aaaaautorepair.com>, <aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>, <aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>, <tripleaapprovedautorepair.com>, <tripleaautorepair.com>, <aaaautorepair.com> and <aaaautorepairs.com>. When he failed to terminate use of those domains after demand by Complainant to do so, Respondent was terminated as a AAA afiliated member. Notwithstanding, he continues to maintain websites resolving to the domain names at issue which are in competition with the AAA member network. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” 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. Identical and/or Confusingly Similar Complainant has rights in the AAA APPROVED AUTO REPAIR mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,449,079 issued July 21, 1987). This registration adequately confers rights in the mark for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). The <aaautorepair.com>, <aaautorepairs.com>, <aaaautorepair.com>, <aaaautorepairs.com>, <aaaaautorepair.com>, <aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>, <aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>, <tripleaapprovedautorepair.com> and <tripleaautorepair.com> domain names are confusingly similar to Complainant’s AAA APPROVED AUTO REPAIR mark under Policy ¶ 4(a)(i). The disputed domain names all contain variations of Complainant’s mark, either deleting or modifying a portion of the mark in the disputed domain names. The addition of the generic top-level domain “.com” is irrelevant in the examination of confusing similarity, as all domain names must contain a top-level domain. Thus, the Complainant has satisfied Policy ¶ 4(a)(i). See Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Anheuser – Busch, Inc. v. Holix Inc., FA 979961 (Nat. Arb. Forum June 19, 2007) (“The Panel accepts the consensus view of former panels that for the purposes of testing confusing similarity, the generic top-level domain (“gTLD”), “.com,” is to be ignored.”). Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has made a prima facie case in support of its allegations, and the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Respondent’s WHOIS information identifies Respondent as “R. MacKinnon d/b/a Prism Vantage Inc.” There is no other information in the record indicating that Respondent is commonly known by any of the disputed domain names, or is authorized to use Complainant’s mark. Accordingly Respondent is not commonly known by the disputed domain names under 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Respondent is using the disputed domain names either to redirect Internet users to Respondent’s website, located at the <mac.homestead.com> domain name, or to display hyperlinks to various third-party websites, some of which are in direct competition with Complainant. Neither of these uses constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent had actual knowledge of Complainant’s trade and service marks at the time when the disputed domain names were registered. This knowledge indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb Forum May 23, 2003) (finding that the respondent’s actual knowledge of the complainant’s rights in the ULTRAGUARD mark, inferred from the fact that the respondent was a distributor of the complainant, evidenced that the disputed domain name was registered in bad faith). Respondent’s use of the disputed domain names, either to display Respondent’s business or businesses in competition with Complainant constitutes a disruption of Complainant’s business under 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 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 Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Respondent registered and is using the disputed domain names in an attempt to commercially benefit from the likelihood that Internet users may mistakenly assume that the disputed domain names and resulting websites are associated with Complainant. Accordingly, Respondent is in violation of Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also 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 from click-through fees). Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <aaautorepair.com>, <aaautorepairs.com>, <aaaautorepair.com>, <aaaautorepairs.com>, <aaaaautorepair.com>, <aaaaautorepairs.com>, <aaapproved.com>, <aaapprovedautorepair.com>, <aautorepair.com>, <aautorepairs.com>, <tripleaapproved.com>, <tripleaapprovedautorepair.com> and <tripleaautorepair.com> domain names be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: May 13, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.