United Services Automobile Association v. Domain Sales - (Expired domain caught by auction winner) c/o Dynadot
Claim Number: FA2305002046526
Complainant is United Services Automobile Association (“Complainant”), represented by Manuel Rivera of United Services Automobile Association, Texas, USA. Respondent is Domain Sales - (Expired domain caught by auction winner) c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usaaeaglenavigator.com>, registered with Dynadot Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to Forum electronically on May 30, 2023; Forum received payment on May 30, 2023.
On May 30, 2023, Dynadot Inc confirmed by e-mail to Forum that the <usaaeaglenavigator.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 May 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2023 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@usaaeaglenavigator.com. Also on May 31, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On June 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
1. Respondent’s <usaaeaglenavigator.com> domain name is confusingly similar to Complainant’s USAA EAGLE NAVIGATOR mark.
2. Respondent does not have any rights or legitimate interests in the <usaaeaglenavigator.com> domain name.
3. Respondent registered and uses the <usaaeaglenavigator.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, United Services Automobile Association, offers financial and insurance services. Complainant holds a registration for the USAA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 806,520, registered on March 29, 1966). Complainant also holds trademark applications for the USAA EAGLE NAVIGATOR mark with the USPTO (Serial Nos. 97842200 and 97842195, filed March 16, 2023.)
Respondent registered the <usaaeaglenavigator.com> domain name on March 20, 2023, and offers it 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”).
The Panel finds that Complainant has rights in the USAA mark through registration with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) The Panel also notes that Complainant filed trademark applications to register the USAA EAGLE NAVIGATOR mark four days before the disputed domain name was registered.
Respondent’s <usaaeaglenavigator.com> domain name uses Complainant’s USAA mark and combines it with the new part of Complainant’s USAA EAGLE NAVIGATOR mark, and adds the “.com” gTLD. Adding a gTLD and generic or descriptive terms does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). 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); see also NAED Education and Research Foundation, Inc. v. Domain Administrator / Marketing Express, FA 1602497 (Forum Mar. 23, 2015) (“The Panel agrees that the disputed domain name is identical to the NAED mark, and that the addition of a gTLD to the mark is not sufficient to rebut a finding of confusing similarity under Policy ¶ 4(a)(i).”). The Panel notes that Respondent adds the terms “eagle” and “navigator” to Complainant’s USAA mark, attempting to capitalize on complainant’s new trademark formulation USAA EAGLE NAVIGATOR, filed a few days before the disputed domain name registration. The filing of an Intent-to-Use trademark application puts the world on notice that Complainant claims trademark rights in the mark. The Panel also notes that the disputed domain name uses Complainant’s well-known and distinctive USAA mark and thus finds that Respondent’s <usaaeaglenavigator.com> domain name is confusingly similar to Complainant’s USAA marks under Policy ¶ 4(a)(i).
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 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 has no rights or legitimate interests in the <usaaeaglenavigator.com> domain name, as it is not commonly known by the domain name, and Complainant has not authorized or licensed Respondent to use its marks. The WHOIS information identifies Respondent as “Domain Sales- (Expired domain caught by auction winner) c/o Dynadot” as the Registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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).
Complainant argues that Respondent is not using the <usaaeaglenavigator.com> domain name for a bona fide offering of goods or services, or a legitimate commercial or fair use, as Respondent only offers the domain name for sale. Under Policy ¶ 4(a)(ii), offering a disputed domain name for sale shows a lack of rights and legitimate interests in the domain name. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”) Complainant provides a screenshot showing that Respondent offers the disputed domain name for sale. The Panel finds that this is not a bona fide offering of goods or services or a legitimate commercial or fair use, and thus Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <usaaeaglenavigator.com> domain name in bad faith. Under Policy ¶ 4(b)(i), offering a domain name for sale is evidence of bad faith registration and use. 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).”). Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(i).
Complainant contends that Respondent registered the <usaaeaglenavigator.com> domain name with bad faith actual knowledge of Complainant’s rights in the USAA mark. Under Policy ¶ 4(a)(iii), actual knowledge is sufficient in demonstrating bad faith and may be demonstrated where a respondent took advantage of a complainant’s recent trademark filing in creating the disputed domain name. See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). The Panel again notes that Respondent registered the disputed domain name four days after Complainant filed its USAA EAGLE NAVIGATOR mark with the USPTO, incorporating Complainant’s long-standing, well-known USAA mark, and finds further bad faith under Policy ¶ 4(a)(iii).
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 <usaaeaglenavigator.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 26, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page