Transamerica Corporation v.
Transport Corporation of America, Inc. c/o Domain Administrator
Claim Number: FA0812001238278
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@transamericaannuities.com, postmaster@transamericafinancialservices.com, postmaster@transamericaretirementservices.com, and postmaster@transamericaoccidentallife.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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
The Response states as follows “Transport Corporation of
FINDINGS
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.
DISCUSSION
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.
The Panel
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.
DECISION
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
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