United Services Automobile Association v. Ashley Khong
Claim Number: FA0608000783314
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 Ashley Khong (“Respondent”), POB 3102, San Clemente, CA 92674.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <usaadirect.com>, registered with Go Daddy Software, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 24, 2006.
On August 23, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <usaadirect.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 August 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 14, 2006 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@usaadirect.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <usaadirect.com> domain name is confusingly similar to Complainant’s USAA mark.
2. Respondent does not have any rights or legitimate interests in the <usaadirect.com> domain name.
3. Respondent registered and used the <usaadirect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Services Automobile Association, offers
a wide range of consumer-oriented insurance and financial services. In connections with its services, Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office (“USPTO”), including the USAA mark (Reg. No. 806520 issued
March 29, 1966).
Respondent registered the <usaadirect.com> domain name on November 10, 2003. The disputed domain name resolves to a website that contains a number of sponsored links for insurance related websites.
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 through registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that the <usaadirect.com>
domain name is confusingly similar to its USAA mark. The disputed domain name contains Complainant’s mark in its
entirety and adds the term “direct” and the generic top-level domain (gTLD)
“.com.” The Panel finds, for the
purposes of Policy ¶ 4(a)(i), that the addition of a generic or descriptive
term such as “direct” and a gTLD fails to differentiate the disputed domain
name from Complainant’s USAA mark. See
State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr.
24, 2000) (finding that <statefarmdirect.com> is confusingly similar to
the complainant’s registered mark); see also Gen. Elec. Co. v.
Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding
the generic term “direct” on to the complainant’s marks (GE CAPTIAL and GECAL)
does not alter the underlying mark held by the complainant, and thus the
respondent’s domain names are confusingly similar); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden to make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes such a prima facie showing, the burden shifts to Respondent to affirmatively prove that it does have rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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 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”). The Panel finds that Complainant to have successfully met its burden.
By virtue of failing to submit a Response in this
proceeding, Respondent has created a reasonable presumption that it lacks
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names). The
Panel, however, shall examine the record to determine if Respondent has rights
or legitimate interests pursuant to Policy ¶ 4(c).
According to the WHOIS registry,
Respondent registered the disputed domain name under the name, “Ashley
Khong.” Because there is no other
evidence in the record to suggest otherwise, the Panel must find that
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(a)(ii). See 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"); see
also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Furthermore, Complainant asserts that the disputed domain name resolves to a website that contains a number of sponsored links for insurance related websites. Due to the nature of the website, it may be reasonably presumed Respondent receives commercial gain from the advertisements displayed on the resulting website. Due to the fact that the resulting website displays numerous sponsored links to insurance-related websites, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, Complainant contends that Respondent has registered and used the disputed domain name in bad faith. Due to the fact that the disputed domain name contains Complainant’s mark in its entirety and the resulting website contains insurance-related content, the Panel finds there to be a likelihood of confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. Additionally, as extrapolated above, it is reasonable for the Panel to infer that Respondent is receiving commercial gain from the advertisements contained on the resulting website. The Panel therefore finds that Respondent has intentionally attempted to attract Internet users to the resulting website by using the confusingly similar domain name in order to capitalize on the consumer confusion it has invoked. Accordingly, the Panel finds Respondent to have registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Moreover, the resulting website displays a number of advertisements for various websites owned and operated by third party insurance companies. The Panel finds Respondent’s use of a confusingly similar domain name to advertise the websites of competitors of Complainant’s to constitute disruption and evidence bad faith pursuant to Policy ¶ 4(c)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); 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)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usaadirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 3, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum