United Services Automobile Association v. Dale Hart
Claim Number: FA1402001542903
Complainant is United Services Automobile Association (“Complainant”), represented by Manuel Rivera of United Services Automobile Association, Texas, USA. Respondent is the party that actually registered the at-issue domain names, Dale Hart is the nominal respondent, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <securedmail-usaa.com>, <usaa-securemail.com>, <usaa-secured.com>, and <secured-usaa.com>, registered with ENOM, INC..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2014; the National Arbitration Forum received payment on February 10, 2014.
On February 10, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <securedmail-usaa.com>, <usaa-securemail.com>, <usaa-secured.com>, and <secured-usaa.com> domain names are registered with ENOM, INC. and that Respondent is the current registrant of the names. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2014 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@securedmail-usaa.com, postmaster@usaa-securemail.com, postmaster@usaa-secured.com, and postmaster@secured-usaa.com. Also on February 11, 2014, 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 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant offers its members an array of services and products primarily relating to the financial and insurance industries. All of Complainant’s members have or have had a direct or familial connection to the United States Armed Forces. Complainant has made significant effort to promote its services under the USAA mark such that the mark has gained extensive notoriety and recognition.
Respondent’s infringing activities:
Complainant owns the USAA mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,590,157, registered April 3, 1990).
The <securedmail-usaa.com>, <usaa-securemail.com>, <usaa-secured.com>, and <secured-usaa.com> domain names are confusingly similar to the USAA mark. The terms “secure”, “secured”, and “mail” are generic and do not distinguish the domain name from the mark, especially because the terms relate to Complainant’s services and online security protection. Further, the hyphen and generic top-level domain name are similarly insufficient to negate the confusing similarity.
Respondent is not commonly known by the disputed domain names as demonstrated by the WHOIS information. Further, Complainant has not authorized Respondent to use the USAA mark. Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent is using the disputed domain names in connection with a phishing scheme designed to confuse Internet users in hopes of obtaining user’s personal and financial information.
Respondent had actual knowledge of Complainant’s rights in the USAA mark at the time Respondent registered the disputed domain names, which demonstrates Respondent’s bad faith. Respondent’s emails and websites display services relating to Complainant’s business in an effort to commit fraud. Respondent uses the domain names in an attempt to acquire sensitive financial information such as user names, passwords, and credit card numbers through a phishing scheme.
Respondent registered the <usaa-secured.com> on October 21, 2013, and the <securedmail-usaa.com>, <usaa-securemail.com>, and <secured-usaa.com> domain names on October 23, 2013.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Nevertheless, Respondent responded via two emails to the dispute resolution provider. Therein Respondent alleges that he did not register the at-issue domain names and that his identity was misappropriated to register the domain names.
Complainant owns trademark registrations with the USPTO for its USAA mark.
Within the instant decision, “Respondent” refers to the party that actually registered the at-issue domain names.
The named or nominal respondent in this case unequivocally denies that he has registered the at-issue domain names.
Nothing in the record conclusively establishes that the nominal respondent registered the at-issue domain names.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the USAA mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent is using the at-issue domain name in an attempt to acquire sensitive financial information such as user names, passwords, and credit card numbers through a phishing scheme. Respondent distributes emails with the intent to deceive and defraud users by employing confusingly similar domain names and associated websites which are designed to mimic Complainant’s own operating website, or variations thereof.
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.”).
Preliminary Issue: Respondent’s Identity
Via two emails addressed to the dispute resolution provider in response to the Complaint, the nominal respondent Dale Hart claims that he did not register the at-issue domain names. In prior UDRP cases when confronted with a respondent’s claim of identity theft, some panels have redacted personal information regarding the identity of nominal respondent from the decision. See, Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005). See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007). Indeed, Policy ¶4(j) instructs that “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” Notwithstanding those decisions wherein the panel acted to redact the respondent’s personal information, the Panel here takes a different position. Routinely redacting party information, where as in the instant case the only evidence bearing on the identity of the party registering the domain names apart from the registration record itself is a statement from the nominal respondent, encourages a disingenuous similar response from unscrupulous domain name owners as a means of cloaking their identity from publication in predictably adverse UDRP decisions. Instead of redacting the name of the respondent named in the Complaint ostensibly on his say-so, this Panel takes no position as to whether or not the nominal respondent actually registered the domain names or if instead another registered the domain names by misappropriating the nominal respondent’s identity. Therefore, throughout the instant decision the term “Respondent” identifies the party who in-fact registered the at-issue domain names’, whoever that might be.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registrations are sufficient to establish rights in the USAA mark under the Policy. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Furthermore, each of the at-issue domain names contain Complainant’s entire USAA mark, adds the term “secured” or the compound term “securedmail” either before or after the mark separated by a hyphen, and then appends the top level domain name “com” thereto. The terms “secured” and “mail” are generic and do not distinguish the domain name from the mark, especially as the terms suggest Complainant’s services. Likewise, the hyphen and generic top-level domain name are insufficient to distinguish Complainant’s USAA mark from the domain names for the purpose of the Policy. Therefore, the Panel finds that the <securedmail-usaa.com>, <usaa-securemail.com>, <usaa-secured.com>, and <secured-usaa.com> domain names are each confusingly similar to the USAA mark pursuant to Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the at-issue domain name as “Dale Hart.” Additionally, there is no evidence that tends to prove that, notwithstanding the WHOIS record, Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of 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); see also 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).
Additionally, Respondent is using the disputed domain names in connection with a phishing scheme designed to confuse Internet users in hopes of obtaining their personal and financial information. The Respondent uses the domain names somewhat interchangeably in its scam and fraudulent email sent from “USAA <USAA.Web.Services@usaa-securemail.com>" included a link that directs users to a new message from Complainant’s secure message center. Using the domain names in this manner is neither a Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information.”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that the use of a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
As discussed below, multiple circumstances are present from which the Panel concludes that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent had actual knowledge of Complainant’s rights in the USAA mark prior to the time Respondent registered the <securedmail-usaa.com>, <usaa-securemail.com>, <usaa-secured.com>, and <secured-usaa.com> domain names. Such knowledge is shown by Respondent’s e-mails, containing Complainant’s mark, and websites, which reference services relating to Complainant’s business, in an effort to commit fraud. Respondents prior knowledge of Complainant’s trademark indicates Respondent’s bad faith registration pursuant to Policy ¶ (a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Additionally and as mentioned above, Respondent uses the at-issue domain names in connection with an effort to acquire sensitive financial information such as user names, passwords, and credit card numbers. Respondent’s use of the at-issue domain names in connection with a this phishing scheme constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that a Respondent’s use of a disputed domain name as an e-mail address to pass itself off as a UDRP complainant in a phishing scheme is evidence of bad faith registration and use); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <securedmail-usaa.com>, <usaa-securemail.com>, <usaa-secured.com>, and <secured-usaa.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 11, 2014
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