Transamerica Corporation v. Transamerica Financial Group c/o Agustino Morales
Claim Number: FA0810001227506
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 <transamericafinancialgroup.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2008.
On October 2, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <transamericafinancialgroup.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 5, 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@transamericafinancialgroup.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
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 <transamericafinancialgroup.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <transamericafinancialgroup.com> domain name.
3. Respondent registered and used the <transamericafinancialgroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Transamerica Corporation, has used its TRANSAMERICA mark as their principle service and trademark since 1929 and holds several tradmark registrations with the United States Patent and Trademark Office (“USPTO”) for the TRANSAMERICA mark (i.e., Reg. No. 718,353 issued July 11, 1961) in connection with a variety of services, including financial advising, insurance, and corporate consulting.
Respondent registered the <transamericafinancialgroup.com> domain name on February 21, 2008. Respondent is using the disputed domain name
to advertise vacation homes and other real estate investment opportunities in
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.
The Panel finds that Complainant’s registrations of its TRANSAMERICA mark with the USPTO are sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <transamericafinancialgroup.com> domain name incorporates Complainant’s
TRANSAMERICA mark in its entirety and adds the generic terms “financial group”
and the generic top-level domain “.com.”
The addition of generic terms to Complainant’s registered mark typically
renders the disputed domain name confusingly similar to the mark, and the use
of the generic top-level domain “.com” is without significance to this
analysis. Respondent’s <transamericafinancialgroup.com>
domain name is therefore confusingly similar to Complainant’s TRANSAMERICA mark
pursuant to Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds that Respondent, who is operating a website and is incorporated as “Trans America Financial Group” is insufficient, without additional proof from Respondent, to prove it is commonly known by the <transamericafinancialgroup.com> domain name under Policy ¶ 4(c)(ii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . , there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”); see also Hewlett-Packard Co. v. HP Supplies, FA 282387 (Nat. Arb. Forum July 22, 2004) (“The Panel finds, because of the prominence of the HP mark, that Respondent’s registration under the ‘HP Supplies’ name does not establish that Respondent is commonly known by the <hpsupplies.com> domain name.”).
Respondent is using the <transamericafinancialgroup.com> domain name to sell vacation homes in
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the confusingly similar <transamericafinancialgroup.com> domain name to direct Internet users to its unrelated
commercial website for financial gain through use of Complainant’s mark is bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain
name that incorporates another's mark with the intent to deceive Internet users
in regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also Hancock Fabrics, Inc. v. Active Advantage,
Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s
use of the <hancockfabric.com> domain name, a domain name confusingly
similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to
a website that provides a selection of jokes demonstrates Respondent’ bad faith
use of the disputed domain name because Respondent has created a likelihood of
confusion as to the source, sponsorship, affiliation or endorsement of
Respondent’s website, which evidences bad faith registration and use under
Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant has 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 <transamericafinancialgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 24, 2008
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