ORLANDO, Fla., Oct. 21 /PRNewswire-USNewswire/ -- 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.
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