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USAA v. NET ENTERPRISES TECHNOLOGIES [2000] GENDND 372 (25 May 2000)

WIPO Arbitration and Mediation Center

Complainant is United Services Automobile Association, an unincorporated reciprocal interinsurance exchange organized and existing under the laws of the State of Texas, having its principal place of business at 9800 Fredericksburg Road, San Antonio, Texas 78288, USA.

Respondent is Net Enterprises Technologies 18600 Main St. # 295, Huntington Beach, California 92648, USA.

The domain name at issue is <usaaclaims.com>. The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, USA.

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on May 5, 2000. The Complainant paid the required fee.

On May 9, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant.

On May 9, 2000, the Center sent to the Registrar a request for verification of registration data, and the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that <usaaclaims.com> is registered in the Respondent's name.

On May 15, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On May 15, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On May 30, 2000, the Center received the Response. On June 2, 2000, the Center sent Acknowledgments of Receipt of the Response.

After the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Presiding Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Presiding Panelist.

Complainant is a worldwide insurance and diversified financial services family of companies headquartered in San Antonio, Texas. Complainant has utilized the designation "USAA" as its primary service mark and trade name since at least as early as 1927. Complainant offers a wide range of consumer oriented insurance and financial services under its USAA mark and name, including automobile insurance services, property insurance services, life insurance services, health insurance services, annuities, banking services, investment services and financial planning services. Complainant currently serves more than 3 million customers in these service fields -- primarily members of the United States military and their families. As the result of Complainant’s long and extensive use of the USAA mark and name, the USAA mark and name has become well known as an indicator of the source of Complainant’s services.

Complainant is the owner of numerous United States Patent and Trademark Office registrations for its USAA service mark, both alone and in conjunction with other words and designs, including the following service marks which are valid and subsisting:

- Registration No. 806,520, for USAA (in typed form), for services identified as "underwriting various insurance coverages for officer personnel of the United States military forces," said registration having issued on March 29, 1966.

- Registration No. 1,712, 134, for USAA (in typed form), for services identified in part as "underwriting insurance services in a wide range of areas including automobile, homeowner’s, renters’ [sic], personal liability, boat, fire and flood insurance services; credit card and banking services; financial brokerage services in the field of real estate; financial management services; transfer agency services in the nature of reporting financial statements to client’s relating to securities investments and other financial investments; financial investment services in the field of real estate and real estate management," "automobile leasing services and travel agency services," "nursing home services and health care services," said registration having issued on September 1, 1992.

Complainant is registrant of the domain name <usaa.com>. Complainant both markets and performs Complainant’s USAA branded consumer insurance and financial services through a website located at www.usa.com.

Respondent registered the domain name <usaaclaims.com> on April 6, 1999.

Complainant first notified Respondent of Complainant’s objections to Respondent’s registration of the domain name by letter dated January 19, 2000. Respondent made no use of the domain name in connection with the bona fide offering of goods or services prior to that date of notification nor made any demonstrable preparations to do so. Subsequent to notification of this dispute, Respondent has now made what would appear to be preparations for commercial use of the domain name. The content currently located at Respondent URL indicates that Respondent plans to use the <usaaclaims.com> domain name in connection with commercial activities relating to insurance claims concerning antique automobiles. Complainant is a specialty insurer of antique automobiles (among others) under its well-known USAA mark.

On January 27, 2000, a representative of Respondent replied to Complainant’s initial communication via letter, stating that Respondent "is receptive to entertain bids for ownership" of the domain name.

On March 30, 2000, Complainant replied to Respondent’s communication of January 27, 2000 via letter, offering to "reimburse (Respondent) for the actual cost of registering (the domain name) in exchange for transfer of the domain name to (Complainant)" and requesting that Respondent provide "an accounting of (Respondent’s) costs incurred in registering the domain name and all documentary support therefor."

On April 4, 2000, Respondent’s representative replied to Complainant’s March 30, 2000 communication via letter, declining Complainant’s offer to reimburse Respondent for Respondent’s documented out of pocket expenses relating the domain name in exchange therefor and stating that Respondent "might be receptive to alternate resolutions."

Respondent had no rights in the USAA mark at the time it registered the domain name. Respondent did not operate any business or non-business enterprise associated with the domain name or any similar name prior to its registration thereof.

Complainant contends that the domain name <usaaclaims.com> is identical with and confusingly similar to the USAA service marks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the domain name <usaaclaims.com> pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the domain name <usaaclaims.com> in bad faith in violation of the Policy paragraph 4(a)(iii).

Respondent presented no evidence contesting that the domain name <usaaclaims.com> is identical with or confusingly similar to the USAA service marks.

Respondent contends that he does have rights or legitimate interest in <usaaclaims.com> domain name.

