Transamerica Corporation v. domstrad.com c/o J donoghue aka James Donoghue
Claim Number: FA0801001140400
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce
A. McDonald of Schnader Harrison Segal & Lewis LLP,
Washington, DC, USA. Respondent
is domstrad.com
c/o J donoghue a/k/a James
Donoghue (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <transamericawarranty.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and <transamwarranty.com> and <transamericatrek.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 25, 2008; the National Arbitration Forum received a hard copy of the Complaint January 25, 2008.
On February 5, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <transamericatrek.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. On February 15, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <transamwarranty.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 26, 2008, Direct Information Pvt Ltd d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <transamericawarranty.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 2008, 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@transamericawarranty.com, postmaster@transamwarranty.com and postmaster@transamericatrek.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <transamericawarranty.com>, <transamwarranty.com>, and <transamericatrek.com>, are confusingly similar to Complainant’s TRANSAMERICA mark.
2. Respondent has no rights to or legitimate interests in the <transamericawarranty.com>, <transamwarranty.com> and <transamericatrek.com> domain names.
3. Respondent registered and used the <transamericawarranty.com>, <transamwarranty.com> and <transamericatrek.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Transamerica Corporation, is a leading provider of insurance, investment and retirement services, operating through a network of wholly owned subsidiaries and operating divisions. Complainant has used its TRANSAMERICA mark and name since at least 1929, and has spent substantial sums of money to advertise the mark. Complainant holds several registrations with the United States Patent and Trademark Office (“USPTO”) for the TRANSAMERICA mark, including service mark Registration Number 718,353, issued July 11, 1961.
Respondent registered the <transamericawarranty.com>domain name August 12, 2007, the <transamwarranty.com> domain name December 26, 2006, and the <transamericatrek.com> domain name November 1, 2007. The disputed domain names resolve to websites containing hyperlinks to various third-party websites, some of which are seek to compete directly with Complainant.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant’s registration of the TRANSAMERICA mark with the USPTO satisfies the requirements of Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in hold that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant has alleged that the <transamericawarranty.com>, <transamwarranty.com> and <transamericatrek.com> domain names are confusingly similar to its TRANSAMERICA mark under Policy ¶ 4(a)(i). The <transamericawarranty.com> domain name contains Complainant’s mark in its entirety with the addition of the descriptive term “warranty.” The <transamwarranty.com> and domain name contains a shortened version of Complainant’s mark, and again adds the term “warranty.” Finally, the <transamericatrek.com> domain name contains Complainant’s mark in its entirety with the addition of the generic term “trek.” Moreover, all of the disputed domain names contain the generic top-level domain “.com.” The Panel finds that none of the disputed domain names are sufficiently distinct to avoid a finding of confusingly similarity to Complainant’s mark under Policy ¶ 4(a)(i). See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant must present a prima facie case under Policy ¶ 4(a)(ii) that Respondent lacks all rights and legitimate interests with respect to the <transamericawarranty.com>, <transamwarranty.com> and <transamericatrek.com> domain names. Once Complainant has presented a sufficient case, as the Panel finds it has done here, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests with regards to the disputed domain names. Respondent has not replied to the Complaint, and in such circumstances the Panel may assume Respondent lacks all rights and legitimate interests in the transamericawarranty.com>, <transamwarranty.com> and <transamericatrek.com> domain names.
However, although not required to do so, this Panel examines the record pursuant to a Policy ¶ 4(c) analysis before making a final determination. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The use of the websites that resolve from the <transamericawarranty.com>, <transamwarranty.com> and <transamericatrek.com> domain names to display hyperlinks to various, third-party websites, some of which are in direct competition with Complainant, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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).”).
Additionally, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii), as there is no indication in the WHOIS information, or elsewhere in the record, that Respondent has ever been commonly known by the disputed domain names or authorized by Complainant to use its mark. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <transamericawarranty.com>, <transamwarranty.com>
and <transamericatrek.com> domain names is presumably for
commercial gain, through the accrual of click-through fees from the hyperlinks
on the resulting websites. Additionally,
the nature of the disputed domain names and the resulting websites are capable
of causing confusion as to Complainant’s affiliation with the <transamericawarranty.com>, <transamwarranty.com>
and <transamericatrek.com> domain names and corresponding
websites. The Panel finds this to be sufficient
evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also Am. Online, Inc. v. Tencent Commc’ns Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the
respondent registered and used a domain name confusingly similar to the complainant’s
mark to attract users to a website sponsored by the respondent).
The Panel finds that Complainant satisfied 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 <transamericawarranty.com>, <transamwarranty.com> and <transamericatrek.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 1, 2008
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