Transamerica Corporation v. Marshall Taheri / law offices of marshall taheri
Claim Number: FA1110001413096
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Marshall Taheri / law offices of marshall taheri (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net>, registered with 1&1 Internet AG.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2011; the National Arbitration Forum received payment on November 1, 2011.
On October 27, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@transamericacorporation.com, postmaster@transamericainvestment.com, and postmaster@transamericainvestment.net. Also on November 2, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 17, 2011.
A timely Additional Submission from Complainant was received and determined to be complete on November 22, 2011.
On November 23, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
· it has rights in the TRANSAMERICA mark and provides evidence of its multiple registrations for its mark, as for example, of the United States Patent and Trademark Office (“USPTO”) registration for the TRANSAMERICA mark (e.g., Reg. No. 718,358 registered July 11, 1961).
· it uses its mark in connection with insurance and investment services.
· the <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> domain names are confusingly similar to the TRANSAMERICA mark.
· Respondent is not commonly known by the disputed domain name, as the WHOIS record for each of the domain names lists “Marshall Taheri / law offices of marshall” as the domain name registrant.
· the fact that the Respondent has a corporation in Texas with the name Transamerica Energy, does not necessarily demonstrate that Respondent is commonly known by that name.
· business recording systems such as Dun and Bradstreet and directory assistance have no record of Transamerica Energy.
· the <transamericaenergy.com> domain name, the website which each of the <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> domain names redirects to, simply contains a “cookie cutter” graphic content.
· Respondent does not have the right to use an infringing domain name in a way which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
· the disputed domain names <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> redirect Internet users to Respondent’s own website at <transamericaenergy.com> which relates to Respondent’s alleged oil and gas business, unrelated to Complainant’s business.
· Respondent would not have registered and used the disputed domain names as the result of anything but bad faith.
· more than 40 years after Complainant acquired trademark registrations for the TRANSAMERICA mark, Respondent registered the disputed domain names as follows: <transamericacorporation.com> on April 8, 2007; <transamericainvestment.com> on November 12, 2006; and <transamericainvestment.net> on November 12, 2006.
· Its TRANSAMERICA mark is famous and Respondent’s registration of domain names which incorporate famous marks is an adequate basis for the Panel to find bad faith registration and use.
· bad faith registration and use of the disputed domain names by the Respondent is evidenced by Respondent’s diversion of Internet users to its own website, relating to Respondent’s unrelated business in the oil and gas industry.
· Complainant also contends that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the TRANSAMERICA mark.
B. Respondent
By its Response, the Respondent replies that
· Marshall Taheri, is an attorney in Houston representing Transamerica Energy Corporation which is a Texas corporation.
· at the request of Transamerica Energy Corporation Marshall Taheri registered the domain names in question for the benefit and use of Transamerica Energy Corporation.
· Complainant should have filed this complaint against Transamerica Energy Corporation rather than Marshall Taheri.
· The statute of limitations and the doctrine of laches prevents Complainant from filing the instant complaint due to lack of diligence in asserting such claim in a timely manner.
· Complainant's failure to enforce the use of its service mark by other entities utilizing the name Transamerica, or some form of it, lost its service mark and should be barred from filing the instant complaint against Respondent.
· Marshall Taheri requested from Transamerica Energy Corporation and was authorized to transfer to Complainant, Transamerica Corporation, the disputed domain names.
· It requests the panel to seal the complaint to prevent disclosure to the public.
C. Additional Submissions
By its Additional Submissions the Complainant asserts that:
· whether or not Mr. Taheri registered and used the disputed domain names as the agent for a third party is irrelevant.
· Mr. Taheri is the party named as registrant in the Registrar's WHOIS information and he "must be responsible for compliance with the [UDRP] in all matters affecting the registration
· While the exact relationship between Mr. Taheri and Transamerica Energy Corporation has no relevance to this case, the credibility of Mr. Taheri does.
· Contrary to the statement in his response brief, Mr. Taheri is not merely "an attorney in Houston representing Transamerica Energy Corporation." Mr. Taheri is the principal officer of Transamerica Energy Corporation.
· Mr. Taheri's failure to disclose the extent of his relationship with Transamerica Energy Corporation speaks poorly to his credibility and makes it especially specious for him to argue that the UDRP complaint should be dismissed for failure to name the proper party.
· Regarding the laches doctrine and statutory limits invoked by the Respondent, Complainant engaged in protracted negotiations with Respondent beginning at or around the registration of the disputed domain names
The Respondent has registered the disputed domain names on the balance of probabilities knowing about the Complainant’s trademark and intending to benefit from such use of the said trademark.
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."
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.
I. Preliminary Issue: Identity of Respondent
Respondent claims that it is the attorney for the Texas corporation Transamerica Energy Corporation and that it registered the disputed domain names for the benefit and use of the corporation. Respondent contends that Complainant should have filed this Complaint against Transamerica Energy Corporation instead of Respondent. Complainant, in its Additional Submission, asserts that Respondent is the proper respondent by virtue of being the registrant of the disputed domain names. According to Paragraph 1(d) of the UDRP, the registrant of a domain name is the appropriate respondent for complaints filed in regard to the disputed domain name. In these proceedings the complaint had been filed against the registrant of the disputed domain names. Therefore, the Panel shall proceed, having established that the proper parties are listed in this dispute. See Rhodia v. Paperboy & Co., D2006-0851 (WIPO Sept. 8, 2006) (finding that the person or entity listed as the domain name registrant on the disputed domain name’s WHOIS record is the proper respondent in claims regarding that domain name); see also XM Satellite Radio Inc. v. Kennedy, FA 796199 (Nat. Arb. Forum. Nov. 7, 2006) (finding that “The respondent in a UDRP proceeding must be the record owner of the domain based upon the WHOIS information”).
