United Services Automobile Association v. Top Business Names / Domain Administrator
Claim Number: FA1008001338416
Complainant is United
Services Automobile Association (“Complainant”), represented by Manuel Rivera, of United Services
Automobile Association,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <usaaautoloan.com>, registered with Rebel.com Corp.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2010.
On August 10, 2010, Rebel.com Corp confirmed by e-mail to the National Arbitration Forum that the <usaaautoloan.com> domain name is registered with Rebel.com Corp and that Respondent is the current registrant of the name. Rebel.com Corp has verified that Respondent is bound by the Rebel.com Corp 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 August 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 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@usaaautoloan.com by e-mail. Also on August 12, 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 September 14 2010-, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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" 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 <usaaautoloan.com> domain name is confusingly similar to Complainant’s USAA mark.
2. Respondent does not have any rights or legitimate interests in the <usaaautoloan.com> domain name.
3. Respondent registered and used the <usaaautoloan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Services Automobile Association, began operating in 1927. Complainant is commonly referred to as “USAA.” In addition, Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the USAA mark (e.g., Reg. No. 1,712,134 registered September 1, 1992). Complainant uses the USAA mark in connection with its services, including financial and insurance services.
Respondent registered the <usaaautoloan.com> domain name on May 27, 2007. The disputed domain name resolves to a pay-per-click website that displays links relating to Complainant’s business.
Complainant
offers evidence that Respondent has a history of registering domain names that
infringe upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainants. See AB Kinnevik v. Top Bus. Names, D2010-0549 (WIPO Feb. 6, 2010); see also The Am. Auto. Assoc., Inc. v. BWI Domains, Top Bus. Names,
World Idea Bus., D2010-0319 (WIPO Dec. 5, 2010).
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 the USAA mark through its
numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,712,134 registered September 1, 1992). The Panel finds these trademark registrations
sufficiently prove Complainant’s rights in the USAA mark pursuant to Policy ¶
4(a)(i). See AOL
LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding
that where the complainant had submitted evidence of its registration with the
USPTO, “such evidence establishes complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i).”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb.
Forum Oct. 25, 2006) (finding that the complainant had established rights in
the BLOOMBERG mark through registration with the United States Patent and Trademark
Office). Furthermore, the Panel finds
Complainant need not hold registrations with the trademark authority in which
Respondent resides. See Williams-Sonoma,
Inc. v. Fees, FA 937704 (Nat. Arb.
Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has
registered its trademark in the country of the respondent’s residence).
Complainant contends Respondent’s <usaaautoloan.com> domain name is confusingly similar to its USAA mark. Respondent replicates Complainant’s mark in the disputed domain name. Respondent then adds the descriptive terms “auto” and “loan,” which together describe Complainant’s auto loan and/or financial services. Finally, Respondent attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds these additions do not distinguish Respondent’s domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <usaaautoloan.com> domain name is confusingly similar to Complainant’s USAA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must initially make a prima facie case showing that Respondent lacks rights and legitimate interests in the <usaaautoloan.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent failed to submit a Response, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant first asserts that it has not authorized Respondent to use its USAA mark in a domain name. Moreover, Complainant contends the WHOIS information lists “Top Business Names / Domain Administrator” as the registrant of the disputed domain name. The Panel finds this registrant name is not similar to the <usaaautoloan.com> domain name. Thus, the Panel finds Complainant’s assertions combined with the WHOIS information indicates that Respondent is not commonly known by the <usaaautoloan.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Additionally, Complainant alleges that Respondent’s <usaaautoloan.com> domain name resolves to a pay-per-click website that features links to third-party websites, some of which are unrelated to Complainant, as well as those that compete with Complainant’s business. Complainant submits a screen shot of Respondent’s resolving website. The image shows a website that displays links with titles like “Auto Loans,” and “Cheap Auto Insurance.” Based on the evidence in the record, the Panel finds Respondent uses a confusingly similar domain name to resolve to a directory website in order to profit from pay-per-click fees. Accordingly, the Panel finds Respondent does not use the <usaaautoloan.com> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been subject to numerous UDRP proceedings, wherein the disputed domain names were ordered to be transferred from Respondent to the respective complainants in those cases. See AB Kinnevik v. Top Bus. Names, D2010-0549 (WIPO Feb. 6, 2010); see also The Am. Auto. Assoc., Inc. v. BWI Domains, Top Bus. Names, World Idea Bus., D2010-0319 (WIPO Dec. 5, 2010). The Panel finds that Respondent has engaged in a pattern of bad faith registration and use under the Policy ¶ 4(b)(ii). See Arai Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been the subject of numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
In addition, Complainant claims Respondent uses its confusingly similar domain name to redirect Internet users to third-party websites that directly compete with Complainant’s business. The Panel agrees. Therefore, the Panel finds Respondent’s <usaaautoloan.com> domain name disrupts Complainant’s business, which is evidence of bad faith under 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Finally, Complainant alleges Respondent uses the Domain Name to intentionally attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant and
its registered USAA mark as
to the source, sponsorship, affiliation, and/or endorsement of Respondent’s
website. As previously discussed,
Respondent’s domain name is confusingly similar to Complainant’s USAA
mark. Furthermore, Respondent profits
from its use of the disputed domain name through the receipt of pay-per-click
fees. Consequently, based on this
evidence, the Panel finds Respondent has engaged in registration and use in bad
faith under Policy ¶ 4(b)(iv). See
The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
The Panel finds 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 <usaaautoloan.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 16, 2010
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