AAA Captures Important AAA.NET Domain Name in Federal Court Ruling

ORLANDO, Fla., Oct. 21, 2009, A federal court in Pennsylvania has entered a judgment on behalf of The American Automobile Association, Inc. (AAA), transferring the valuable AAA.NET domain name to AAA and permanently enjoining a known cybersquatter from registering, trafficking, or using domain names confusingly similar to AAA's registered trademarks. The Court entered the judgment on October 19, 2009, ending a long-standing dispute over the domain name. The American Automobile Association, Inc. v. James M. Van Johns a/k/a Damian Macafee and QTK Internet, Inc. a/k/a QTK Internet LLC/Name Proxy a/k/a Damian Macafee, Case No. 1:09-CV-00219-SJM.

The consent judgment "negated" and made "of no precedential value" a decision by the National Arbitration Forum ("NAF") in which a split panel had denied AAA's request under the Uniform Domain Name Dispute Resolution Policy (UDRP) for transfer of the AAA.NET domain name. AAA has initiated dozens of UDRP proceedings resulting in the transfer to AAA of more than a hundred identical or confusingly similar domain names, and the split decision concerning AAA.NET had been the only proceeding not resolved in AAA's favor.

Corporate Counsel for AAA, Jim Brehm, who leads AAA's trademark enforcement efforts, called the judgment "an important victory for AAA." Mr. Brehm explained that "AAA has a vigorous trademark enforcement program, and we had never before lost a UDRP proceeding. We felt strongly that the NAF panel reached the wrong decision in this case. The Court's consent judgment negating the NAF decision confirms our belief in the merits of the case and reinforces the strength of AAA's valuable and famous trademarks, and it shows would-be infringers the lengths to which AAA will go to protect its trademark rights."

AAA sought transfer of the AAA.NET domain name after it learned that Defendants James M. Van Johns and QTK Internet, Inc. (a/k/a Damian Macafee) were using the domain name to host a pay-per-click (PPC) advertising website. PPC or click-through advertising is the practice of hosting websites with advertising links tailored to the expected interests of Internet users; often, the links are keyed to the title of the domain name, and the website owner profits every time an Internet user clicks on any of these links. AAA contended that the Defendants used the AAA.NET domain name to profit from its association with AAA.

Although the split NAF panel had held that Defendants' registration and use of the AAA.NET domain name to host a PPC website did not constitute illegitimate or bad faith use, it did so without the benefit of discovery, cross-examination, and other mechanisms for evaluating the credibility of Defendants' statements in that proceeding, including statements by Defendants that they had no control over the content on the website affiliated with AAA.NET. AAA's federal complaint alleged that Defendants were engaged in a willful and elaborate cybersquatting and PPC advertising scheme involving over 1,300 domain names, many of which include other well-known and famous trademarks owned by others. AAA further challenged the veracity of assertions made by Defendants in the NAF proceeding.

AAA was represented by Covington & Burling LLP. Copies of AAA's Complaint and the Court's Consent Order of Judgment can be downloaded here:

  AAA's Complaint
  The Court's Consent Order of Judgment.

As North America's largest motoring and leisure travel organization, AAA provides more than 51 million members with travel, insurance, financial and automotive-related services. Since its founding in 1902, the not-for-profit, fully tax-paying AAA has been a leader and advocate for the safety and security of all travelers. AAA clubs can be visited on the Internet at AAA.com.