United Services Automobile Association v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1907001852596
Complainant is United Services Automobile Association (“Complainant”), represented by United Services Automobile Association, Texas, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <usaasafepilot.com> and <usaaathome.com> (‘the Domain Names’) registered with Dynadot, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2019; the Forum received payment on July 18, 2019.
On July 19, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <usaasafepilot.com> and <usaaathome.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2019 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@usaasafepilot.com, postmaster@usaaathome.com. Also on July 22, 2019, 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 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as looks:
The Complainant owns the USAA mark registered, inter alia, in the USA for insurance services since 1927. It filed in March 2019 for registration of the mark USAA SAFE PILOT and in May 2019 for registration of the mark USAA AT HOME for its services in the USA. It has owned USAA.com since 1994.
The Domain Names registered in 2019 are confusingly similar to the Complainant’s USAA mark. Both were registered four days after the Complainant filed for its equivalent trademark registrations. The addition of a gTLD does not prevent such confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Names, is not commonly known by the Domain Names and is not authorized by the Complainant.
The Domain Names have been offered for sale. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is registration and use in bad faith. The timing of the Domain Name registrations four days after the Complainant filed for equivalent trademarks shows the Respondent had actual knowledge of the Complainant and its business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the USAA mark registered, inter alia, in the USA for insurance services since 1927. It filed in March 2019 for registration of the mark USAA SAFE PILOT and in May 2019 for registration of the mark USAA AT HOME for its services in the USA. It has owned USAA.com since 1994.
The Domain Names registered in 2019 were registered four days after the Complainant had applied for its equivalent trademark registrations and have been offered for sale.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical or Confusingly Similar
The Domain Names consists of the Complainant’s USAA mark (registered, inter alia, in the USA since at least 1927 for insurance services) the generic terms ‘at home’ or ‘safe pilot’ and the gTLD “.com.”
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic terms ‘at home’ or ‘safe pilot’ does not prevent confusing similarity between the Domain Names and the Complainant's trademark pursuant to the Policy.
The gTLD “.com” does not serve to distinguish the Domain Names from the USAA mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the TLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such, the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sep. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Respondent has offered the Domain Names for sale. Advertising a disputed domain name for sale is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy 4(c)(i) or (iii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (Re: “Respondent’s willingness to sell the disputed domain name…such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).
As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The fact that Respondent registered the Domain Names just days after Complainant filed for the equivalent trademarks in USAA SAFE PILOT and USAA AT HOME containing the already registered mark USAA demonstrates the Respondent knew of the Complainant and its business at the time of registration of the Domain Names.
Offering a disputed domain name up for sale can be evidence of bad faith under Policy 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Respondent offered the Domain Names for sale at dan.com for sums in excess of the costs of registration. Accordingly, the panel finds that Respondent registered and used the <usaasafepilot.com> and <usaaathome.com> domain names in bad faith under Policy ¶ 4(b)(i). There is no need to consider additional grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usaasafepilot.com> and <usaaathome.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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