national arbitration forum

 

DECISION

 

Transamerica Corporation v. G Domains / Director Galib Gahramanov

Claim Number: FA1203001433703

 

PARTIES

Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA.  Respondent is G Domains / Director Galib Gahramanov (“Respondent”), Azerbaijan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <transamericannuities.com>, registered with Key-Systems GmbH.

 

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.

 

            The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2012; the National Arbitration Forum received payment on March 9, 2012.

 

On March 9, 2012, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <transamericannuities.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name.  Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 March 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2012 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@transamericannuities.com.  Also on March 12, 2012, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant

 

Complainant made the following submissions.

 

    1. Complainant has registered the TRANSAMERICA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 718,358 registered July 11, 1961);
    2. Respondent’s <transamericannuities.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark;
    3. Respondent is not commonly known by the disputed domain name;
    4. Respondent’s disputed domain name resolves to a website offering links to Complainant’s competitors in the insurance and financial services industry;
    5. Respondent has engaged in typosquatting by registering and using the disputed domain name;
    6. Respondent has no rights or legitimate interests in the disputed domain name;
    7. Respondent registered and is using the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a United States company that has been engaged in the insurance industry for many years, offering products including annuities.

2.    Complainant has registered the TRANSAMERICA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 718,358 registered July 11, 1961).

3.    Respondent registered the <transamericannuities.com> domain name on 2012. It resolves to a website offering links to Complainant’s competitors in the insurance and financial services industry.

 

DISCUSSION

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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

 

Complainant alleges that it has established rights in the TRANSAMERICA mark by registering it with the USPTO (e.g., Reg. No. 718,358 registered July 11, 1961).  Complainant submits the trademark certificates issued by the USPTO for the mark to support its allegations.  Thus, the Panel concludes that Complainant has established its rights in the TRANSAMERICA mark pursuant to Policy ¶ 4(a) (i).  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant also alleges that Respondent’s <transamericannuities.com> domain name is confusingly similar to its TRANSAMERICA mark.  The Panel notes that the disputed domain name includes the entire mark, while only adding the generic top-level domain (“gTLD”) “.com” and a misspelling of the descriptive term “annuities” as “nnuities.”  The Panel also notes that, as Complainant operates in the insurance and financial industry and is widely known to be engaged in that industry, the term “annuities,” or a misspelling thereof, describes Complainant’s business and furthers potential confusion as to whether or not the domain name is an official domain name of Complainant and has led to Complainant’s website.  The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s TRANSAMERICA mark under Policy ¶ 4(a) (I).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a) (i) analysis); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that 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.”).

 

The Panel finds that Complainant has made out a prima facie case and that it arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s TRANSAMERICA trademark and to use it in its entirety in his domain name , adding the descriptive word “nnuities”, a word that is obviously a misspelling of the word “annuities” and which internet users would take to mean that the domain name relates to annuities offered by the owner of the TRANSAMERICA mark;

(b)  Respondent has then decided to use the domain name to lead to websites that offer services that are in competition with those provided by Complainant and to do so clearly for monetary reward;

(c)  Respondent has engaged in these activities without the consent or approval of Complainant;

(d) Complainant also alleges that Respondent is not commonly known by the

domain name.  Complainant submits the WHOIS information, which identifies the registrant of the domain name as “G Domains / Director Galib Gahramanov,” to support its contention.  The Panel notes that Respondent has failed to submit any evidence that would support a finding to the contrary.  Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c) (ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

(e)Complainant also contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Complainant claims that the disputed domain name resolves to a website offering links to companies like Metlife, a competitor of Complainant’s in the financial services industry. Complainant submits a printout from the website which the Panel finds supports its contentions.  The Panel finds that Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c) (iii).  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant relies on Policy ¶ 4(b) (iv) and argues that

Respondent registered the disputed domain name to gain commercially from the confusion created by including Complainant’s mark in the domain name and creating a domain name that falsely suggests it relates to the known products of Complainant.  Complainant states and supports by evidence that the disputed domain name resolves to a directory website offering links to third parties and that most of these third-party businesses are its competitors, such as MetLife and AARP Insurance Services.  The Panel infers from this situation that Respondent generates revenue by collecting a click-through fee for each Internet user it diverts through the links offered. The Panel accepts Complainant’s submissions and the evidence it tenders in support. Thus, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

Secondly, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the domain name using the TRANSAMERICA  mark, adding to it the word “ nnuities” and thereby invoking the name of one of Complainant’s products, namely annuities and in view of the conduct that Respondent engaged in when using the domain name, involving as it did a serious attempt to mislead the public and do damage to the commercial interests of Complainant, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

 

 

    

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <transamericannuities.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  April 17, 2012

 

 

 

 

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