United Services Automobile Association v. Mark Frank / Frank Homes of Michigan, Inc.
Claim Number: FA1609001693591
Complainant is United Services Automobile Association (“Complainant”), represented by Manuel Rivera of United Services Automobile Association, Texas, USA. Respondent is Mark Frank / Frank Homes of Michigan, Inc. (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usaa.us>, registered with DNC Holdings, Inc.
The undersigned certifies that 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 13, 2016; the Forum received payment on September 13, 2016.
On September 14, 2016, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <usaa.us> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2016 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@usaa.us. Also on September 15, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 usTLD 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 usTLD Policy, usTLD 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
1. Respondent’s <usaa.us> domain name is identical to Complainant’s USAA mark.
2. Respondent does not have any rights or legitimate interests in the <usaa.us> domain name.
3. Respondent registered and uses the <usaa.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers financial services under its USAA mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 806,520, registered Mar. 29, 1966).
Respondent registered the <usaa.us> domain name on April 24, 2002, and uses it to offer the domain name for sale.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 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 (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.”).
The Panel finds that Complainant has rights in the USAA mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding that the complainant established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <usaa.us> domain name is identical to Complainant’s USAA mark because it merely adds the ccTLD “.us.” In Andrey Ternovskiy dba Chatroulette v. Abdelbasset Selmi, the panel similarly concluded that simply adding the ccTLD “.us” to a complainant’s mark “does nothing to distinguish an at-issue domain name from a Complainant’s trademark for the purposes of the Policy.” FA 1638963 (Forum Oct. 28, 2015).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <usaa.us> domain name, and is not commonly known by the disputed domain name. The WHOIS record indicates that the registrant of the disputed domain name is “Mark Frank / Frank Homes of Michigan, Inc.” The Panel finds that there is no evidence in the record to support a finding for Respondent under Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
There is also nothing in the available evidence that indicates that Respondent has rights in the USAA mark pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). Respondent’s sole use of the disputed domain name is to offer it for sale. The <usaa.us> domain name currently resolves to a webpage featuring only the message ‘Would you like to buy this domain?’ and a ‘Learn More’ button that directs users to a page on the registrar’s website that promotes the registrar’s services. Offering a disputed domain name for sale does not establish rights and legitimate interests in the domain name. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Accordingly, the Panel finds that Respondent’s use of the disputed domain name does not evince rights and legitimate interests.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is making a general offer for sale to on the webpage resolving form the disputed domain name. Panels have found such offers to be demonstrative of Policy ¶ 4(b)(i) bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Thus, the Panel finds that Respondent has engaged in Policy ¶ 4(b)(i) bad faith.
Complainant also argues that Respondent has registered a number of domain names that consist of famous trademarks, demonstrating a pattern of bad faith registrations under Policy ¶ 4(b)(ii). However, there is no evidence in the record Respondent has been ruled against in prior UDRP proceedings, the Panel declines to find a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. PPA Media Services / Ryan G Foo, FA1307001510619 (Forum Oct. 9, 2013) (finding that the respondent’s negative involvement in at least three prior UDRP proceedings and the respondent’s registration of twenty-four domain names in the instant proceeding demonstrated a pattern and practice of bad faith domain name registration pursuant to Policy ¶ 4(b)(ii)).
Complainant also contends that in, light of the fame and notoriety of Complainant's USAA mark, it is inconceivable that Respondent could have registered the <usaa.us> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Due to Complainant’s long-standing use of the USAA mark, and in the absence of any argument to the contrary, the Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usaa.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 16, 2016
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