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United Services Automobile Association v. Ang Wa Assoc. [2004] GENDND 1174 (29 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

United Services Automobile Association v. Ang Wa Assoc.

Case No. D2004-0535

1. The Parties

The Complainant is United Services Automobile Association, San Antonio, Texas, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.

The Respondent is Ang Wa Assoc., Paris, France.

2. The Domain Name and Registrar

The disputed domain name <fixusaa.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2004. On July 21, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same date, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 29, 2004. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2004. The Respondent did not timely submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2004.

Meanwhile, between August 15, 2004 to September 22, 2004, the Center received various e-mails communications from Respondent. Throughout these different communications and remarks, Respondent submitted a Motion for Expedited Arbitration and Response to Respondent’s i.e. Motion for Time to prepare and submit an answer, Motion to adjourn, Motion to change caption and Motion for leave to make changes to the registration of <fixusaa.com> and Motion to Recuse.

On August 23, 2004, Complainant objected Respondent’s request for additional time to submit its Response by email to the Center.

Complainant responded to the various on August 24, 2004.

On same date, the Center sent a notification of Respondent’s default to submit a proper Response.

On August 29, 2004, the Center received the Answer to the Complainant’s Motion for expedited Arbitration.

The Center appointed Jacques A. Léger Q.C. as the sole panelist in this matter on August 31, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On September 8, 2004, the Panel received a Response to the Complaint by e-mail directly from the Respondent.

The Panel rendered a Panel Procedural Order to accept the Response of September 8, 2004, even though Respondent has been notified of its default, also permitted an Answer to the Response within seven (7) days by the Complainant; all of this to ensure due process.

On September 22, 2004, Respondent filed a Motion to Recuse the Panel on the basis of bias.

The Center received Complainant’s Response to Respondent’s Motion to Recuse on September 23, 2004.

On same date, Respondent filed an Answer to Complainant’s Reply to Respondent’s Motion to Recuse and a Sur Reply.

4. The Motion to Recuse

Under the Rule 6(a) of the Policy, the Panel is appointed from a list of Panelists by the Center, which is required to maintain and publish a publicly available list of Panelists and their qualifications. Moreover, the appointed Panel must be impartial and independent and therefore shall disclose to the Center any circumstances giving rise to justifiable doubt as to the Panelist’s impartiality or independence, before accepting appointment (See Rule 7). In the present case, Respondent files a Motion to Recuse the Panelist on the grounds of bias or an appearance of partiality arising from his status as an attorney with practice focused on prosecution, enforcement and litigation concerning Intellectual Property matters.

In fact, Respondent has argued that the appointed Panelist has demonstrated personal bias towards the Complainant, as to his practice and professional status of Queen’s Counsel. To demonstrate personal bias for or against one of the parties, the Panelist must have a financial interest in the outcome of the dispute, or represent or have represented one of the parties or a third party in a dispute with one of the parties. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001). In the present case, there is absolutely no financial interest, present or past, of representation of Complainant. Furthermore, the Respondent does not bring forward substantial evidence of such interest or representation. In regard to the status of Queen’s Counsel, the Panelist is domiciled in Canada, which is part of the Commonwealth Realms where the Queen Elizabeth II is the Head of the State. In general, the Queen’s Counsels are barristers appointed to be one of Her Majesty’s Counsel learned in law. They do not constitute a separate order or degree of lawyers. In any event as far as Canada is concerned this appointment is made under Government Ordering Counsel, to recognize professional qualifications, such status being recognized by the Canadian Courts.

Interestingly, Respondent filed the Motion to Recuse after the Panel granted leaves to Respondent to file a Response, notwithstanding the default notice recorded by the Center.

The Panel has weighted with great care the Motion to Recuse, bearing in mind the necessity to preserve due process, transparency and appearance of justice. However, it is incumbent upon the party raising it to demonstrate a bias, which Respondent has failed to do.

Consequently, having found no valid circumstances calling for this Panel to recuse himself from the present dispute, said motion is dismissed and the Panel will therefore proceed to render its final decision.

5. Factual Background

The Complainant owns various USAA (the “USAA” mark) registered trade marks and designs under U.S. Registration Nos. 0805620, 0927536, 1594533, 1593408, 1607611, 1592395, 1593409, 1590157, 1594579, 1614221, 1712134, 1935591, 1943955, 2396376, 2423168, 2319728, 2341954 and 2355486 (See Exhibit C of the Complaint).

