United Services Automobile Association v. Oleg Savchenko d/b/a Software Rocket Ltd.
Claim Number: FA0711001105728
Complainant is United
Services Automobile Association (“Complainant”), represented by Monica R. Talley, of Finnegan Henderson
Farabow Garrett & Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue are <usaa-insurance.net> and <auto-insurance-usaa-a.info>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2007.
On November 1, 2007, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <usaa-insurance.net> and <auto-insurance-usaa-a.info> domain names are registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Direct Information Pvt Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 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@usaa-insurance.net and postmaster@auto-insurance-usaa-a.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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:
BACKGROUND FACTS
A. USAA and its Services and Products
1.
USAA was founded in 1922 in San Antonio, Texas
by 25 officers in the U.S. Army who banded together to insure each other’s
Model-T Fords. Since that time, USAA has
grown into a Fortune 200 financial services company that has
approximately 5,600,000
members. USAA continues to be
headquartered in
2.
USAA offers a wide
array of services and products to its 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.
USAA’s members are located throughout the
3.
USAA offers a variety of services and products
to its members. USAA primarily offers
insurance services (including annuities, automobile, homeowner, whole life and
term life, renters, and personal property insurance) and financial services
(such as banking, credit card, brokerage, and financial planning).
4.
USAA owns the trademark and trade name USAA, and
its rights in the USAA mark and name date back to at least as early as
1927.
5.
USAA has achieved considerable commercial
success under the USAA mark and name.
For example, USAA has approximately $96,100,000,000 in owned and managed
assets.
6.
Since its adoption of the USAA name and
trademark in 1927, USAA has spent many millions of dollars advertising, marketing, and promoting its USAA branded
services through a variety of national media, including, billboard, the
Internet, direct mail, and print advertisements.
7.
USAA has won numerous awards as a company and as
an employer. For example, USAA has
received the highest possible financial strength ratings from Standard &
Poor’s, A.M. Best, and Moodys’s. USAA
has also received customer satisfaction awards from J.D. Power and Associates
in recognition of USAA’s performance in the insurance and financial services
fields, and it consistently receives the highest ratings on
8.
USAA
promotes its products and services under the USAA mark on the Internet, and has
used its USAA.COM website as a worldwide information and distribution channel
for its business for many years.
9.
Having been widely promoted among members of the
B. Complainant’s Trademark Holdings
10.
USAA has continuously used USAA as a trade name,
trademark, and service mark since 1927.
11.
In addition to its common law rights, USAA owns
numerous registrations for the USAA mark and variations thereof, including the
following representative registrations:
a. Registration No. 806,520 for the mark USAA (block letters), first used May 15, 1927, filed March 1, 1065, issued March 29, 1966, covering services in International Class 36 (insurance services).
b. Registration No. 1,712,134 for the mark USAA (block letters), first used May 15, 1927, filed November 1, 1991, issued September 1, 1992, covering services in International Classes 35 (discount buying agency services), 36 (insurance services and financial services), 39 (automobile leasing services and travel agency services), and 42 (nursing home services and health care services).
c. Registration No. 927,536 for the mark USAA and Design, first used June 12, 1970, filed September 21, 1970, issued January 18, 1972, covering services in International Class 36 (insurance services).
d. Registration No. 2,341,954 for the mark USAA (block letters), first used November 11, 1998, filed October 13, 1998, issued April 11, 2000, covering services in International Class 35 (online advertising services).
e. Registration No. 2,396,376 for the mark USAA and Design, first used November 11, 1998, filed October 13, 1998, issued August 17, 1999, covering services in International Class 35 (online advertising services).
f. Registration No. 2,423,168 for the mark USAA and Design, first used June 1999, filed November 16, 1999, issued January 23, 2001, covering services in International Classes 35 (online advertising services) and 36 (insurance services, financial services, investment services, banking services, and real estate services).
12.
USAA
also owns the domain name USAA .COM, which it registered on
December 2, 1994.
13.
USAA’s trademark rights in its USAA mark and
name, based on its trademark registrations and its common law rights acquired
through use since 1927, long predate Respondent’s registration of the Domain
Names.
C. Respondent’s
Infringing Activities and Bad Faith Acts
14.
Respondent registered the Domain Names in May
2007, long after Complainant began using its USAA mark, after Complainant
registered its mark in the U.S. (and elsewhere), and after Complainant’s USAA
mark became famous.
15.
Respondent uses the domain name
USAA-INSURANCE.NET for a commercial website prominently displaying, without
Complainant’s authorization, Complainant’s federally registered design
trademark, USAA WE KNOW WHAT IT MEANS
TO SERVE. INSURANCE, INVESTMENTS, BANKING, MEMBER SERVICES, on nearly
every page. The primary focus of
Respondent’s website is the display of numerous pay-per-click advertisements
for websites offering directly competing insurance services and other
commercial websites. Respondent’s
website also displays numerous USAA-formative categories (e.g., “USAA General
Information,” “USAA Auto Insurance”), the purpose of which is undoubtedly to
increase search engine prominence through repetition of USAA’s mark and name
rather than to provide information about USAA and its USAA services.
16.
The advertisements displayed on Respondent’s
websites associated with the Domain Names are provided by Google, as shown by
the “Ads by Google” link displayed above the advertisements. The “Ads by Google” link connects to
Google’s web page describing its AdSense program that serves ads to website
owners and pays commissions to them when Internet users click on those ads.
17.
Respondent is currently using the domain name
AUTO-INSURANCE-USAA-A.INFO for an “index page” that displays no content.
18.
On May 25, 2007, Complainant sent Respondent a
cease-and-desist letter demanding the transfer of the domain name
USAA-INSURANCE.NET. To date, Respondent
has not responded to Complainant’s demands.
Complainant subsequently discovered Respondent’s registration of the
second domain name AUTO-INSURANCE-USAA-A.INFO.
19.
On June 14, 2007, Complainant sent Respondent’s
ISP requesting the removal of Respondent’s website, but did not receive a
response.
20.
Respondent has registered at least two
additional domain names incorporating trademarks owned by third parties,
specifically, <allstate-insurance-a.info> and
<safeco-auto-insurance.info>, which are comprised of the marks ALLSTATE
and SAFECO, respectively. Respondent
uses the <safeco-auto-insurance.info> domain names for a website similar
to his USAA-INSURANCE.NET website that displays Safeco’s logo and
advertisements for competing services.
THE DOMAIN
NAMES ARE CONFUSINGLY SIMILAR
TO
COMPLAINANT’S MARK
21.
The domain names USAA-INSURANCE.NET and
AUTO-INSURANCE-USAA-A.INFO are confusingly similar to Complainant’s USAA mark
because each incorporates Complainant’s mark in its entirety with a generic
term(s) or letter (“insurance,” “auto,” and/or the letter “a”). Combining a trademark with generic terms
and/or single letters is not sufficient to distinguish domain names from the
mark at issue, particularly when, as in this case, the generic terms relate to
Complainant’s business. See, e.g.,
Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Selavy Media (NAF
FA0608000781838) (finding the domain name <toshibatoner.com> confusingly
similar to complainant’s TOSHIBA mark because “the mere addition of a term
describing an aspect of [c]omplainant’s business, namely printers and related
accessories, is not a distinguishing difference.”); Nortel Networks Limited v. Buymebuyme.com, Inc. (NAF FA0604000671847) (finding the domain
names <nortelphones.com> and <norstarphones.com> confusingly
similar to complainant’s NORTEL and NORSTAR marks because “the addition of
generic terms, particularly those with a direct connection to [c]omplainant’s
business, fails to sufficiently distinguish [r]espondent’s domain names from
[c]omplainant’s marks pursuant to Policy ¶4(a)(i).”); Bridgestone
Corporation v. Horoshiy (WIPO D2004-0795) (finding the domain name
<bridgestonegolf.com> confusingly similar to complainant’s BRIDGESTONE
mark and holding the conjunction of complainant’s mark with the non-distinctive
term “golf” increases “the likelihood of confusion, since [c]omplainant
actually uses the subject mark in connection with golf, and has done so for
quite some time.”).
RESPONDENT HAS
NO RIGHTS OR LEGITIMATE INTEREST
IN THE DOMAIN NAMES
22.
Respondent
clearly has no rights or legitimate interest in the Domain Names for the
following reasons.
23.
