Transamerica Corporation v. E-Trans, LLC
Claim Number: FA0902001248692
PARTIES
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald, of Schnader Harrison Segal & Lewis LLP,
Respondent is E-Trans, LLC (“Respondent”), represented by Andrew Breines, of The Law Offices of Andrew S. Breines,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etransamerica.com>
(“Domain Name”), registered with Tucows
Inc.
PANEL
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.
CLIVE LINCOLN ELLIOTT as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 20, 2009; the National Arbitration Forum received a
hard copy of the Complaint on February 20, 2009.
On February 20, 2009, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <etransamerica.com>
domain name is registered with Tucows Inc. and that Respondent is the current
registrant of the name. Tucows Inc. has
verified that Respondent is bound by the Tucows 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 February 27, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 19, 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@etransamerica.com by e-mail.
A timely Response was received and determined to be complete on March
18, 2009.
Complainant submitted an Additional Submission to the National Arbitration
Forum on March 23, 2009, which was deemed timely in accordance with the
National Arbitration Forum’s Supplemental Rule 7.
Respondent submitted an Additional Submission to the National
Arbitration Forum on March 25, 2009, which was deemed timely in accordance with
the National Arbitration Forum’s Supplemental Rule 7.
On March 27, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that it is a
Complainant believes that after 79 years of substantial and uninterrupted use, combined with extensive advertising, the “Transamerica” name is well known to the public as a service mark that identifies Complainant and its subsidiaries as the source and origin of financial services.
Complainant
contends that Respondent is a medical
transcription services company with offices in
Complainant asserts that through its counsel
it sent a letter to Respondent on June 24, 2009 and, after receiving no
response, sent a further letter on July 23, 2008. Complainant says that its Counsel received a response
from Respondent by letter dated July 25, 2008 rejecting Complainant’s demand on
the ground that the Domain Name is not identical to Complainant’s federally
registered service marks and that the parties provide different services. Complainant says that through its counsel
they addressed those points in a letter to Respondent’s counsel dated December
9, 2008, to which they have received no response.
Complainant submits that “TRANSAMERICA” is registered as a service mark with the United States Patent and Trademark Office and such registration establishes Complainant’s rights in the mark.
Complainant
contends that Respondent’s Domain Name contains Complainant’s mark in its entirety, preceded by only the generic
prefix “e.” Complainant asserts that the
addition of a generic prefix to its registered service mark does not distinguish
the Domain Name from Complainant’s mark for purposes of confusing
similarity and therefore Complainant asserts that the Domain Name is legally identical and confusingly similar to its own mark.
Complainant accepts that the parties are not in competition and that Complainant issues health insurance whilst Respondent is a medical transcription services company.
Nevertheless, Complainant believes that there is strong support for a determination of bad faith and registration and use due to the fact that Respondent ignored the initial letter of Complainant’s counsel dated June 24, 2008, as well as also failing to respond to its letter dated December 9, 2008.
B. Respondent
Respondent states that it is a limited liability company, with its
principal place of business in Lakeville, Massachusetts, and is engaged solely
in the provision of transcription services via digital dictation transmitted
electronically from customers to it’s servers and then the transcripts are
transmitted electronically back to the customers via the Internet utilizing the
Domain Name. Respondent states that its
customers use proprietary hardware and software specifically developed for
Respondent that have embedded within the Domain Name as the means and method of
electronic delivery.
Respondent says that its principal, Eileen Peal, is a dual citizen of
the
Respondent submits that it does not dispute the timeline alleged by
Complainant and asserts that it did not ignore Complainant’s communications. Respondent asserts that it did respond to the
December 8, 2008 letter and, because Complainant’s counsel had not notified
Respondent of the relocation of its offices in that communication, Respondent’s
response was sent to the incorrect address at first. Respondent asserts the parties provide
different services to clients and customers who would not confuse the origin of
either party’s goods and services and disputes the allegations that the Domain
Name is confusingly similar or identical to Complainant’s registered trademark.
Respondent states that it has and continues to have a legitimate
interest in the Domain Name and suggests this is demonstrated by Respondent’s
continuous use of the Domain Name since its initial registration in November
2006 for the purpose of operating the E-Trans, LLC transcription business via
its website located at <etransamerica.com>. Respondent states that it chose the Domain
Name due to the manner in which it describes Respondent’s business, i.e.
“electronic,’,“transcription,” and throughout “America” and not for the purpose
of trading off of Complainant’s goodwill.
Respondent submits that the Domain Name speaks to the electronic nature
of the business, the truncated form of transcript and the fact that Respondent
has customers throughout
Respondent does not dispute that Complainant has rights to the term
“Transamerica” in the insurance and financial services industry, but denies the
assumption that such use makes “Transamerica” a famous mark. Respondent says that it denies the
allegations of the Complaint related to bad faith use or registration of the
Domain Name stating that Respondent is in a different business than
Complainant, provides specific services in a narrow field, and does not compete
with Complainant.
Respondent states that it has not registered or acquired the Domain
Name primarily for the purpose of selling renting or otherwise transferring the
Domain Name to Complainant for an amount in excess of any documented out of
pocket costs directly related to the Domain Name. Respondent states that it indicated to
Complainant that there were costs associated with any such transfer due to the
technology used by Respondent in the provision of its services that would
require a third party technician to physically reprogram each of Respondent’s
customers’ hardware and software should a new or different domain name be used
by Respondent. Respondent states that
while such costs would not be exorbitant, they would also not be insignificant.
