United Services Automobile Association v. Net Enterprise Technologies

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

USAA v.

NET ENTERPRISES TECHNOLOGIES

Case No.

D2000-0391

1. The Parties

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.

2. The Domain Name(s)

and Registrar(s)

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.

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

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.

6. Discussion and Findings

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).

Rights or Legitimate Interest

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).

Bad Faith

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).

7. Decision

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

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