Transamerica Corporation v. Transport Corporation of America, Inc. c/o Domain Administrator
Claim Number: FA0812001238278
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce
A. McDonald, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <transamericaannuities.com>, <transamericafinancialservices.com>, <transamericaretirementservices.com>, and <transamericaoccidentallife.com>, registered with Nameview, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 12, 2008.
On December 18, 2008, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <transamericaannuities.com>, <transamericafinancialservices.com>, <transamericaretirementservices.com>, and <transamericaoccidentallife.com> domain names are registered with Nameview, Inc. and that the Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 December 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 20, 2009 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A Response was received on January 5, 2009, but was determined to be deficient under ICANN Rule 5 because no hard copy was received before the Response deadline.
On January 9, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is a financial services company with multiple U.S. service mark registrations covering the name “TRANSAMERICA,” including “TRANSAMERICA OCCIDENTAL LIFE,” in connection with life insurance, investment and retirement services, operating through a group of subsidiaries and marketing divisions. The disputed domain names were, until the initial filing of this complaint, used for pay-per-click websites that advertised the name “TRANSAMERICA” in connection with life insurance, investment and retirement services. Ownership of the names at that time was concealed by means of the Registrar’s “proxy service” under the name “Whois Identity Shield.” In response to that filing, the registrar identified Respondent as owner of the disputed domain names. Communications with Respondent revealed it to be a reputable company with no knowledge about the disputed names or other involvement in this manner.
The Response states as follows “Transport Corporation of
1. Complainant is in possession of numerous service mark registrations for the word TRANSAMERICA with the United States Patent and Trademark Office registered as early as 1961. In addition to TRANSAMERICA, standing alone, registrations include TRANSAMERICA and additional words such a retirement, life, reinsurance, occidental life, portfolio planner and other terms describing Complainants financial services.
2. The disputed domain names, <TRANSAMERICAANNUITIES.COM>, <TRANSAMERICAFINANCIAL SERVICES.COM>, <TRANSAMERICARETIREMENTSERVICES.COM, and <TRANSAMERICAOCCIDENTALLIFE.COM> are confusingly similar to service marks in which Complainant has rights.
3. The Response will be considered even though deficient under Forum rules because it seems reasonable under the circumstances and Respondent’s position dictates the direction the Panel will take in this decision.
4. Complainant accepts Respondent’s contention that Respondent did not register the disputed domain names, and claims no interest in the domain names. The Panel finds no reason or evidence to dispute this position and accepts Respondent’s explanation as undisputed.
5. The disputed domain names are transferred to Complainant.
In cases where there are no disputed issues between Complainant and Respondent, it is unnecessary to conduct a full analysis in the usual manner. Where both Complainant and Respondent agree that Respondent has no rights to or legitimate interests in the disputed domain names and that Respondent has not acted in bad faith, no analysis of these issues is appropriate.
finds that the disputed domain name <TRANSAMERICAOCCIDENTALLIFE.COM>
is identical to Complainant’s TRANSAMERICA OCCIDENTAL LIFE mark. The domain names <TRANSAMERICAANNUTIES.COM>,
<TRANSAMERICARETIREMENTSERVICES.COM> and <TRANSAMERICAFINANCIALSERVICES.COM> are confusingly similar
to Complainant’s TRANSAMERICA mark. The disputed domain names each differ from
Complainant’s mark in two ways: (1) in each case a descriptive term has been
added to the end of the mark, and (2) the generic top-level domain (gTLD) “com”
has been added to the mark. The addition
of a descriptive term does not sufficiently distinguish a domain name from a
registered mark for the purposes of Policy, Paragraph 4(a)(i). See
Brambles Indus. Ltd v. Geelong Car Co. Pty. Ltd. D2000-1153 (WIPO Oct. 17,
2000) finding that the domain name <bramblesequipment.com> is confusingly
similar because the combination of the two words “brambles” and “equipment” in
the domain name implies there is an association with the complainant’s
business. See also L.L. Bean, Inc. v. ShopStarNetwork, FA95404 (Nat. Arb.
Forum Sept. 14, 2000). Every domain name
must include a top level domain, thus the top level domain, such as “com” fails
to distinguish a domain name. See
The Panel finds that in this case where
Respondent offers no objection to the transfer of the disputed domain names,
disclaims any interest in the domain names and denies having registered the
domain names, it is appropriate to transfer the disputed domain names to the
Complainant who has rights in the marks to which the disputed domains are
identical or confusingly similar. This
state of facts is much like those present in cases where, there being no
contest in the response to the transfer of the disputed domains, panels have
found it proper to forego the traditional UDRP analysis and order the transfer
of the domain names. See Disney Entrs,
Inc. v. Morales, FA475191 (Nat. Arb. Forum June 24, 2005). See
also Boehringer Ingelheim Int’l GmbH v. Modern Ltd.-Cayman Web Dev. FA133625
(Nat. Arb. Forum Jan. 9, 2003) and Malev
Hungarian Airlines Ltd. v. Vertical Axis Inc. FA212653 (Nat. Arb. Forum
Jan. 13, 2004). “When it is obvious that
respondent does not oppose transfer it is proper to transfer without further
analysis.” See State Farm Mutual Auto.
Ins. Co. v. Pariasami Malain, FA705262 (Nat. Arb. Forum June 19,
2006). Where a respondent admits that he
has no past, present or future interest in a disputed domain name and has not
contested transfer of the domain “the panel may elect to forego the traditional
UDRP analysis and order the immediate transfer of the domain name.” See Eldrick “Tiger” Woods v.
Having determined that under the facts and circumstances of this case it is proper under the Policy to transfer the disputed domain names, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <transamericaannuities.com>, <transamericafinancialservices.com>, <transamericaretirementservices.com>, and <transamericaoccidentallife.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 23, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum