United Services Automobile Association v. Milan Kovac
Claim Number: FA1105001388167
Complainant is United Services Automobile Association (“Complainant”), Texas, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usaaconnect.com>, registered with HebeiDomains.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2011; the National Arbitration Forum received payment on May 11, 2011. The Complaint was submitted in both Slovak and English.
On May 18, 2011, HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <usaaconnect.com> domain name is registered with HebeiDomains.com and that Respondent is the current registrant of the name. HebeiDomains.com has verified that Respondent is bound by the HebeiDomains.com 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 26, 2011, the Forum served the Slovak Complaint and all Annexes, including a Slovak Written Notice of the Complaint, setting a deadline of June 15, 2011 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@usaaconnect.com. Also on May 26, 2011, the Slovak 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" 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 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <usaaconnect.com> domain name is identical/confusingly similar to Complainant’s USAA mark.
2. Respondent does not have any rights or legitimate interests in the <usaaconnect.com> domain name.
3. Respondent registered and used the <usaaconnect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Services Automobile Association, offers a variety of products and services, including financial and insurance services, to its members who all have a direct or familial connection the United States Armed Forces. Complainant owns multiple trademarks with the United States Patent and Trademark Office (“USPTO”) for its USAA family of marks, including USAA.COM (e.g., Reg. No. 2,355,486 issued June 6, 2000).
Respondent, Milan Kovac, registered the disputed domain name on June 10, 2008. The disputed domain name resolves to a website that displays an insurance quote service.
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 asserts rights in its USAA.COM mark based on its registration of the mark with the USPTO (e.g., Reg. No. 2,355,486 issued June 6, 2000). The Panel finds that a USPTO registration is sufficient to demonstrate Complainant’s rights in the mark under Policy ¶ 4(a)(i), despite Respondent’s residence or operation outside the United States. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s <usaaconnect.com> domain name is confusingly similar to Complainant’s USAA.COM mark. The disputed domain name merely adds the generic term “connect” to Complainant’s mark. The Panel finds that the mere addition of a single generic term does not properly distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Accordingly, the Panel finds that Respondent’s <usaaconnect.com> domain name is confusingly similar to Complainant’s USAA.COM mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant first establish a prima facie case in support of its contentions that Respondent lacks rights and legitimate interests in the disputed domain name before the burden of proof shifts to Respondent. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Respondent’s failure to provide any sort of response in these proceedings allows the Panel to infer that Respondent does indeed lack rights and legitimate interests in the disputed domain name. See 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.”). However, the Panel elects to examine the record to make a complete determination as to Respondent’s rights and legitimate interests under the Policy ¶ 4(c) factors.
Complainant asserts that Respondent is not, and has not been, commonly known by the disputed domain name. Complainant states that nothing in the WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name and Complainant has not authorized Respondent to use its USAA.COM mark. The WHOIS information lists the registrant of the disputed domain name as “Milan Kovac.” The Panel agrees with Complainant, finding no evidence that would indicate that Respondent is now, or has ever been, commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that Respondent’s disputed domain name resolves to a website that displays an insurance quote service not affiliated with Complainant. The screenshot evidence provided by Complainant also shows the resolving website containing links to products and services in both the financial and insurance industries. Complainant suggests that this website competes with the services it offers under its USAA.COM mark and that Respondent is likely receiving a commercial benefit from its use of the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to its competing site for Respondent’s benefit is 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s activities in registering and using the disputed domain name constitute bad faith under Policy ¶ 4(b)(iii) because the domain name resolves to a website featuring links to directly competing websites, which disrupts Complainant’s business. The Panel agrees. See 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 directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent’s registration and use of the disputed domain name constitute bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s disputed domain name attempts to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its USAA.COM mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Panel agrees with Complainant as Complainant has submitted screenshot evidence of Respondent’s resolving website, which contains links to third-parties in both the insurance and financial service industries. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
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 <usaaconnect.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 29, 2010
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