United Services Automobile Association v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1206001448272
Complainant is United Services Automobile Association (“Complainant”), represented by Manuel Rivera of United Services Automobile Association, Texas, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <usaaautoinsurancequotes.com>, <autoinsurancequotesusaa.com>, and <payda-loans-usaa.com>, registered with Internet.bs 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2012; the National Arbitration Forum received payment on June 12, 2012.
On June 13, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <usaaautoinsurancequotes.com>, <autoinsurancequotesusaa.com>, and <payda-loans-usaa.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2012 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@usaaautoinsurancequotes.com, postmaster@autoinsurancequotesusaa.com, and postmaster@payda-loans-usaa.com. Also on June 14, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant, United Services Automobile Association, was founded in 1922 in San Antonio, Texas. Since that time, Complainant has expanded from 25 members to 7,500,000 members.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its USAA mark (Reg. No. 1,712,134 registered September 1, 1992), and its USAA.COM mark (Reg. No. 2,355,486 registered June 6, 2000).
3. Complainant offers financial and insurance services through its marks.
4. Respondent’s <usaaautoinsurancequotes.com>, <autoinsurancequotesusaa.com>, and <payda-loans-usaa.com> domain names are confusingly similar to Complainant’s marks.
5. Respondent has no rights or legitimate interests in the disputed domain names.
i. Respondent has not been commonly known by the disputed domain names.
ii. Respondent is using the disputed domain names to operate links directory websites that provide links to competing websites.
6. Respondent has registered and used the disputed domain names in bad faith.
i. Respondent has violated Policy ¶ 4(b)(iii) by creating websites that feature third-party links to competing websites.
ii. Respondent has violated Policy ¶ 4(b)(iv) by creating confusion as to Complainant’s sponsorship of the disputed domain names for commercial gain.
iii. Respondent had knowledge of Complainant’s rights in the USAA and USAA.COM marks prior to its registration of the disputed domain names because Complainant’s marks are registered and because Respondent’s Web sites display services relating to Complainant’s business and feature links to competitors’ Web sites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the disputed domain names no earlier than March 23, 2012.
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."
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.
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.”).
Complainant offers evidence to show that it owns several trademark registrations with the USPTO, including those for the USAA mark (Reg. No. 1,712,134 registered September 1, 1992), and the USAA.COM mark (Reg. No. 2,355,486 registered June 6, 2000). The Panel finds that Complainant has rights in the USAA and USAA.COM marks under Policy ¶ 4(a)(i) through its trademark holdings with the USPTO, regardless of Respondent’s location. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); 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 further contends that the <usaaautoinsurancequotes.com>, <autoinsurancequotesusaa.com>, and <payda-loans-usaa.com> domain names are confusingly similar to the USAA and USAA.COM marks. Complainant asserts that the disputed domain names add generic and descriptive terms to its mark. The Panel notes that prior panels have found that adding descriptive terms to a mark does not remove a domain name from the realm of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Accordingly, this Panel finds that the <usaaautoinsurancequotes.com> and <autoinsurancequotesusaa.com> domain names are confusingly similar to the USAA and USAA.COM marks under Policy ¶ 4(a)(i), since the addition of the term “auto insurance quotes” in both the <usaaautoinsurancequotes.com> and <autoinsurancequotesusaa.com> domains clearly constitutes the addition of a descriptive phrase relating to Complainant’s services with respect to Complainant’s marks. On the other hand, Complainant does not show or even allege why the term “payda-loans” contained in the domain <payda-loans-usaa.com> is generic or descriptive in relation to Complainant’s services. Thus, Complainant has not satisfied Policy ¶ 4(a)(i) with respect to that domain.
Complainant contends that Respondent is not commonly known by any of the disputed domain names. Complainant points to the WHOIS information, which identifies the domain name registrant as “Fundacion Private Whois,” to show that Respondent is not commonly known by the disputed domain names. The Panel agrees with Complainant and finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also argues that Respondent is using the disputed domain names to divert Internet users to directly competing insurance quote and banking services. The Panel finds that such use of the disputed domain names by Respondent is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that since Complainant’s USAA and USAA.COM marks are registered, and because Respondent’s Web sites display services relating to Complainant’s business and features links to directly competing Web sites, it is apparent that Respondent had knowledge of Complainant’s trademark rights when it registered its domain name.
Complainant contends that Respondent registered and is using the disputed domain names in bad faith because Respondent is using Complainant’s mark to display competing advertising through the disputed domain names. Complainant argues that such use by Respondent disrupts Complainant’s business by diverting Internet users to the Web sites of Complainant’s competitors. The Panel agrees and finds bad faith registration and use under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Having established all three elements required under the ICANN Policy with respect to the domain names <usaaautoinsurancequotes.com> and <autoinsurancequotesusaa.com>, the Panel concludes that relief shall be GRANTED with respect to those domains.
However, as Complainant has not established the first element required under the ICANN Policy with respect to the <payda-loans-usaa.com> domain name, the Panel concludes that relief shall be DENIED with respect to that domain.
Accordingly, it is Ordered that the <usaaautoinsurancequotes.com>, and <autoinsurancequotesusaa.com> domain names be TRANSFERRED from Respondent to Complainant. However, it is Ordered, without prejudice, that the <payda-loans-usaa.com> domain REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: July 25, 2012
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