United Services Automobile Association v. Gabriel Joseph
Claim Number: FA1911001870324
Complainant is United Services Automobile Association (“Complainant”), represented by Manuel Rivera of United Services Automobile Association, Texas, USA. Respondent is Gabriel Joseph (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onlineusaafund.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2019; the Forum received payment on November 8, 2019.
On November 8, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <onlineusaafund.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2019 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@onlineusaafund.com. Also on November 12, 2019, 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 December 5, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the disputed domain name established through its ownership of its portfolio of registered trademarks described below its rights at common law acquired through use that long predates Respondent’s registration of the disputed domain name. Complainant was established in 1922 in San Antonio, Texas by 25 officers in the U.S. Army who banded together to insure each other’s Model-T Ford automobiles. Since that time, USAA has grown into a Fortune 200 financial services company that has approximately 7,500,000 members, primarily with connection with the U.S. military and their families.
The additional terms relate to Complainant’s business by referring to Complainant’s services offered under the USAA and USAA.COM marks. UDRP Panels have consistently held that the addition of a generic or descriptive terms relating to the complainant’s business is not sufficient to distinguish the domain name from the complainant’s mark, and many UDRP Panels have held that such domain names actually increases the likelihood of confusion and association between the domain name holder and the trademark owner. See, e.g., Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Selavy Media FA 0608000781838 (Forum September 29, 2006) (finding the domain name <toshibatoner.com> confusingly similar to complainant’s TOSHIBA mark because “the mere addition of a term describing an aspect of complainant’s business, namely printers and related accessories, is not a distinguishing difference.”).
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name arguing that
· Complainant has not authorized Respondent to use its USAA or USAA.COM marks in any fashion, including as part of the disputed domain name and prior panels have concluded that a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence that the respondent is commonly known by the disputed domain name and the complainant has not authorized the respondent’s use;
· Respondent’s registration and use of the disputed domain name for the purpose of defrauding users by conducting malicious phishing attacks and channeling them to fraudulent individuals, emails, and/or websites in order to obtain personal and financial information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under the Policy citing e.g., Cetera Financial Holdings, Inc. v. Whois Privacy Protection Service, (WIPO Case No. D2013-1831) (respondent’s use of the domain name <ceteranetworksonline.com> for a website which is a replica of the Complainant’s website is clearly not evidence of a bona fide use or of any legitimate rights or interests on the part of the Respondent);
· Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant submits that the evidence shows that Respondent registered or is using of the disputed domain name in bad faith. Complainant alleges that Respondent uses the disputed domain name for the criminally fraudulent processes of acquiring sensitive confidential information such as user names and passwords by masquerading as a trustworthy entity in an electronic communication for monetary gain. See, e.g., Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that a Respondent’s use of a disputed domain name as an e-mail address to pass itself off as a UDRP complainant in a phishing scheme is evidence of bad faith registration and use).
Complainant submits that the registrant had knowledge of Complainant’s trademark rights when the disputed domain name was registered, because Complainant’s USAA and USAA.COM marks are registered; Respondent’s domain name and/or website display services relating to Complainant’s business. See, e.g., MC Enterprises v. Mark Segal (Namegiant.com) (WIPO D2005-1270) (respondent’s registration of the domain name <mcenterprises.com> constitute bad faith because it is a “reasonable inference” that respondent knew of complainant and its rights in MC ENTERPRISES because “A search would have revealed the [c]omplainant and its activities. The subject domain name is the name of the [c]omplainant. That is, it is not simply a word or combination of words.”).
The fact that the disputed domain name is identical to Complainant’s famous USAA mark strongly suggests that the Respondent had actual knowledge of Complainant and its rights in the USAA Marks at the time the Respondent registered the Domain Name, and at the very least the Respondent had constructive notice of Complainant’s rights in the USAA Marks as a result of Complainant’s ownership of numerous trademark registrations for the USAA Marks. Prior panels have found that a respondent’s actual or constructive knowledge of the complainant’s rights is evidence of bad faith.