First,
Respondent has no intellectual property rights in Complainant’s USAA mark.
24.
Second,
Respondent is not and has not been commonly known by USAA or the Domain Names.
25.
Third, Respondent’s
registration, use and/or intended use of the Domain Names for commercial websites
displaying advertisements for websites offering competing services and other
commercial websites does not constitute a bona fide offering of goods or
services under the UDRP. Nor do
Respondent’s activities constitute a
legitimate noncommercial or fair use of the Domain Names under the UDRP. See, e.g., Verizon Trademark
Services, LLC v. NA a/k/a NA DomainDevelopments.com (NAF FA0512000616307)
(holding respondent’s use of the domain name <verizoncenter.com> for a
website featuring links to competing products and services is not a bona fide
offering of goods or services or a legitimate noncommercial or fair use of the
domain name); IndyMac Bank F.S.B. v. Yu Xiao (NAF FA0511000603023)
(holding respondent’s use of the disputed domain name for a website featuring
links to various competing and non-competing commercial websites, for which
respondent presumably receives referral fees, is neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use under the
UDRP). Caterpillar, Inc. v.
Admin c/o Jucco Holdings (NAF FA0603000662210) (holding respondent’s use of
the domain name <catatwork.com> for a website featuring links to websites
for which respondent receives click-through fees in exchange for diverting
Internet users to these other websites is not a bona fide offering of goods or
services or a legitimate noncommercial or fair use).
RESPONDENT’S BAD FAITH UNDER SECTION 4(B) OF THE
UDRP
26.
Respondent’s registration and use of the Domain
Names squarely meets the grounds of bad faith outlined in the UDRP, as well as
additional grounds of bad faith defined in previous UDRP decisions.
27.
First, Respondent’s
activities meet the bad faith element set forth in Section 4(b)(iv) of the UDRP.
Specifically, Respondent uses and/or intends to use the Domain Names to
intentionally attract, for commercial gain, Internet users to his website by
creating a likelihood of confusion with Complainant and its federally registered USAA mark as to
the source, sponsorship, affiliation, and/or endorsement of Respondent’s
website and the competing services advertised on Respondent’s website. See, e.g., Capital One
Financial Corporation v. LaPorte Holdings, Inc. (NAF
FA0502000417712) (holding respondent’s use of the disputed CAPITAL
ONE-formative domain names for pay-per-click websites constitutes bad faith and
holding “[r]espondent is profiting from the unauthorized use of [c]omplainant’s
registered mark in its domain names.
Such infringement is what the Policy was intended to remedy and is
evidence of bad faith registration and use under Policy ¶4(b)(iv).”); IndyMac
Bank F.S.B. v. Unasi Inc. (NAF FA0507000514785) (holding respondent’s use
of the disputed domain names for various commercial websites using a series of
hyperlinks for which respondent presumably receives referral fees constitutes
bad faith); United States Postal Service v. Rocky Production (NAF
FA0604000679542) (holding respondent’s use of the disputed domain names for a
website displaying links to various third party websites for which respondent receives
click-through fees constitutes bad faith pursuant to Section 4(b)(iv) of the
UDRP).
28.
Moreover, Respondent’s unauthorized copying of
Complainant’s federally registered design trademark, USAA WE KNOW WHAT IT MEANS TO SERVE.
INSURANCE, INVESTMENTS, BANKING, MEMBER SERVICES, on his website associated
with the domain name USAA-INSURANCE.NET heightens the likelihood of confusion
caused by Respondent’s registration
of the Domain Names, and constitutes further evidence of Respondent’s bad
faith. See, e.g., Kabushiki
Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba (WIPO D2004-0941)
(holding respondent’s use of complainant’s mark on its <icn-toshiba.com>
website is a “hallmark” of bad faith because it is “calculated to create
confusion or deception as to the existence of some connection by way of
sponsorship, endorsement, sanction or control between the [c]omplainant and the
website to which the disputed domain name resolves (see Paragraph 4(b)(iv) of
the Policy).”); Yahoo! Inc. v. Andersson (NAF FA0403000250001) (holding
respondent’s copying of the distinctive features of complainant’s logo on his
website constituted bad faith); Johnson
Financial Group, Inc. v. Janssen (NAF
FA0311000214465) (holding “[R]espondent’s attempt to pass itself off as [c]omplainant
by copying graphics and text from [c]omplainant’s website demonstrates
[r]espondent’s bad faith registration and use of the <johnsonsgroup.net>
and <johnson-latin.com> domain names under Policy ¶4(a)(iii).”).
