United Services Automobile Association v. Taranga Services Pty Ltd c/o Domain Admin
Claim Number: FA1002001309777
Complainant is United Services Automobile Association (“Complainant”), represented by Manuel
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <usaacreditcard.com>, registered with Moniker.
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 February 24, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On February 25, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <usaacreditcard.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 March 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@usaacreditcard.com. Also on March 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2010, 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <usaacreditcard.com> domain name is confusingly similar to Complainant’s USAA mark.
2. Respondent does not have any rights or legitimate interests in the <usaacreditcard.com> domain name.
3. Respondent registered and used the <usaacreditcard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Services
Automobile Association, holds multiple trademark registrations for its USAA
mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,712,134 issued
September 1, 1992) in connection with banking, financial and insurance
services.
Respondent, Taranga Services Pty Ltd c/o Domain Admin, registered the <usaacreditcard.com> domain name on January 3, 2007. The disputed domain name resolves to a commercial pay-per-click website displaying links, some of which compete with Complainant.
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.
Complainant asserts rights in its USAA mark through its holding of multiple trademark registrations with the USPTO (e.g., Reg. No. 1,712,134 issued September 1, 1992). The Panel finds that Complainant has established rights in the USAA mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <usaacreditcard.com> domain name is confusingly
similar to Complainant’s USAA mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar as it incorporates the entirety of Complainant’s mark, adds
the descriptive term “credit card” and the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the
addition of the descriptive term “credit card” creates a confusing similarity
between the disputed domain name and Complainant’s mark. See
Experian Info. Solutions, Inc. v.
Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several
domain names incorporating the complainant’s entire EXPERIAN mark and merely
adding the term “credit” were confusingly similar to the complainant’s mark); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14,
2004) (“In the view of the Panel, the disputed domain names are confusingly
similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the
AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive,
descriptive and generic terms, some of which describe Complainant’s business.”). The Panel also finds that the addition of a
gTLD to a registered mark is irrelevant in distinguishing a disputed domain
name and a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation
of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
The WHOIS information for the disputed domain name lists the registrant as “Taranga Services Pty Ltd c/o Domain Admin.” Complainant asserts that it has not authorized Respondent to use its USAA mark. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain name resolves to a commercial pay-per-click
website displaying links, some of which compete with Complainant. The Panel finds that Respondent is not using
the disputed domain name in connection with a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i) or making a legitimate noncommercial or fair use of the disputed domain
name pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the
respondent was not using the <tesco-finance.com> domain name in
connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use by maintaining a web page with misleading
links to the complainant’s competitors in the financial services industry); see
also Persohn v. Lim, FA 874447 (Nat.
Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed
domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by redirecting Internet users to a commercial search engine website with
links to multiple websites that may be of interest to the complainant’s
customers and presumably earning “click-through fees” in the process).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain name to link Internet users to websites featuring advertisements of Complainant’s competitors constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also 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)).
The Panel finds that Respondent is using the disputed domain
name to intentionally attract Internet users and profit through the receipt of
pay-per-click fees. The Panel finds that
Respondent’s use of the disputed domain name is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usaacreditcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 12, 2010
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