Complainant alleges that the evidence demonstrates that Respondent uses the disputed domain name for an online “phishing or malware/scareware installation” scheme in which numerous attempts are made to illegally obtain personal information from unsuspecting users, and then uses such information for monetary gain. Complainant alleges that it is clear that Respondent sole intent is to deceive and defraud through the adoption of the domain, which is designed to mimic Complainant’s own operating website, or variations thereof. As a result, Respondent’s use of the disputed domain name has and will continue to lead Internet users into a phishing or malware/scareware scheme. These actions are clearly designed to cause confusion, deception, and defraud, as they are being used in the same channel of commerce (the Internet) used by Complainant, and describe services identical to those covered by the USAA and USAA.COM. In support of these allegations Complainant has exhibited copies of the landing pages for the website to which the disputed domain name resolves which directs users to provide login credentials to Respondent; Complainant alleges that this information is collected for the purposes of defrauding the visitors to the website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a long established insurance corporation and is the registered owner of a portfolio of registered trademarks including the following:
· U.S. federal trademark USAA, registration No. 806,520 registered on March 29, 1966 for services in International Class 36 (insurance services);
· U.S. federal trademark USAA, registration No. 1,712,134, registered on September 1, 1992 for services in International Class 36 (banking, financial, and insurance services), 35 (discount buying agency services), 39 (travel agency services), and 42 (health care services);
· U.S. federal trademark USAA and Design, registration No. 1,590,157 registered on April 3, 1990 for services in International Class 36 (banking and credit card services);
· U.S. federal trademark USAA and Design, registration No. 2,319,728, registered on February 15, 2000, for services in International Class 36 (online banking services);
· U.S. federal trademark USAA.COM, registered on June 6, 2000, covering services in International Class 35 (online discount buying services), 36 (online banking and Insurance services), and 42 (computerized online ordering services).
Complainant has an established Internet presence and is the owner of the Internet domain name <usaa.com>, which it first used on December 2, 1994 and remains currently in use.
The disputed domain name was registered on July 15, 2019 and resolves to a website that purports to offer insurance services and requests input of the visitor’s personal data.
In the absence of a Response or other communication from Respondent, there is no information available about the Respondent except for that provided in the Complaint and the Registrar’s response to the Forum’s request for verification of the registration details of the disputed domain name.
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has satisfied this Panel that it has rights in the USAA and USAA.COM trademarks acquired by its ownership of the abovementioned portfolio of registered trademarks and the goodwill that it has acquired in the marks by long use in connection with Complainant’s business including on the Internet.
The disputed domain name <onlineusaafund.com> is confusingly similar to Complainant’s USAA and USAA.COM marks. It contains each of trademarks that Complainant relies upon in their entirety adding only the descriptive terms “online” and “fund” to both. Complainant’s USAA mark is the dominant and only distinctive element. In most cases under the Policy, the gTLD <.com> extension may be ignored, but in this case, it is relevant because Complainant is relying on its USAA.COM.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name submitting that: Respondent’s WHOIS information, as well as the record, demonstrates that the Respondent is not commonly known by the disputed domain; Complainant has not authorized Respondent to use its USAA or USAA.COM marks in any fashion, including as part of the disputed domain name; Respondent’s registration and use of the disputed domain name for the purpose of defrauding users by conducting malicious phishing attacks and channeling them to fraudulent individuals, emails, and/or websites in order to obtain personal and financial information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant has adduced in evidence copies of the website to which the disputed domain name resolves to support these allegations.
In the circumstances, because Complainant has made out a prima facie case the burden of production shifts to Respondent to establish rights or legitimate interests for the purposes of Policy ¶ 4(a)(ii).
Respondent has failed to discharge the burden of production and to this Panel finds that on the balance of probability Respondent has no rights or legitimate interest in the disputed domain name and Respondent has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Because Complainant’s trademarks are the only distinctive element in the disputed domain name and the other elements reference online provision of fund services, it is most probable that the registrant of the disputed domain name was actually aware of Complainant and its rights when the disputed domain name was registered.
The website to which the disputed domain name resolves confirms this finding as it states “Join USAA We proudly serve military members and their families. Since 1922, we have stood by our members. We are your organization for insurance, banking, investment and retirement” giving the false impression that the website is owned by or endorsed by Complainant.
There is no evidence that Respondent is engaged in phishing as alleged, however, the fact that Respondent is using the disputed domain to impersonate Complainant convinces this Panel that the disputed domain name was registered and is being used by Respondent in intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant's USAA and USAA.COM service marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or service on your web site or location.
This Panel must conclude that the disputed domain name was registered and is being used in bad faith and Complainant has therefore succeeded in the third element of the test in 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 <onlineusaafund.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgman SC
Panelist
Dated: December 6, 2019
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