29.
Second, Respondent’s registration and use of the
Domain Names meet the bad faith element set forth in Section 4(b)(iii) of the UDRP because Respondent disrupts Complainant’s
business and unfairly competes with Complainant by using and/or intending to
use the Domain Names for a commercial website featuring advertisements for
websites advertising competing services.
See, e.g.,
DaimlerChrysler
Corp. v. Kentech, Inc. (NAF FA0501000410056) (holding respondent’s use
of the domain name for websites displaying links to complainant’s competitors
constitutes bad faith); TM Acquisition Corp. v. Gary Lam (NAF
FA0405000280499) (holding respondent’s use of the disputed domain name for a
commercial web directory website linking users to competing services
constituted bad faith pursuant to Section 4(b)(iii) of
the UDRP).
30.
Third,
Respondent’s registration of the Domain Names, together with his
registration of additional domain names incorporating third-party marks as
shown above in Paragraph 32, constitutes a bad-faith pattern of registering trademark-related domain names pursuant to
Section 4(b)(ii) of the UDRP. See, e.g., H-D Michigan Inc.
v. Network Operations Center c/o Alberta Hot Rods (FA0604000671212)
(holding respondent’s registration of the domain names
<harleydavidsonracing.com> and <harleydavidsonracers.com>
constitutes bad faith pursuant to Section 4(b)(ii) because respondent owns
other domain names that incorporate third parties’ trademarks); Indymac Bank
F.S.B. v. Berhard Fristch a/k/a FIFC SA (NAF FA0211000133762) (holding
respondent registered the domain name <loanwerks.com> in bad faith
because it “has demonstrated a pattern of conduct of registering
trademark-related domain names.”); Yahoo! Inc. v. Syrynx, Inc. and Hugh
Hamilton (WIPO D2000-1675) (finding bad faith in respondent’s registration
of two domain names incorporating complainant’s mark).
31.
Respondent’s
registration and nonuse, i.e. “passive holding,” of the domain name AUTO-INSURANCE-USAA-A.INFO is in bad faith because (1) that Domain Name incorporates
Complainant’s USAA
mark in its entirety, (2) there is no
conceivable use of the Domain Name by Respondent that would be legitimate, and
(4) the most likely use of that Domain Name would be for a website similar to
Respondent’s USAA-INSURANCE.NET website, which would infringe Complainant’s rights. See, e.g., H-D Michigan,
Inc. v. TT&R et al. (NAF FA0209000126650) (finding respondent’s passive
holding of the domain name <harleydavidsons-r-us.com> in bad faith
because respondent’s bad-faith registration and use of additional domain names
permits the inference that any future use of the passively-held domain name
would be in bad faith and because the Panel could not imagine a circumstance
where respondent could use that domain name in good faith); Indymac Bank
F.S.B. v. Jim Hogan (NAF FA0312000220042) (holding respondent’s passive
holding of the domain names is in bad faith and stating “The Panel will not
wait until the domain names have actually been used before finding bad faith
because it is inconceivable that [r]espondent could use the domain names in a
manner that would not infringe upon [c]omplainant’s mark and given
[r]espondent’s prior [activities].”).
32.
Because
Complainant’s USAA
mark is federally registered, and because Respondent’s website
copies Complainant’s federally registered design trademark, USAA WE KNOW WHAT IT MEANS TO SERVE.
INSURANCE, INVESTMENTS, BANKING, MEMBER SERVICES,
there is no question that Respondent had knowledge of USAA’s trademark rights
when he registered the Domain Names. By registering
the Domain Names with knowledge of Complainant’s rights in its USAA mark,
Respondent acted in bad faith. See,
e.g., Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko
Tusla d/b/a Toshiba-Club.com (WIPO D2004-1066) (holding respondent
registered the domain name <toshiba-club.com> in bad faith because
“registration of the complainant’s well-known [TOSHIBA] mark as a domain name
could not have been for any plausible reason other than to trade on the
goodwill of the trade mark owner” and noting “Registration of a domain name with
knowledge of the trademark owner’s rights has been consistently found to
constitute bad faith under the Policy.”); Verizon Trademark Services, LLC v.
