United Services Automobile Association v. Kevin Wall
Claim Number: FA1302001486356
Complainant is United Services Automobile Association (“Complainant”), represented by Manuel Rivera of United Services Automobile Association, Texas, USA. Respondent is Kevin Wall (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usaabenefits.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2013; the National Arbitration Forum received payment on February 21, 2013.
On February 21, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <usaabenefits.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2013 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@usaabenefits.com. Also on February 27, 2013, 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 March 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <usaabenefits.com> domain name is confusingly similar to Complainant’s USAA mark.
2. Respondent does not have any rights or legitimate interests in the <usaabenefits.com> domain name.
3. Respondent registered and used the <usaabenefits.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant began using the USAA mark in 1927 for insurance services, and owns several trademark registrations registered with the U.S. Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,712,134, issued May 15, 1927) for the USAA mark. Complainant has also been using the <ussa.com> domain name to conduct business since 1994.
Respondent uses the <usaabenefits.com> domain name for a commercial pay-per-click website displaying search categories relating to Complainant’s business.
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.”).
The Panel finds that Complainant has rights in its USAA mark pursuant to Policy ¶ 4(a)(i), based on its registration with the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <usaabenefits.com> domain name is confusingly similar to Complainant’s USAA mark, as it merely adds the descriptive word “benefits,” and the gTLD “.com.” These changes are insufficient to distinguish the disputed domain name from Complainant’s mark, particularly when the word “benefits” directly refers to Complainant’s business. See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Selavy Media, (NAF FA0608000781838) (finding the domain name <toshibatoner.com> confusingly similar to complainant’s TOSHIBA mark because “the mere addition of a term describing an aspect of complainant’s business, namely printers and related accessories, is not a distinguishing difference.”); see also Trip Network Inc. v. Alviera, FA 914943 (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy paragraph 4(a)(i) analysis).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <usaabenefits.com> domain name. The WHOIS record lists “Kevin Wall” as the registrant, which bears no resemblance to the disputed domain name. Complainant states that it has not authorized Respondent to use its USAA mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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).
Complainant argues that Respondent’s registration and use of the disputed domain name to provide links to competing companies does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Verizon Trademark Services v. NA a/k/a NA DomainDevelopments.com, (NAF FA0512000616307), where the panel found respondent’s use of the domain name <verizoncenter.com> for a website featuring links to competing services and products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent has not shown rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <usaabenefits.com> domain name to intentionally divert Internet users looking for Complainant to Respondent’s website, where Respondent likely profits from click-through fees. This constitutes bad faith under Policy ¶ 4(b)(iv). See IndyMac Bank v. Unasi , (NAF FA0507000514785) (respondent’s use of the disputed domain names for various commercial websites using a series of hyperlinks for which respondent presumably receives referral fees constitutes bad faith).
Respondent uses the disputed domain name for a website featuring links to third parties that compete with Complainant. This also constitutes bad faith under Policy ¶ 4(b)(iii), as it disrupts Complainant’s business. See DaimlerChrysler v. Kentech, (NAF FA0501000410056) (respondent’s use of the domain name for websites displaying links to complainant’s competitors constitutes bad faith); see also TM Acquisition v. Lam, (NAF FA0405000280499) (respondent’s use of the disputed domain name for a commercial web directory website linking users to competing services constitutes bad faith under Section 4(b)(iii)).
Complainant argues that Respondent had knowledge of Complainant’s USAA mark because Respondent’s website displays services relating to Complainant’s business. The Panel agrees and finds that this is additional evidence of Respondent’s bad faith. See IndyMac Bank, F.S.B. v. Jason U Carpenter d/b/a Jason U Internet Inc, (NAF FA0505000474818) (respondent’s registration of the domain names constitutes bad faith because he had knowledge of complainant’s marks as shown by respondent’s pay-per-click website relating to complainant’s business).
The Panel finds that 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 <usaabenefits.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 6, 2013
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