NAF panel denies complaint

Recently, a National Arbitration Forum (NAF) panel refused to order the transfer of the domain name

By Ryan Sadler, Legal Team

Recently, a National Arbitration Forum (NAF) panel refused to order the transfer of the domain name to the American Automobile Association Inc (AAA). This past July, AAA filed a complaint under the World Intellectual Property Organization’s Uniform Domain Name Dispute Resolution Policy (UDRP) to gain control of the domain In order to be successful under the UDRP, the complainant must prove that the domain name is identical or confusingly similar to its trademark; the domain owner has no rights or legitimate interests with respect to the domain name; and the domain name has been registered and is being used in bad faith.

AAA argued that its holds valid trademark rights in the ”AAA” mark (which has been used in commerce in the United States since 1902), and that the domain is identical to its trademark. The complaint further alleged that the domain owner lacked any legitimate interest in, and that the domain was registered with bad faith intent to capitalize on AAA’s trademark. Despite finding the first two elements in favor of AAA, the dispute came down to the third, and usually most important prong, bad faith. The panel stated that “bad faith is at its core a question of intent,” and they found the insufficient evidence to prove that the domain owner had acted in bad faith when registering the domain. The panel expressly found that the domain had several other purposes other than its use as the AAA trademark. These reasons included, bond ratings, battery size, shoe widths, and as an acronym for numerous third-party organizations. The panel further cited that the domain, which was parked, was not displaying any advertisements that were related to the goods or services associated with AAA.

In the end, this decision should be viewed as an encouraging victory for domain owners everywhere. However, it should also serve as a reminder for Sedo users who possess domains that may be acronyms for trademarked products or services to be diligent and not park these domains with ads that may reference goods or services associated with that of the trademark holder. In this instance, had the domain owner parked with ads that referenced AAA, the panel would have likely ruled differently on the question of bad faith, and subsequently ordered the domain to be transferred.