II. Preliminary Issue: Consent to Transfer
After making several arguments supporting a finding that the disputed domain names should not be transferred to Complainant, including arguments concerning doctrine of laches and a failure to enforce the sole use of the TRANSAMERICA mark by Complainant, Respondent consents to transfer the <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> domain names to Complainant. Respondent cannot transfer the disputed domain names while this proceeding is still pending. Complainant notes in its Additional Submission that it appreciates Respondent’s offer to transfer the domain names, but argues that consent to transfer is not a defense, and thus appears to prefer that the Panel review the claim on the merits. The Panel is not persuaded that a clear consent to the transfer of the disputed domain names exists as the Respondent also uses in its Response arguments contrary to its consent to the transfer of the disputed domain names.
Therefore, the Panel is persuaded that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel.
Therefore, the Panel decides that it would like to analyze the case under the elements of the UDRP.
III. Preliminary Issue: Publication of Decision
Respondent requests that the Panel redact the Panel’s decision proceeding from this claim. The request of the Respondent is not supported of any reasoning. Supplemental Rule 15(b) to the UDRP provides that the decisions of the panel be made public. Therefore, as the Respondent did not indicate any reasoning in supporting its request and the Panel fails to identify a reason for granting such request
The Panel is persuaded that the Complainant has rights in the TRANSAMERICA mark. Complainant provides evidence of its multiple registrations for its mark, as for example, of the United States Patent and Trademark Office (“USPTO”) registration for the TRANSAMERICA mark (e.g., Reg. No. 718,358 registered July 11, 1961). Complainant contends that it uses its mark in connection with insurance and investment services. Previous panels have found in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), that the registration of a mark with a national trademark authority is sufficient to establish rights in a mark.
Complainant argues also that the <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> domain names are confusingly similar to the TRANSAMERICA mark and the Panel agrees with such argument, as the disputed domain names differs from the Complainant’s trademark only by an addition of descriptive terms as are “corporation” or “investment”. Panels have found previously that the addition of generic or descriptive terms to a complainant’s mark does not negate a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Additionally, the Panel finds that Respondent’s addition of a generic top-level domain (“gTLD”), either “.com” or “.net,” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel also notes that the Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Thus, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant asserts that the WHOIS record for each of the domain names lists “Marshall Taheri / law offices of marshall” as the domain name registrant. While Complainant recognizes that Respondent has a corporation in Texas with the name Transamerica Energy, Complainant argues that this does not necessarily demonstrate that Respondent is commonly known by that name. Complainant contends, and provides supporting annexes, that business recording systems such as Dun and Bradstreet and directory assistance have no record of Transamerica Energy. Additionally, Complainant claims, but provides no evidence for, that the <transamericaenergy.com> domain name, the website which each of the <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> domain names redirects to, simply contains a “cookie cutter” graphic and fails to provide substantial content. The Panel finds that Complainant’s assertions and the WHOIS record demonstrates that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant further contends that Respondent does not have the right to use an infringing domain name in a way which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Panels have previously held that the use of a disputed domain name to redirect Internet users to the respondent’s own website was not a protected use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant claims that Respondent’s <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> domain names redirect Internet users to Respondent’s own website at <transamericaenergy.com>, which relates to Respondent’s alleged oil and gas business, unrelated to Complainant’s business. However, Complainant has not provided any supporting evidence for this assertion. Nevertheless the Panel has accessed itself the websites under the disputed domain names which clearly redirects to the a website <transamericaenergy.com>.
Moreover, the Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Considering these circumstances, the Panel finds that Respondent’s use of the <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent would not have registered and used the disputed domain names as the result of anything but bad faith. Complainant provides that, more than 40 years after Complainant acquired trademark registrations for the TRANSAMERICA mark, Respondent registered the disputed domain names as follows: <transamericacorporation.com> on April 8, 2007; <transamericainvestment.com> on November 12, 2006; and <transamericainvestment.net> on November 12, 2006. Complainant argues that its mark is famous and Respondent’s registration of domain names which incorporate famous marks is an adequate basis for the Panel to find bad faith registration and use. Complainant also argues that bad faith registration and use of the disputed domain names is evidenced by Respondent’s diversion of Internet users to its own website, relating to Respondent’s unrelated business in the oil and gas industry. In this regards, also the Respondent makes no contentions with regards to Policy ¶ 4(a)(iii)
Therefore the Panel determines on the balance of probabilities that Respondent registered the disputed domain names because of their confusing similarity with Complainant’s TRANSAMERICA mark for the purpose of using the disputed domain names to profit from confusion created as to Complainant’s affiliation with the domain names which represents an indication of both bad faith registration and use of the disputed domain names, pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
Doctrine of Laches
The Panel finds that the doctrine of laches does not apply as a defense, and correspondingly choose to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> domain names be TRANSFERRED from Respondent to Complainant
Beatrice Onica Jarka Panelist
Dated: December 7, 2011
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