C. Complainant’s Additional
Submissions
Complainant responded to Respondent’s submissions arguing that
Respondent in its submissions raised no genuine issue regarding the confusing
similarity between Complainant’s mark and the Domain Name or in regard to the
asserted legitimacy of Respondent’s rights and interests in that name. Complainant asserts that confusing similarity
is established because Respondent’s Domain Name is identical to Complainant’s
mark but for the prefix “e”. The prefix
“e” is a generic reference to “electronic” that is incapable of distinguishing
Respondent’s Domain Name from Complainant’s mark. Complainant also asserts that as the Domain
Name is identical to Complainant’s mark and Respondent has no trademark
interest in the name, confusing similarity would be established even if the
name “Transamerica” were not a famous mark and Complainant believes that as its
mark is extremely well known there is no genuine dispute on the issue of
confusing similarity.
Complainant submits that Respondent has no reason for wanting the name
“Transamerica” other than to appropriate the goodwill of Complainant’s mark and
believes that Respondent’s position that the Domain Name was chosen for its
descriptive properties is insufficient to overcome a finding of bad faith.
D. Respondent’s Additional Submissions
Respondent asserts that Complainant has raised no new issues of fact in
its additional submissions and reiterates its original submissions that the
Domain Name was always intended to be a marketing tool to attract potential
customers to a transcription services website that provided services throughout
FINDINGS
Having established the first but having failed to establish the second
and third elements required under the ICANN Policy, relief is denied.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Identical or
Confusingly Similar: Policy ¶
4(a)(i).
Complainant asserts
its rights in the TRANSAMERICA mark through its registrations of the mark with
the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No.
1,635,681 issued February 19, 1991). The
Panel finds that Complainant has sufficient rights in the mark under Policy ¶
4(a)(i). See Reebok Int’l Ltd. v.
Complainant asserts
that the Domain Name is
confusingly similar to Complainant’s TRANSAMERICA mark despite the addition of
the letter “e” and the generic top-level domain “.com.” The Panel sees merit in the argument that
neither addition creates a meaningful distinction under the Policy, and accordingly
that the Domain Name is confusingly similar to Complainant’s mark under Policy
¶ 4(a)(i). Respondent in turn contends that the Domain Name
is not confusingly similar to Complainant’s mark due to the parties’ distinct
industries. However, the Panel is entitled to approach the matter on the basis
that such a determination is not necessary under the Policy ¶ 4(a)(i) as this
portion of the Policy considers only whether Complainant has rights in the mark
and whether the Domain Name is identical or confusingly similar to
Complainant’s mark. However, because this argument is
inapplicable under Policy ¶ 4(a)(i), it will be addressed in Policy ¶¶ 4(a)(ii)
and (iii).
Accordingly, given that each part of the three stage test set out in the Policy ¶ 4(a)(i), (ii) and (iii) needs to be addressed the Panelist finds that the Domain Name is identical or confusingly similar to Complainant’s mark.
Rights and Legitimate
Interests: Policy ¶ 4(a)(ii).
Notwithstanding the above findings the Panel is entitled, under the
appropriate circumstances, to conclude that Complainant has not established a prima
facie case in support of its arguments that Respondent lacks rights and
legitimate interests under Policy ¶ 4(a)(ii).
See Terminal
Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the
complainant did not satisfactorily meet its burden and as a result found that
the respondent had rights and legitimate interests in the domain name under
UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
Respondent asserts that it has operated a medical
transcription service since registering the Domain Name over the Internet, and
that the resolving website is critical to its business. Respondent stresses that it never had notice
of Complainant, and chose the Domain Name to reflect its electronic
transcription services, which are provided throughout
Respondent also asserts that there is no overlap
between the parties, and that Complainant does not operate in this niche. The Panel finds that Respondent has made use
of the Domain Name in connection with what appears to be a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i). See Workshop
Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
On that basis Complainant has failed to establish this
ground.
Registration and Use
in Bad Faith: Policy ¶ 4(a)(iii).
The Panel finds that Complainant has failed to meet the
burden of proof of bad faith registration and use under Policy ¶
4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd,
FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed
to establish that the respondent registered and used the disputed domain name
in bad faith because mere assertions of bad faith are insufficient for a
complainant to establish Policy ¶ 4(a)(iii)).
Having concluded that Respondent has rights or legitimate
interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), the Panel may also
find that Respondent did not register or use the disputed domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See
Lockheed Martin Corp. v. Skunkworx
Custom Cycle, D2004-0824 (WIPO
Jan. 18, 2005) (finding that the issue of bad faith registration and use was
moot once the panel found the respondent had rights or legitimate interests in
the disputed domain name).
Respondent asserts that it has not violated any of the
Policy 4(b) factors, and that it never intended to target Complainant because:
(1) the two parties operate in distinct fields; and (2) Respondent had never
heard of Complainant as the principal officer of Respondent resided in
DECISION
Having established the first but having failed to establish the second
and third elements required under the ICANN Policy, the Panel concludes that
relief shall be DENIED.
Dated: April 20, 2009
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