United Services Automobile Association v. Cyan Yo
Claim Number: FA2102001931638
Complainant is United Services Automobile Association ("Complainant"), represented by Manuel Rivera of United Services Automobile Association, Texas, USA. Respondent is Cyan Yo ("Respondent"), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usaaperks.com>, registered with Dynadot, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2021; the Forum received payment on February 10, 2021.
On February 12, 2021, Dynadot, LLC confirmed by email to the Forum that the <usaaperks.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. 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 February 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@usaaperks.com. Also on February 15, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 March 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a Fortune 200 financial services company that serves approximately 7,500,000 members. Complainant has used the USAA mark in connection with its goods and services continuously since at least as early as 1927, and claims that it has become famous in the United States as a result of longstanding and extensive use and promotion. Complainant owns various United States trademark registrations for USAA, both as a standard character mark and in design form, and also asserts common-law trademark rights. On July 23, 2020, Complainant applied for a U.S. trademark registration for USAA PERKS on an intent-to-use basis.
Respondent registered the disputed domain name <usaaperks.com> via a privacy registration service on July 27, 2020. The domain name redirects to a landing page at a domain name marketplace that offers to sell the domain name for $990. Complainant states that Respondent is not commonly known by the domain name and has not been authorized to used Complainant's marks.
Complainant contends on the above grounds that the disputed domain name <usaaperks.com> is confusingly similar to its USAA mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <usaaperks.com> incorporates Complainant's registered USAA trademark, adding the generic term "perks" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., United Services Automobile Association v. Super Privacy Service LTD c/o Dynadot, FA 1852596 (Forum Aug. 14, 2019) (finding <usaasafepilot.com> and <usaaathome.com> confusingly similar to USAA); Enterprise Holdings, Inc. v. Ri Blue / cyberHag Productions, FA 1802081 (Forum Sept. 19, 2018) (finding <enterpriseperks.com> confusingly similar to ENTERPRISE); State Farm Mutual Automobile Insurance Co. v. ICS INC., FA 1446347 (Forum June 28, 2012) (finding <statefarmperks.com> confusingly similar to STATE FARM). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been to redirect to a website that offers the domain name for sale. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., United Services Automobile Association v. Super Privacy Service LTD c/o Dynadot, supra (finding lack of rights or interests in similar circumstances); King Ranch IP, LLC v. Super Privacy Service LTD c/o Dynadot, FA 1851464 (Forum Aug. 5, 2019) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name."
The instances of bad faith set forth in paragraph 4(b) are merely illustrative, and bad faith may be found based upon other circumstances in appropriate cases. The timing of a domain name registration in particular may support an inference of opportunistic bad faith. See, e.g., King Ranch IP, LLC v. Super Privacy Service LTD c/o Dynadot, supra (finding bad faith where domain name was registered three days after complainant applied to register corresponding trademark).
Respondent used a privacy registration service to register a domain name incorporating Complainant's well-known USAA mark, doing so only four days after Complainant had applied for a trademark registration for USAA PERKS, to which the domain name corresponds, and Respondent's sole apparent use of the domain name has been to redirect it to a site offering the domain name for sale at a premium above the registration cost. Such conduct demonstrates bad faith registration and use under the Policy. See, e.g., United Services Automobile Association v. Super Privacy Service LTD c/o Dynadot, supra (finding bad faith where domain names were registered four days after complainant's applications for equivalent trademarks and subsequently offered for sale); King Ranch IP, LLC v. Super Privacy Service LTD c/o Dynadot, supra (same, but three days). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usaaperks.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 15, 2021
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