In the recent decision of The American Automobile Association, Inc. v. Zag Media Corp. C/o Whois Privacy Services (Nat. Arb. Forum 1226952, November 13, 2008), a single member Panel was faced with a dispute over www.aaacars.com. Complainant is the owner of the trademark AAA with rights dating back to 1903 for automobile association services rendered to motor vehicles, motorists and travelers. Complainant owns and operates several domains including www.aaa.com, www.aaaautos.com, www.aaaautobuyer.com, www.aaaautosales.com, www.aaacarprices.com, and www.aaausedautos.com.
The identity of Respondent was not as clear. Zag Media Corp. is a “proxy service” whereby it registers domain names in its own name on behalf of its customers. Zag Media then used a privacy service to hide the publication of the Registrant data. Complainant contends that the disputed web site resolved to a parked page with sponsored links which generate click-through revenue for the domain owner. Respondent, Zag Media attempted to distinguish itself from the actual customer/domain owner, but refused to identify who that customer was. However, Respondent explains that the customer/domain owner had plans to develop the domain for high quality used car auctions.
In reviewing the procedural issue of who the proper Respondent was, the Panel found Zag Media was the proper party, since they were listed in the Whois registration information. The Panel then reviewed the three prong test set up in accordance with ICANN/UDRP policies. The Panel found that the domain was confusingly similar to Complainant’s mark, noting that the additional word “cars” to the “aaa” evokes Complainant’s automobile and travel related services and products.
Moving onto the next prong, whether or not the Respondent had any rights or legitimate interests, the Panel made an interesting observation:
In seeking to demonstrate that it has rights or legitimate interests in the disputed domain name, Respondent, Zag Media Corp. c/o Whois Privacy Services, finds itself in a dilemma. On the one hand, it registered the domain name in its own name, acting as a privacy shield on behalf of the person or entity which it calls the “domain owner.” As agent, Respondent has neither rights nor legitimate interests in the domain name of the kind that are relevant in this proceeding. Any such rights or interests belong to the unidentified principal on whose behalf Respondent acted in registering the domain name. Respondent’s rights or interests as registrant consequent upon mere compliance with the requirements for registration are of no consequence in a proceeding under the Policy. On the other hand, Respondent seeks to argue that the “domain owner,” whose identity it has studiously failed to disclose, has rights or legitimate interests in the domain name by reason of its plans to use and its actual use of the domain name prior to notice of this dispute. However, the only rights and interests that are relevant in this proceeding are those of Respondent, being the registrant of the domain name at the time of the filing of the Complaint. For this reason alone, the Panel finds that Respondent has failed to discharge the shifted onus and that Complainant has established this element of its case.
The Panel then moved onto the last prong, whether or not the domain was registered and used in bad faith. The Panel explained that despite Respondent’s assertion that it was just an agent of the real domain owner, that an agent is still liable of an undisclosed principal. However, the Panel noted that Respondent’s customer/domain owner, was more likely than not to have had actual knowledge of Complainant’s AAA trademark, creating a finding of bad faith. The Panel went further explaining other reasons for a finding of bad faith:
Although proxy registration is not necessarily a sign of illegitimate purpose, the concealment provided by proxy registration can be indicative of bad faith registration and use and can be abused by cybersquatters. Whether the purpose of the customer in using a proxy service be innocent or guilty, for the actual registrant (the proxy service provider) to conceal the identity of its customer in the face of a UDRP complaint, as Respondent has done here, is to obstruct the UDRP system. In this Panel’s opinion, such concealment amounts to bad faith on the part of the proxy service provider.
Ultimately, the Panel granted the TRANSFER of the domain.