The Complainant also owns several domain names that contain its “USAA” mark: <myusaa.com>; <usaa-sucks.com>; <usaa.com>; <usaa.net>; <usaaclaims.com>; <usaaedfoundation.com>; <usaaedfoundation.org>; <usaafoundation.org>; <usaafsb.com>; <usaarealco.com>; <usaarealcoclient.com>; <usaarealestatecompany.com>; <usaarealty.com>; <usaasucks.com> (See Exhibit D of the Complaint).

The Respondent registered the <fixusaa.com> domain name on May 22, 2003. (See Exhibit A of the Complaint)

The <fixusaa.com> domain name is registered under “Ang Wa Assoc.”; in fact both parties acknowledge that Robert J. Koenig is the publisher and owner of <fixusaa.com> domain name.

6. Parties’ Contentions

A. Complainant

Complainant alleged the following contentions:

Identical or Confusingly Similar

Complainant benefited a favorable Judgment from Judge Janet Littlejohn and an Order to Enforce the Final Judgement from Judge Michael Peden, both from the Bexar County (Texas, USA) District Court, that encumber the Respondent to transfer any domain names including the acronym “USAA”.

Respondent is using fixusaa.com domain name that includes the acronym “USAA”.

Rights or Legitimate Interests

Respondent has not demonstrated use of the domain name <fixusaa.com> in connection with a bona fide offering of goods or services.

Respondent is not currently using the domain name <fixusaa.com> in connection with any goods or services.

Respondent has not been commonly known by the domain name nor does Respondent operate entities that utilize the domain name.

Registered and Used in Bad Faith

The sole purpose and use of fixusaa.com domain name is to slander, spread injurious falsehoods about, and hurl epithets against USAA, its former and current employees, the current and former members of its Board of Directors, and its attorneys.

Respondent “Ang Wa Assoc.” registered the domain name <fixusaa.com> in bad faith because Robert J. Koenig is the sole publisher and owner of the domain name.

By using <fixusaa.com> domain name, Mr. Robert J. Koenig violated Judge’s Janet Littlejohn of Bexar Country (Texas, USA) District Court Final Judgment and Judge’s Michael Peden of Bexar County (Texas, USA) District Court Order to Enforce Final Judgment (See Exhibits F and G of the Complaint).

B. Respondent

The Respondent alleged the following contentions:

- Robert J. Koenig is the beneficial owner and publisher of <fixusaa.com>;

- The technical details of the identity of the Registrant are beyond the jurisdiction of the WIPO;

- It is the Respondent’s right to designate a nominee URL registrant and beyond the jurisdiction of the WIPO which concerns itself with intellectual property;

- This is just a case of large international law firm being suborned to look the other way as to (sic) the legal merits of a matter: and to sit in plush fully equipped offices while they reach out to commit vexatious harassment on an author who writes certain truths their client doesn’t like;

- Every allegation by Complainant as to some sort of common law trademark entitlement(s) in the letter sequence “usaa”, as made by the Complainant, is rejected out of hand;

- Every other allegation in the Complaint is so far beyond the jurisdiction of this body as to be beyond cavil;

- Core to copyright protection is the fundamental idea that only adjective phrases may be trademarked;

- Fixusaa.com has the letter sequence “usaa” as the “thing:, the “object” (accusative case), and the non-trademarked “thing” which I desire to “fix” (a verb) by publishing the truths exhibited on the web site;

- This action before the WIPO is all about Robert G. Davis trying to stop me from telling my story: and that is no basis for any WIPO action, especially this one.

7. Discussion and Findings

First and foremost, the mandate of World Intellectual Property Organization Arbitration and Mediation Center is to administer the proceedings within the legal framework for the resolution of disputes between a domain name registrant and a third party over the abusive registration and use of an Internet domain name in the gTLDs, its role is restricted to the scope of domain name dispute only. Consequently, it is not and should not be the forum for perpetual procedural recrimination nor highly emotional dispute between parties. One of the function of WIPO is to maintain a roster of Panelists from which is selected independent individuals who’s role is to receive, examine and rule on Complaints filed with the WIPO Arbitration and Mediation Center acrredited by ICANN. Appointed Panel members have an obligation to reach a conclusion, within the time allowed by the rules, on the sole basis of the allegation and/or the evidence submitted by the parties, regardless of the causes or the motivation of the dispute.