Respondent contends that he has registered and used the <usaaclaims.com> domain name in good faith.

Identity or Confusing Similarity

The Respondent has not contested Complainant’s assertion that the domain name <usaaclaims.com> is identical or confusingly similar with Complaint’s service marks USAA. Nevertheless, the Presiding Panelist hereby reviews the evidence as presented to analyze whether Complainant has met its burden in proving this element of its claim.

The service marks of Complainant contain the phrase "USAA" which is common, but not identical, with the second level of Respondent’s domain name "usaaclaims." Therefore, Complainant must show "confusing similarity" between its service marks USAA and Respondent’s use of "usaaclaims."

Complainant’s USAA sevice mark is a fanciful and strong mark. The mark is uniquely associated with Complainant in the insurance and financial fields. The USAA service mark enjoys a significant degree of market place strength as the result of Complainant’s long and extensive use thereof in connection with its insurance and financial service offerings. Consumers readily associate the USAA mark with Complainant as the result of its prominent brand name status in the market place for insurance and financial products.

Claims handling is a part of the regular business of any insurer. Because the term "claims" enjoys a particular significance as combined with Complainant’s well known USAA mark and name, Respondent’s use thereof in forming the <usaaclaims.com> domain name not only fails to distinguish the name from the mark, but in fact creates the deceptive impression that the domain name identifies a website where Complainant’s insureds may obtain information about submitting claims or submit claims to Complainant for payment.

Therefore, the Presiding Panelist finds that the domain name <usaaclaims.com> is confusingly similar to the service marks USAA pursuant to the Policy paragraph 4(a)(i).

The evidence demonstrates that prior to this dispute arising Respondent did not use the domain name <usaaclaims.com> nor did the domain name resolve to any website or other online presence.

After the dispute arose, Respondent posted content on the website relating to antique automobiles. Respondent asserts that the original concept in registering the <usaaclaims.com> domain name was to create a place to exchange information concerning antique automobiles. The wesite was to be a place for enthusiasts to gather and exchange information as to antique automobiles (maintenance, display, acquisition, insurance, resource information, etc.). The website was to be part of Respondent’s hobby along with www.britishleyland.com.

Respondent has not shown any demonstrable evidence of an intent to use the domain name <usaaclaims.com> or the website www.usaaclaims.com for its own purposes prior to the dispute arising with Complainant.

Respondent asserts that Complainant has no more right to the <usaaclaims.com> domain name than the Urban Superintendent Association of America (www.usaa.org) or United States Achievement Academy (www.USAA-Academy.com) or any other entity using the initials "USAA" in whole or in part. The issue of whether confusing similarity may exist with other domain names is beyond the scope of this dispute. The possibility of confusing similarity with other domain names does not confer upon Respondent rights or legitimate interest in the disputed domain name <usaaclaim .com>.

Therefore, the Presiding Panelist finds that Respondent has no rights or legitimate interest in the domain name <usaaclaims.com> pursuant to the Policy paragraph 4(a)(ii).

Respondent was on constructive notice of Complainant’s federally registered USAA service mark prior to registering the domain name <usaaclaims.com>. With knowledge of Complainant’s federally registered USAA service mark, Respondent registered that mark as a domain name in conjunction with other wording tending to create an association with Complainant’s business.

Prior to receiving notice of Complainant’s objections to Respondent’s registration of the domain name, Respondent placed the following disclaimer at the URL identified by the domain name: "This site has no affiliation with USAA Insurance." Therefore, Respondent had constructive and actual knowledge of the existence of Complainant’s use of the "USAA" name.

Respondent made no use of the disputed domain name prior to receiving notice of Complainant’s objections to Respondent’s registration thereof. Complainant first notified Respondent of Complainant’s objections to Respondent’s registration of the domain name via letter dated letter dated January 19, 2000.

Upon receiving Complainant’s objections, Respondent immediately solicited a "bid" for the purchase of the domain name. When Complainant offered only to reimburse Respondent for its documented out of pocket expenses relating to the domain name in exchange therefor, Respondent declined Complainant’s offer with a statement that it "might be receptive to alternate resolutions."

These facts and circumstances demonstrate that Respondent registered the domain name for the primary purpose of selling or otherwise transferring the domain name registration to Complainant service mark owner for valuable consideration in excess of Respondent’s out of pocket costs directly related thereto.

Therefore, the Presiding Panelist finds that Respondent has registered and used the domain name <usaaclaims.com> in bad faith pursuant to the Policy paragraph 4(a)(iii).

The Presiding Panelist concludes (a) that the domain name <usaaclaims.com> is confusingly similar to the service mark USAA, (b) that Respondent has no rights or legitimate interest in the domain name and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <usaaclaims.com> be transferred to Complainant USAA.

Richard W. Page
Presiding Panelist

Dated: June 26, 2000