United Services Automobile Association v. I S / ICS INC
Claim Number: FA1807001798641
Complainant is United Services Automobile Association (“Complainant”), represented by Manuel Rivera of United Services Automobile Association, Texas, USA. Respondent is I S / ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mydesktopusaa.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2018; the Forum received payment on July 26, 2018.
On July 26, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mydesktopusaa.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 July 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2018 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@mydesktopusaa.com. Also on July 27, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant, United Services Automobile Association (“USAA”), is a Fortune 200 financial services company that has approximately 7,500,000 members, all of whom have or have had a direct or familial connection to the United States Armed Forces, and over half of whom have served in the military. Complainant has rights in the USAA mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 806,520, registered Mar. 29, 1965). The <mydesktopusaa.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s USAA mark, and is only differentiated by the addition of the generic term “my desktop” and a generic top-level domain (“gTLD”). Furthermore, Complainant’s operating systems use the domain <mydesktop.usaa.com>
Respondent lacks rights and legitimate interests in the <mydesktopusaa.com> domain name. Respondent is not authorized to use Complainant’s USAA mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name in furtherance of a phishing scheme to steal internet users’ financial and personal information.
Respondent registered and uses the <mydesktopusaa.com> domain name in bad faith. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the USAA mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <mydesktopusaa.com>domain name.
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(f), 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 (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 claims to have rights in the USAA mark based upon its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registration for the USAA mark (e.g., Reg. No. 806,520, registered Mar. 29, 1965). The Panel finds that Complainant has sufficiently demonstrated its rights in the USAA mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mydesktopusaa.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the USAA mark while adding a generic term and a gTLD. The addition of a generic phrase and a gTLD does not sufficiently distinguish a disputed domain name from a complainant’s mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Respondent uses Complainant’s USAA mark in its entirety, adds the generic phrase “my desktop,” and incorporates the “.com” gTLD. The Panel finds that Respondent’s <mydesktopusaa.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <mydesktopusaa.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the USAA mark. Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may support a finding that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies Respondent as “I S / ICS Inc.” Furthermore, no information of the record indicates that Respondent was authorized to use the Complainant’s USAA mark. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges the Respondent fails to use the <mydesktopusaa.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses the disputed domain name in furtherance of a phishing scam by redirecting users to websites that steal their financial and personal information. Using a domain name to conduct a phishing scheme to obtain internet users’ personal information does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant provides a screenshot of the <mydesktopusaa.com> domain name which resolves to a website that directs users to provide login credentials. Complainant argues Respondent uses the disputed domain name to procure users’ personal and financial information by asking for login credentials. The Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). The Panel finds that Respondent lacks rights and legitimate interests in respect of the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant claims that Respondent registered and uses the <mydesktopusaa.com> domain in bad faith. Specifically, Complainant contends Respondent uses the disputed domain name to redirect internet users to websites that steal their personal and financial information. Using a domain name to steal internet users’ personal and financial information is evidence of bad faith under Policy ¶ 4(a)(iii). See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.”); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant provides a screenshot of the disputed domain name’s landing page. The landing page displays a window to provide a user-name and a password. Complainant contends Respondent is attempting to obtain users’ personal and financial information through a phishing scheme by asking users’ to provide login information. The Panel finds, from Complainant’s uncontested allegations and evidence, that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the USAA mark prior to registering the <mydesktopusaa.com> domain name. Constructive notice of a complainant’s mark is insufficient for a finding of bad faith, however actual knowledge of a complainant’s mark is evidence of bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant claims that due to Respondent’s use of the USAA mark to phish for internet user’s personal and financial information, Respondent had actual knowledge of the USAA mark. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration and finds bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <mydesktopusaa.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 27, 2018
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