United Services Automobile Association v. Services LLC
Claim Number: FA0612000869413
Complainant is United Services Automobile Association (“Complainant”), represented by Carol
L. B. Matthews of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C., 1940 Duke Street, Alexandria, VA, 22314. Respondent is Services LLC (“Respondent”), 9 Copthall,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <usaainsurence.com> and <usaainsurnace.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 14, 2006; the National Arbitration Forum received a hard copy of the Complaint December 15, 2006.
On December 22, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <usaainsurence.com> and <usaainsurnace.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has 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 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 29, 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@usaainsurence.com and postmaster@usaainsurnace.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 2, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <usaainsurence.com> and <usaainsurnace.com>, are confusingly similar to Complainant’s USAA mark.
2. Respondent has no rights to or legitimate interests in the <usaainsurence.com> and <usaainsurnace.com> domain names.
3. Respondent registered and used the <usaainsurence.com> and <usaainsurnace.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Services Automobile Association (“USAA”), offers many different types of insurance and financial services to consumers. Complainant has used the USAA mark to promote these services since 1927 and holds numerous registered trademarks with the United States Patent and Trademark Office (“USPTO”) for the USAA mark (i.e. Reg. No. 806,520 issued March 29, 1966). Complainant also registered the domain name <usaa.com> December 2, 1994, to promote Complainant’s insurance services online.
Respondent, Services LLC, registered the <usaainsurence.com> domain name August 26, 2004 and the <usaainsurnace.com> domain name September 1, 2004. Respondent is using both disputed domain names to redirect Internet who presumably seek Complainant’s goods and services to Respondent’s website that provides hyperlinks to the websites of Complainant’s competitors.
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 as the Panel 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 Complainant to 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 registered its USAA mark with the USPTO long before Respondent registered the disputed domain names, <usaainsurence.com> and <usaainsurnace.com>. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to the registrant, in this case, Complainant. Thus, the Panel finds that Complainant established legal rights in the USAA mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., 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.”).
The disputed domain names that Respondent registered, <usaainsurence.com> and <usaainsurnace.com>, both contain Complainant’s USAA mark in its entirety and then add the generic insurance in two different misspelled versions “insurence” and “insurance.” The addition of a generic word describing a complainant’s business, such as “insurance” in this case, does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). Furthermore, the various misspellings of “insurance” are without relevance to this analysis since they represent common typographical errors that do not take away from the overall impression of Complainant’s USAA mark. Similarly, the addition of the generic top-level domain “.com” does not affect this analysis. Therefore, the Panel concludes that Respondent’s <usaainsurence.com> and <usaainsurnace.com> domain names are confusingly similar to Complainant’s USAA mark pursuant to Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has legal rights to and legitimate interests in the USAA mark. Complainant alleges that Respondent has no such rights to or legitimate interests in the <usaainsurence.com> and <usaainsurnace.com> domain names because they contain in their entirety the protected mark of the Complainant. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights to or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
However, the Panel examines the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <usaainsurence.com> and <usaainsurnace.com> domain names. The WHOIS information identifies Respondent as “Services LLC,” and Complainant alleges that Respondent is not licensed or authorized to use Complainant’s USAA mark.
The Panel found no evidence in the record suggesting that Respondent is commonly known by the names. Therefore, the Panel finds that Respondent is not commonly known by the <usaainsurence.com> and <usaainsurnace.com> domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent is using the <usaainsurence.com> and <usaainsurnace.com>
domain names to redirect
Internet users seeking Complainant’s goods and services to Respondent’s website
that provides hyperlinks to the websites of Complainant’s competitors. Such use of the disputed domain names
constitutes neither a bona fide
offering of goods and services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the
domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the
respondent used the domain name to take advantage of the complainant's mark by
diverting Internet users to a competing commercial site); see also Gardens Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use).
The Panel finds that complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith in registering a using two domain names that contain in its entirety Complainant’s protected USAA mark. Moreover, Respondent is using the <usaainsurence.com> and <usaainsurnace.com> domain names to redirect Internet users to Respondent’s website that provides hyperlinks to the websites of Complainant’s competitors. This use of the disputed domain name is likely to disrupt Complainant’s business by diverting business away from Complainant. Therefore, the Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); 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’s use of the <usaainsurence.com> and <usaainsurnace.com> domain names, which are confusingly similar to Complainant’s USAA mark, also is likely to cause confusion among customers searching for Complainant’s insurance and financial services. Specifically, customers could become confused as to the affiliation, endorsement, or sponsorship of the competing mortgage and financial services advertised on Respondent’s website. Complainant has alleged that Respondent is attempting to monetarily profit from this confusion by receiving pay-per-click fees for each redirected Internet user. The Panel finds that such use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Complainant 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 <usaainsurence.com> and <usaainsurnace.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 16, 2007.
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