This being said, under Paragraph 4(a) of the Policy, the Complainant has the burden of proving cumulatively each of the three following elements:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights; and

(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith by the Respondent.

The Complainant must meet these cumulative requirements, for each of the Domain Names on a balance of probabilities.

These three elements are considered below.

A. Identical or Confusingly Similar

Notwithstanding the finding reached by the Panel that <fixusaa.com> domain name is not identical to the USAA mark, Panel finds that it is confusingly similar to Complainant’s mark. It is a well recognized principle that the addition of a prefix or a suffix such as “fix” does not diminish the impact of the presence of the USAA mark in the domain name. See Koninklijke Philips Electronics v. Kurapa C. Kang, WIPO Case No. D2001-0163 (March 27, 2001). Generally, the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical OR confusing similarity for purposes of applying the Policy. See Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903 (November 6, 2001); Nikon, Inc. v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2000), see also Magnum Piering, Inc. v. Mudjackers & Wilson, WIPO Case No. D2000-1525 (January 29, 2001).

Moreover, “fix” could have a pejorative meaning depending of the context. The evidence submitted by Complainant has shown that “www.fixusaa.com” is primarily established as a criticism site about Complainant and hence, in this context “fix” has a pejorative connotation. The Panel agrees with the views express by other panels in previous cases that a pejorative phase added to a registered trademark is likely to result in a confusingly similar domain name. See for instance Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol, WIPO Case No. D2000-0996 (October 27, 2000); see also Piab AB v. EDCO USA Inc., WIPO Case No. D2002-0059 (March 13, 2002) and America Online v. Johuathan Investments Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918 (September 14, 2001).

Further, whenever a domain name is not identical but confusingly similar to a Complainant’s mark in the format (whether trademark – word or word – trademark) then the degree of potential confusion may differ markedly in the light of factual circumstances of the case. In the present case, “fix” being a three letter word and USAA a mark, there is undeniably likelihood that confusion may arise for the unwary ordinary Internet user. See Covance Inc. and Covance Laboratives Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 (April 30, 2004); see also Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (December 9, 2000).

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

The Panel agrees with Complainant’s contention that Respondent failed to show, on balance, that it has rights or legitimate interests with respect to its exploitation of <fixusaa.com> domain name.

From the evidence submitted, Respondent appears to have no intention of using the domain name in connection with a bona fide offering of goods or services nor does he appears to have been commonly known by the domain name.

On the other hand, the evidence has clearly shown that Respondent is using the domain name to openly criticize the Complaint’s behaviours against him. The Panel adopts to the conclusion in Covance Inc. and Covance Laboratives Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 (April 30, 2004):

“The overriding purpose of the Policy is to prevent cybersquatting in favour of legitimate trade mark owners but in doing so paragraph 4(c)(iii) of the policy clearly seeks to balance the trade mark owner's right against the rights of a domain name owner in circumstances where use of the trade mark as part of the domain name is truly for the purposes of criticism and the domain name owner in no way seeks to make a commercial use of the trade mark or to tarnish it. Nowhere is it expressly anticipated by the Policy that this paragraph may not operate if the domain name at issue is found to be identical or confusingly similar to the Complainant's trade mark.

However where the relevant criticism site is not based in the United States, the effect, as noted by Mr. Bernstein, of following the consensus Panel view is that once a Panel has found a domain name to be identical or confusingly similar to the Complainant's trade mark the domain name necessarily cannot qualify as being used for “legitimate” or “fair use” purposes. No matter that the Respondent’s website may be truly a criticism site which in no way uses the trade mark in a trade mark sense, or seeks to divert custom from, or tarnish the Complainant.”

In regard to the allegation as to the freedom of speech invoked by Respondent, the Panel adopts the conclusions in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Robriguez, WIPO Case No. D2002-0823 (December 3, 2002):

“It must be balanced with some degree of control, manner and regulation to avoid the arising of abuses; limits must be set. Moreover, Respondent neither specify nor explain Complainant’s reprehensible behaviour on their website. Without support, this innuendo serves no purpose other than to potentially tarnish the reputation of Complainant and his trademark.”