NA a/k/a NA DomainDevelopments.com (NAF FA0512000616307) (“[R]espondent
registered the contested domain name [verizoncenter.com] with at least
constructive knowledge of [c]omplainant’s rights in the VERIZON mark by virtue
of [c]omplainant’s prior filing for registration of that mark with the United
States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge evidences bad faith registration and use of the domain
name pursuant to Policy ¶4(a)(iii).”); Compaq Information Technologies
Group, L.P. v. Express Technology, Inc. (NAF FA0201000104186) (finding the
respondent registered the domain name in bad faith because it was on notice of
the complainant’s rights).
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Services Automobile Association, is the owner of the trademark USAA. Complainant has utilized the USAA mark in connection with insurance services and financial services since as early as 1927. Complainant owns several registrations with the United States Patent and Trademark Office (“USPTO”) for its USAA mark. (such as Reg. No. 806,520 – issued March 29, 1966 and Reg. No. 2,423,168 – issued January 23, 2001). Complainant registered the domain name <USAA.com> on December 2, 1994.
Respondent registered the disputed domain names <usaa-insurance.net> and <auto-insurance-usaa-a.info> on May 14, 2007 and May 5, 2007 respectivley. Currently the domain name <usaa-insurance.net> resolves to a website entitled “USAA We know what it means to serve.” that provides links to Complainant’s competitor’s products. The <auto-insurance-usaa-a.info> domain name resolves to an “index page” that displays no content.
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 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 (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 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.
Complainant has established rights in the USAA mark. Complainant holds several
Respondent’s disputed domain names are confusingly similar to Complainant’s USAA mark. The <usaa-insurance.net> disputed domain name includes the entirety of Complainant’s mark, merely adding the generic term “insurance,” which directly relates to Complainant’s business, a hyphen and the generic top-level domain (“gTLD”) “.net.” The <auto-insurance-usaa-a.info> disputed domain name also includes the entirety of Complainant’s mark, adding the generic terms “auto” and “insurance,” both of which directly relate to Complainant’s business, three hyphens, the letter “a,” and the gTLD “.info.” The Panel finds these alterations to an otherwise unchanged mark to be minor and insufficient to distinguish either of Respondent’s domain names from Complainant’s mark in any meaningful way for the purposes of Policy ¶4(a)(i) under the particular facts and circumstances of this case. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business); 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 Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶4(a)(i) analysis).
The Panel finds Policy ¶4(a)(i)
satisfied.
Where Complainant makes a prima facie case under Policy ¶4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights to or legitimate interests in the disputed domain name. The Panel finds Complainant has established a prima facie case in the matter at hand. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent has failed to submit a response to the Complaint. The Panel is entitled to presume Respondent lacks all rights and legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will examine the record to determine if Respondent has any rights or legitimate interests in either the <usaa-insurance.net> or <auto-insurance-usaa-a.info> domain name pursuant to Policy ¶4(c).
The disputed domain name, <usaa-insurance.net>,
currently resolves to a website displaying Complainant’s marks and contains
links to Complainant’s competitors. The
Panel finds this to be neither a bona
fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to
Policy ¶4(c)(iii). See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the
complainant’s entire mark in domain names makes it difficult to infer a
legitimate use); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither
a bona fide offerings [sic] of goods or services, nor an example of a
legitimate noncommercial or fair use under Policy ¶¶4(c)(i)
& (iii) when the holder of a domain name, confusingly similar to a registered
mark, attempts to profit by passing itself off as Complainant . . . .”); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat.
Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name
that was confusingly similar to the complainant’s mark to display links to the
complainant’s competitors did not constitute a bona fide offering of
goods or services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial
or fair use pursuant to Policy ¶4(c)(iii)).
The disputed domain name, <auto-insurance-usaa-a.info>,
currently resolves to an “index page” that displays no content. The Panel also finds this to be neither a bona fide offering of goods or services
pursuant to Policy ¶4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003)
(“Respondent's use of a domain name confusingly similar to Complainant’s mark
to divert Internet users to websites unrelated to Complainant's business does
not represent a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy
¶4(c)(iii).”); see also Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which
is blank but for links to other websites, is not a legitimate use of the domain
names).
