Transamerica Corporation v. Mary Taylor
Claim Number: FA0809001223542
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce
A. McDonald, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <transamerinc.com>, registered with Netfirms, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 30, 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@transamerinc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <transamerinc.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <transamerinc.com> domain name.
3. Respondent registered and used the <transamerinc.com> domain name 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. Complainant has operated under the
TRANSAMERICA mark since 1929, and first registered the mark with the United
States Patent and Trademark Office (“USPTO”) on
Respondent registered the <transamerinc.com>
domain name on
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 provided evidence of numerous service mark registrations of the TRANSAMERICA mark with the USPTO. The Panel finds this evidence sufficient to confer rights in the mark to Complainant for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Seiko Epson Corp. & Epson Am., Inc. v. AOS Web Com, Inc., FA 823033 (Nat. Arb. Forum Nov. 27, 2006) (“Seiko Epson has long established rights in the distinctive mark EPSON through use and through numerous United States and other trademark and service mark registrations.”).
Respondent’s <transamerinc.com>
domain name contains a modified version of Complainant’s TRANSAMERICA
mark. Specifically, the disputed domain
name removes the “a,” and adds the common abbreviation “inc” for
“incorporated.” It is conceivable that
Internet users would believe that the corresponding website is associated with
Complainant’s business based on the nature of the disputed domain name given
the prominent use of “incorporated” or “inc” in a business name. More importantly, the overall impression of
the disputed domain name remains Complainant’s mark despite the omission of the
letter “a.” It is also necessary to note
that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant
to this analysis under the UDRP since top-level domains are required of all
domain names. Based on this analysis,
the Panel concludes that Respondent’s <transamerinc.com>
domain name is confusingly similar to Complainant’s TRANSAMERICA mark pursuant
to Policy ¶ 4(a)(i).
See Compaq Info. Techs. Group,
L.P. v. Seocho, FA 103879 (Nat. Arb.
Forum Feb. 25, 2002) (finding that the domain name <compq.com> is
confusingly similar to the complainant’s COMPAQ mark because the omission of
the letter “a” in the domain name does not significantly change the overall
impression of the mark); 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 Gardline Surveys Ltd. v. Domain
Fin. Ltd., FA 153545 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <transamerinc.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Panel can find no evidence in the record, including the
WHOIS information (which identifies Respondent as “Mary Taylor”) to indicate
that Respondent is commonly known by the <transamerinc.com>
domain name. Consequently, the Panel
finds that Respondent lacks rights and legitimate interests pursuant to Policy
¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also Instron Corp.
v. Kaner, FA 768859 (Nat. Arb. Forum
Sept. 21, 2006) (finding that the respondent was not commonly known by the
<shoredurometer.com> and <shoredurometers.com> domain names because
the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic
Equip’t as the registrant of the disputed domain name and there was no other
evidence in the record to suggest that the respondent was commonly known by the
domain names in dispute).
Respondent’s <transamerinc.com> domain name redirects Internet users to a website that purportedly offers loan and other financial services under the TRANSAMERICA mark. However, Respondent is not affiliated with Complainant in any way. In essence, Respondent is attempting to pass itself off as Complainant in order to defraud Complainant’s customers. Furthermore, Respondent is phishing for Complainant’s customers’ confidential personal and financial information. Such use of the <transamerinc.com> domain name certainly evidences neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is using the <transamerinc.com>
domain name to divert Internet users seeking Complainant’s financial services
to Respondent’s own website that appears to offer the same or similar
services. Respondent is attempting to
confuse Internet users as to the source of these services and profit from this
confusion through the goodwill associated with Complainant’s TRANSAMERICA mark. Such registration and use of the <transamerinc.com> domain name is
evidence of bad faith under Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb.
Forum
Respondent used the <transamerinc.com>
domain name to engage in a phishing scam, misdirecting Internet users seeking
Complainant’s genuine website to Respondent’s website. By imitating Complainant’s genuine website,
Respondent is passing itself off as Complainant and deceiving Complainant’s
Internet customers in an attempt to encourage them into divulging sensitive
personal information. Thus, Respondent’s
use of the <transamerinc.com>
domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs.,
Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a
domain name that “is confusingly similar to Complainant’s mark, redirects
Internet users to a website that imitates Complainant’s billing website, and is
used to fraudulently acquire personal information from Complainant’s clients”
is evidence of bad faith registration and use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat.
Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamerinc.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 21, 2008
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