Transamerica Corporation v.
One Trans-America Corporation
Claim Number: FA0903001250996
PARTIES
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 <onetransamerica.com>, registered
with Godaddy.com,
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
A timely Response was received and determined to be complete on
On April 15, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a well-known provider of life insurance, investment, and
retirement services, and holds
Complainant further alleges that Respondent lacks rights or legitimate
interests in the domain name, on the grounds that Respondent is not known by
the name, has used the domain name solely for pay-per-click advertising, and
cannot legitimately use the name for transportation services.
Finally, Complainant contends that Respondent registered and used the
domain name in bad faith. In support
thereof, Complainant claims that Respondent selected the domain name with the
intention to trade on Complainant’s goodwill, and that Respondent has attempted
to sell the domain name to Complainant.
B. Respondent
Respondent apparently is in the process of establishing a transportation-related
business involving freight brokerage. Respondent
was incorporated in the State of
Respondent denies that the disputed domain name is confusingly similar
to Complainant’s mark. Respondent claims
that it does have rights or legitimate interests in the domain name on the
grounds that it reflects Respondent’s former business name, which was
recognized by the State of
FINDINGS
The Panel finds that the disputed domain name
<onetransamerica.com> is confusingly similar to a mark in which Complainant
has rights, and that Respondent lacks rights or legitimate interests in respect
of the disputed domain name. The Panel
further finds that Complainant has failed to prove that the disputed domain
name was registered and is being used in bad faith.
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.
The disputed domain name differs from
Complainant’s mark only in that it prefaces the mark with the word “one” and
appends the generic top-level domain suffix “.com”. Neither of these additions substantially distinguishes
the domain name from the mark. Confusing
similarity for purposes of Paragraph 4(a)(i) is
determined solely by a textual comparison of the domain name and the mark,
without regard to the use to which either may be put. See
e.g. GoDaddy.com, Inc. v. Swsnet, D2007-1352 (WIPO
Complainant having made a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name, the burden shifts to Respondent to come forward with concrete evidence of
such rights or interests. See e.g. Microsoft Corp. v. John S. Dalton,
FA 747780 (Nat. Arb. Forum Aug. 23, 2006).
Respondent has discontinued the use of the name One Trans-America for
its business, and apparently never undertook any actual business under that
name, aside from early efforts to develop a corporate identity. Absent any other indications that Respondent
has a present right or interest in the name, the Panel finds that Complainant
has met its burden of proof on this issue.
Paragraph 4(a)(iii)
requires Complainant to prove that Respondent registered the disputed domain
name in bad faith, and that Respondent is using it in bad faith. Complainant’s bad faith claims rest primarily
upon two assertions: that Respondent
selected the domain name with the intention to trade on Complainant’s goodwill,
and that Respondent has attempted to sell the domain name to Complainant. Respondent denies that it acted in bad faith,
asserting that its sole purpose was to create an Internet presence for its
business, which had already been incorporated under a corresponding name.
Under the circumstances presented here, the
Panel considers Respondent’s explanation to be credible. It seems rather unlikely to this Panel that
Respondent would have formed a corporation and undertaken other preparatory
activities solely to justify its registration and use of a domain name
incorporating Complainant’s mark prefaced by the word “one.” Furthermore, the pay-per-click advertisements
appearing on the website to which the domain name resolves appear to have been
placed there automatically by the registrar.
(The page states that it “is parked free, courtesy of
GoDaddy.com.”). Although such use may be
imputed to a respondent in appropriate circumstances, in this case the Panel
does not view it as indicative of bad faith relating back to the initial
registration of the domain name.
Nor is Respondent’s alleged attempt to sell
the domain name particularly probative of Respondent’s intent. Respondent expressed a willingness to
consider a purchase offer, but only after having been approached by Complainant, and it is not clear that Respondent was seeking
to recover more than its costs actually incurred.
The Panel finds that Complainant has failed
to meet its burden of proving bad faith registration and use.
DECISION
Having considered all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: April 29, 2009
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