United Services Automobile Association v. Digi Real Estate Foundation
Claim Number: FA0612000874150
Complainant is United Services Automobile Association (“Complainant”), represented by Carol
Matthews, of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <usaaautomobileinsurance.com>, registered with Pairnic.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2006.
On December 20, 2006, Pairnic confirmed by e-mail to the National Arbitration Forum that the <usaaautomobileinsurance.com> domain name is registered with Pairnic and that Respondent is the current registrant of the name. Pairnic has verified that Respondent is bound by the Pairnic 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 January 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 23, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@usaaautomobileinsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 29, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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 <usaaautomobileinsurance.com> domain name is confusingly similar to Complainant’s USAA mark.
2. Respondent does not have any rights or legitimate interests in the <usaaautomobileinsurance.com> domain name.
3. Respondent registered and used the <usaaautomobileinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Services Automobile Association,
provides financial and insurance services under the USAA mark, including
automobile, property, life and health insurance services. Since 1927, Complainant has continuously used
the USAA mark in connection with these services. More than five million customers utilize
Complainant’s services, predominantly members of the
Respondent registered the <usaaautomobileinsurance.com> domain name on August 27, 2006. Respondent is using the disputed domain name to divert Internet users to a website with links to Complainant’s competitors.
Respondent has been involved in previous UDRP disputes including State Farm Mutual Auto. Ins. Co. v. Digi Real Estate Found., FA 366186 (Nat. Arb. Forum Jan. 20, 2005); State Farm Mutual Auto. Ins. Co. v. Digi Real Estate Found., FA 463105 (Nat. Arb. Forum May. 27, 2005); Customized Servs. Adm’rs v. Digi Real Estate Found., FA 812022 (Nat. Arb. Forum Nov. 20, 2006); and Metro. Life Ins. Co. v. Digi Real Estate Found., FA 812352 (Nat. Arb. Forum Nov. 21, 2006).
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 has established rights in the USAA mark through its registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Respondent’s <usaaautomobileinsurance.com> domain name is confusingly
similar to Complaintant’s mark pursuant to Policy ¶ 4(a)(i) because it
incorporates Complainant’s USAA mark in its entirety and adds the generic terms
“automobile” and “insurance.” Because
Complainant uses its mark in connection with insurance services, including
automobile insurance, the terms have a direct and obvious relationship to
Complainant’s business. The addition of
generic terms to Complainant’s mark, especially terms that bear an obvious
relation to Complainant’s business, does not adequately distinguish
Respondent’s domain name from Complainant’s mark pursuant to the Policy ¶
4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business); see also
PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that
“Respondent does not by adding the common descriptive or generic terms ‘corp’,
‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in
which it has rights or legitimate interests, nor does it alter the underlying
[PG&E] mark held by Complainant”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <usaaautomobileinsurance.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent is using the <usaaautomobileinsurance.com> domain name, which is confusingly similar to Complainant’s USAA mark, to divert Internet users to a website with links to Complainant’s competitors. Such use of a disputed domain name for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent has not answered the Complaint with any information indicating that it is commonly known by the disputed domain name. Complainant has not given Respondent its consent to use its mark in Respondent’s domain name. There is no information in the WHOIS database implying that Respondent is commonly known by the <usaaautomobileinsurance.com> domain name. Therefore, Respondent has not established rights or legitimate interests in the <usaaautomobileinsurance.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been involved in previous disputes in which the panels transferred the disputed domain names to the complainants. Respondent has exhibited a pattern of registering domain names including the marks in which others have rights. The Panel finds that Respondent’s behavior constitutes bad faith Registration and use pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
Respondent’s domain name incorporates Complainant’s mark in its entirety and Respondent’s website contains several links to websites offering products in competition with Complainant. Respondent’s use of Complainant’s mark to divert Internet users to Complainant’s competitors amounts to disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent is using the <usaaautomobileinsurance.com> domain name, which is confusingly similar to Complainant’s USAA mark, to operate a website containing links to Complainant’s competitors. The Panel infers that Respondent receives pay-per-click referral fees for misleading consumers to these websites. Therefore, Respondent is taking commercial advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill of the mark. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
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 <usaaautomobileinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 9, 2007
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