United Services Automobile Association v.
Michele Dinoia a/k/a SZK.com
Claim
Number: FA0506000497783
Complainant is United Services Automobile Association (“Complainant”),
represented by Carol L.
B. Matthews, of Oblon, Spivak,
McClelland, Maier & Neustadt, 1940 Duke Street, Alexandria, VA
22314. Respondent is Michele Dinoia a/k/a SZK.com (“Respondent”)
Via Trilussa 11 Pineto TE Italy.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <usaainsurance.com>, registered with Onlinenic,
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 17, 2005.
On
June 17, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <usaainsurance.com> is registered with Onlinenic,
Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc.
has verified that Respondent is bound by the Onlinenic, 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
June 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 7, 2005 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@usaainsurance.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 13, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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 <usaainsurance.com>
domain name is confusingly similar to Complainant’s USAA mark.
2. Respondent does not have any rights or
legitimate interests in the <usaainsurance.com> domain name.
3. Respondent registered and used the <usaainsurance.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
United Services Automobile Association, is a provider of consumer oriented
insurance and financial services including automobile insurance services,
property insurance services, life insurance services, health insurance
services, annuities, banking services, investment services, and financial
planning services. Complainant has
enjoyed increasing success throughout the years and currently owns and manages
over $83 billion worth of assets.
Complainant has
registered the USAA mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 806,520 issued March 29, 1966, renewed 1986) for use with
various consumer financial services as well as in promotional and marketing
materials.
Respondent
registered the <usaainsurance.com> domain name on March 4,
2003. Respondent’s domain name
originally resolved to a website featuring links to competing financial
services websites; however, Respondent’s domain name no longer resolves to any
active website.
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 with the USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also 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.”).
Respondent’s <usaainsurance.com>
domain name is confusingly similar to Complainant’s registered mark. Respondent incorporates Complainant’s entire
USAA mark with the addition of “insurance,” a generic term describing the
business in which Complainant engages, and the generic top level domain
“.com.” Such minor changes fail to
significantly distinguish Respondent’s domain name from Complainant’s USAA mark
pursuant to Policy ¶ 4(a)(i). See
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Marriott Int’l, Inc. v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain
name <marriott-hotel.com> is confusingly similar to the complainant’s
MARRIOTT mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO
July 7, 2000) (finding <pomellato.com> identical to the complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to refute
this assertion. As a result, the Panel
construes Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <usaainsurance.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”); see also 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).
Respondent is
using the confusingly similar <usaainsurance.com> domain name to
operate a website that features links to competing financial services websites,
from which Respondent presumably receives referral fees. Such competing use is not a use in
connection with a bona fide offering of goods and services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide offering of
goods or services).
Furthermore,
Respondent has failed to present any evidence that that would suggest that
Respondent is either commonly known by the disputed domain name or authorized
to register domain names incorporating Complainant’s USAA mark. Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the <usaainsurance.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <usaainsurance.com> domain name to attract Internet
users to a website that features a series of hyperlinks to competing financial
services websites, through which Respondent presumably earns click-through
fees. Because Respondent’s domain name
is confusingly similar to Complainant’s USAA mark, consumer’s accessing
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Such
commercial use constitutes 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 Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
Furthermore,
because Complainant registered the USAA mark with the USPTO prior to
Respondent’s registration of the <usaainsurance.com> domain name,
Respondent is said to have actual or constructive knowledge of Complainant’s
rights in the mark. Moreover, the Panel
infers actual knowledge due to the obvious connection between the content on
Respondent’s website and Complainant’s business. Registration of a domain name that is confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights is
evidence of bad faith registration and use pursuant Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register
of the USPTO, a status that confers constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <usaainsurance.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 22, 2005
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