The Panel also adopts the finding in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Robriguez, WIPO Case No. D2002-0823 (December 3, 2002):

“While one must concede that criticism per se is not a commercial use that a criticism site may well be entirely legitimate, an argument can be made that a non controlled use can be anti-commercial when it has the effect of driving regular customers away from one’s business. Having said that, the Panel also noted that the Respondents have used domain names that are identical and substantially similar to Complainant’s trademarks. Respondent’s can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainants’ marks. Given the free nature of media which is the Internet and the chaotic spamming that has become epidemic, it does not appear that one can be at full liberty to use someone else’s trade name or trademark by simply claiming the right to exercise a right to freedom of expression. Surely, this right can be fully exercised otherwise than using someone else’s identical or substantially similar trade name or trademark.”

The Panel is of the view, on balance of probabilities, that in the present case, the prefix “fix” is an attempt to tarnish the USAA mark, thus distracting some Internet users from the Complainant’s website.

Consequently, the Panel finds that Complainant has discharged its burden as required by paragraph 4(a)(ii) of the Policy to show that Respondent has no rights or legitimate interests in <fixusaa.com>.

C. Registered and Used in Bad Faith

It is quite difficult, usually, if not impossible to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once Complainant presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be ascribed to bad faith. The Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration or the use of the disputed domain name relies squarely on the shoulders of the Complainant, such obligation is only to make out a prima facie case; once it has done so, the Panel may find, in certain circumstances, that there is a shift of onus in which case is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary).

In the present case, Complainant has done so, Respondent has failed to submit a reasonable explanation other than rebutting WIPO’s jurisdiction in that matter, and therefore the Panel does draw negative inference. (See Six Continents Hotels Inc. v. Patrick Ory, WIPO Case No. D2003-0098 and Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206).

In the Panel’s view, the addition of the prefix “fix” is an attempt to tarnish the mark.

Furthermore, Respondent was and still is violating a legitimate Settlement Agreement between Mr. Robert J. Koenig and Mr. Duane Divich. On August 26, 2002, the Settlement was homologated by Judge Janet Littlejohn of the Bexar County (Texas, USA) District Court and stated that Mr. Robert J. Koenig:

1. Irrevocably transfer any domain names including the acronym “USAA”;

2. Permanently shutdown the operation of any website he operated or has operated, whether in the past, present, or future, that criticizes, concerns or discusses (1) USAA; (2) any current or former employee of USAA; (3) any current or former member of USAA’s Board of Directors; or (4) any third party consultant, accountant, or attorney, employed by USAA; and

3. Not publish, in manner, directly or through any third party, any statement or communication that criticizes (1) USAA; (2) any current or former employee of USAA; (3) any current or former member of USAA’s Board of Directors; or (4) any third party consultant, accountant, or attorney, employed by USAA. (See Exhibit F of the Complainant)

Although Respondent is not the official registrant of <fixusaa.com>, he posted that he is at least the publisher and therefore in violation of a Court Order. In addition, the Complainant filed a Motion in the Divich case seeking enforcement of the Final Judgment. On January 5, 2004, Judge Michael Peden of Bexar County (Texas, USA) District Court Issued an Order to Enforce Final Judgment (See Exhibit G of the Complaint). Judge Peden ordered Mr. Koenig to do as follows:

1. Immediately and irrevocably transfer any registered domain name within his possession, custody or control, whether direct or indirect, that includes the acronym “USAA” to USAA;

2. Immediately and permanently shutdown the operation of <fixusaa.com>;

3. Immediately and permanently shutdown the operation of any website concerning or mentioning USAA, any current or former employee of USAA, any current or former member of USAA’S Board of Directors, or any third party consultant, accountant or attorney employed by USAA.

While it is not up to the Panel to reconsider the validity of the actual Settlement nor the Order to Enforce it, it certainly is quite proper to consider or acknowledge their existence, if only to qualify the Respondent’s behaviours in the present case.

Maintaining a domain name that is highly critical of Complainant or its Board of Directors does not per se lead to a conclusion of bad faith. However, it is indisputable that use of a domain name that is confusingly similar a trademark in conjunction with the violation of a Court Order restraining such use (as long as it is in force) does constitute use in bad faith, and the Panel so finds.

8. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that <fixusaa.com> be transferred to the Complainant.

Jacques A. Léger Q.C.
Sole Panelist

Dated: September 29, 2004