Respondent is not commonly known by either the <usaa-insurance.net> or <auto-insurance-usaa-a.info> domain
name and is not authorized to use Complainant’s USAA mark in any way.
Nowhere in Respondent’s WHOIS information or elsewhere in the record does it
indicate Respondent is or ever was commonly known by either the <usaa-insurance.net> or <auto-insurance-usaa-a.info> domain
name. Absent evidence suggesting
otherwise, the Panel finds Respondent has not established rights to or
legitimate interests in the domain names in accordance with Policy ¶4(c)(ii). See Tercent Inc. v. Lee 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 Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The Panel concludes Complainant satisfied Policy ¶4(a)(ii).
Respondent currently utilizes the disputed domain name, <usaa-insurance.net>,
to resolve to a website featuring links to third-party competitors of
Complainant. The Panel finds such use
establishes Respondent registered and is using the disputed domain name in bad
faith pursuant to Policy ¶4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website.
It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶4(b)(iii) [and] (iv).”); see also Tesco Pers.
Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007)
(concluding that the use of a confusingly similar domain name to attract
Internet users to a website containing commercial links to the websites of the
complainant’s competitors represented bad faith registration and use under
Policy ¶4(b)(iii)).
Respondent’s website at the <usaa-insurance.net>
domain name prominently and repeatedly features Complainant’s mark. Respondent is presumed to be benefiting by
collecting click-through fees from the links to third-party competitors of
Complainant. The Panel finds the
disputed domain name is capable of creating a likelihood of confusion with
Complainant’s mark (especially since it contains Complainant’s registered
trademarks as graphics). This is further
evidence of Respondent’s bad faith registration and use pursuant to Policy ¶4(b)(iv). See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum
Jan. 8, 2003) (finding that the disputed domain name was registered and used in
bad faith pursuant to Policy ¶4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also Target Brands, Inc.
v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding
bad faith because the respondent not only registered complainant’s famous
TARGET mark, but “reproduced… complainant’s TARGET mark… [and] added
complainant’s distinctive red bull’s eye [at the domain name]… to a point of
being indistinguishable from the original.”); see also Am. Online, Inc.
v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue
to resolve to a website at which Complainant’s trademarks and logos are
prominently displayed. Respondent
has done this with full knowledge of Complainant’s business and trademarks. The
Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The disputed domain name, <auto-insurance-usaa-a.info>,
currently resolves to an “index page” that displays no content. The Panel finds this “lack of use” to
establish Respondent registered and is using the disputed domain name in bad
faith pursuant to Policy ¶4(b)(iii). See
Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding bad faith under Policy ¶4(b)(iv) even though the respondent has not
used the domain name because “it makes no sense whatever to wait until it
actually ‘uses’ the name, when inevitably, when there is such use, it will
create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital,
D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no
use of the domain name in question and there are no other indications that the
respondent could have registered and used the domain name in question for any
non-infringing purpose)
Complainant also
Respondent registered the <usaa-insurance.net> and <auto-insurance-usaa-a.info> disputed domain names with either actual or
constructive knowledge of Complainant’s rights in its USPTO registered USAA
mark. Respondent’s websites prominently
and repeatedly display its USAA marks and logos along with its trademarked
phrase “USAA WE KNOW WHAT IT MEANS TO SERVE.”
The Panel finds Respondent has registered the disputed domain
names with full knowledge of Complainant's business and trademarks. The Panel finds this conduct is further
evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”) see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002)
(“Respondent is using the domain name at issue to resolve to a website at which
Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge
of Complainant’s business and trademarks. The Panel finds that this conduct is
that which is prohibited by Paragraph 4(b)(iv) of the
Policy.”).
Respondent has registered several domain names incorporating third-party trademarks in bad faith. The Panel finds Respondent has engaged in a pattern of conduct indicative of bad faith pursuant to Policy ¶4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
The Panel concludes 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 <usaa-insurance.net> and <auto-insurance-usaa-a.info> domain names be TRANSFERRED from Respondent to Complainant.
Dated: Friday, December 12, 2007
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