United Services Automobile Association v. Bek Seung Beum
Claim Number: FA0905001261550
Complainant is United
Services Automobile Association (“Complainant”), represented by Julia A. Matheson, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <usaabank.com>, registered with CyDentity, Inc. d/b/a CyPack.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 8, 2009. The Complaint was submitted in both Korean and English.
On May 7, 2009, CyDentity, Inc. d/b/a CyPack.com confirmed by e-mail to the National Arbitration Forum that the <usaabank.com> domain name is registered with CyDentity, Inc. d/b/a CyPack.com and that Respondent is the current registrant of the name. CyDentity, Inc. d/b/a CyPack.com has verified that Respondent is bound by the CyDentity, Inc. d/b/a CyPack.com 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 May 11, 2009, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 2009 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@usaabank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <usaabank.com> domain name is confusingly similar to Complainant’s USAA mark.
2. Respondent does not have any rights or legitimate interests in the <usaabank.com> domain name.
3. Respondent registered and used the <usaabank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Services Automobile Association, is the owner of its USAA mark, which has been registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,590,157 issued July 17, 1989). Complainant uses the USAA mark in connection with its financial and banking services.
Respondent registered the <usaabank.com> domain name on March 17, 2006. Respondent is using the disputed domain name to resolve to a website containing commercial click-through links, which further resolve to the third-party websites of Complainant’s competitors.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel concludes that Complainant has established rights
in its USAA mark through registration of the mark with the USPTO pursuant to
Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <usaabank.com> domain name is confusingly similar to its USAA mark. The disputed domain name incorporates Complainant’s USAA mark in its entirety, with the additions of the descriptive term “bank” and the generic top-level domain “.com.” The Panel concludes that the addition of the descriptive term “bank,” which is descriptive of Complainant’s business, fails to alleviate the confusing similarity between Complainant’s USAA mark and Respondent’s <usaabank.com> domain name. Additionally, the Panel finds that the affixation of the generic top-level domain “.com” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Thus, the Panel concludes that Respondent’s <usaabank.com> domain name is confusingly similar to Complainant’s USAA mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶4(a)(ii), Complainant must first present a prima facie case that Respondent lacks right and legitimate interests in the disputed domain names, and then the burden shifts to Respondent to show that it does have rights or legitimate interests. The Panel concludes that Complainant has satisfied its prima facie case in these proceedings. Respondent has failed to respond to the Complaint. From this failure, the Panel may presume that Respondent lacks any rights or legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel now chooses to consider the evidence in the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not authorized to use its USAA mark. The WHOIS information lists Respondent as “Bek Seung Beum,” which suggests that Respondent is not commonly known by the <usaabank.com> domain name. The Panel concludes that the WHOIS information, together with other information in the record, allows the conclusion that Respondent is not commonly known by the <usaabank.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Therefore, the Panel finds that Respondent is not commonly known by the <usaabank.com> domain name under Policy ¶ 4(c)(ii).
The disputed domain name is being used to resolve to a website containing click-through advertisements and links, which further resolve to websites of Complainant’s competitors. The Panel presumes that Respondent is profiting from such use and finds that it does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is engaged in bad faith registration and use under Policy ¶ 4(b)(iii). The Panel finds that the use of a confusingly similar domain name, which resolves to a website containing click-through links to websites of Complainant’s competitors likely disrupts Complainant’s business. Thus, the Panel concludes that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further alleges that bad faith registration and
use under Policy ¶ 4(b)(iv) can be inferred based on Respondent’s use of a
confusingly similar domain name to attract Internet users to Respondent’s website.
The Panel presumes that Respondent is profiting from such use. See T-Mobile
USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv));
see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel concludes that
Respondent has engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iv).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usaabank.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 23, 2009
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