Transamerica Corporation v. Jamie Hellman, Prime Diagnostic Imaging, LLC
Claim Number: FA1402001543208
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Jamie Hellman, Prime Diagnostic Imaging, LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <transamericahealth.com> and <transamericahealth.net>, registered with NETWORK SOLUTIONS, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2014; the National Arbitration Forum received payment on February 11, 2014.
On February 11, 2014, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <transamericahealth.com> and <transamericahealth.net> domain names are registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the names. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. 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 February 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2014 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@transamericahealth.com, postmaster@transamericahealth.net. Also on February 14, 2014, 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 March 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
On March 21, 2014, the Panel issued a Procedural Order requesting Complainant to submit additional information in relation to Policy ¶ 4(a)(ii) and 4(a)(iii) pursuant to Supplemental Rule 12 setting a deadline of March 28, 2014. According to the Panel’s Order, the deadline for Respondent to file any comments on the Complainant’s possible additional submission was set as April 4, 2014 and the deadline for the Panel to make the Decision was set as April 11, 2014.
On March 25, 2014, Complainant submitted an Additional Submission to the National Arbitration Forum pursuant to the Panel’s procedural order. On the same date, the National Arbitration Forum served the Complainant’s Additional Submission to Respondent reminding it of the April 4, 2014 deadline for filing any comments. No comments from Respondent were received to the National Arbitration Forum by April 4, 2014.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant is a financial services organization with subsidiaries principally engaged in insurance, investment, and retirement services.
b. Complainant has used the TRANSAMERICA mark for financial services since 1929, and spends more than $20 million per year in advertising and promotion of the mark for such services.
c. Complainant owns United States Patent and Trademark Office (“USPTO”) registrations covering the name TRANSAMERICA for insurance and financial services, including health insurance. See, e.g., Reg. No. 718,358 registered July 11, 1961.
d. Complainant’s use of the TRANSAMERICA mark in connection with health care is illustrated at Complainant’s <transamericacenterforhealthstudies.org> domain. See Complainant’s Exhibit G.
e. The <transamericahealth.com> and <transamericahealth.net> domain names are confusingly similar to Complainant’s TRANSAMERICA mark.
i. Respondent’s addition of the term “health” to Complainant’s mark enhances the confusing similarity of the disputed domain names by capitalizing on an association in the public mind between Complainant's name and health insurance.
2. Policy ¶ 4(a)(ii)
a. The use of confusingly similar domain names that divert Internet users to third-party sites offering products or services in competition with Complainant do not constitute a bona fide offering of goods or services or a legitimate commercial use, and redirecting an Internet user to a third-party website implies that Respondent is receiving compensation for such redirection.
i. Respondent uses the disputed domain names for keyword advertising featuring links to the websites of Complainant's competitors. See Complainant’s Exhibit H.
3. Policy ¶ 4(a)(iii)
a. Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites to which the disputed domain names resolve which feature pay-per-click links leading to advertisements by Complainant's direct competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered <transamericahealth.com> and <transamericahealth.net> on April 1, 2010.
C. Additional Submission
Complainant makes allegations in its Additional Submission dated March 25, 2014 as below:
a. Policy ¶ 4(a)(ii)
i. Respondent is not commonly known by the name “Transamerica” according to the Whois data, the records of the Texas Secretary of State, and the records of the Nevada Secretary of State and Respondent’s website at www.primemri.com.
ii. Respondent is using the disputed domain names for pay-per-click advertising, not for the bona fide offer or sale of any goods or services.
b. Policy ¶ 4(a)(iii)
i. Respondent is presumed to have been aware of Complainant’s name and federally registered TRANSAMERICA service mark. “Opportunistic bad faith” is shown when a domain name incorporating a well-known mark is registered by someone with no connection with the Complainant. Complainant’s name is well known and famous for all purposes relevant to the trademark law as a result of substantive advertisements and sponsorship of golf championships and international sports events.
ii. Respondent is holding the disputed domain names passively and using them for pay-per-click advertising.
iii. Respondent declined to answer Complainant’s correspondence or to respond to this Complaint. Respondent’s failure to come forward with any explanation for its registration of disputed domain names incorporating Complainant’s famous name and federally registered TRANSAMERICA service mark and its use of those domain names for pay-per-click advertising leading to the websites of Complainant’s direct competitors corroborate Respondent’s bad faith.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names in bad faith.
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.”).
Complainant provides that it is a financial services organization with subsidiaries principally engaged in insurance, investment, and retirement services. Complainant claims to have used the TRANSAMERICA mark for financial services since 1929, and says it spends more than $20 million per year in advertising and promotion of the mark for such services. Complainant further states that it owns USPTO registrations covering the name TRANSAMERICA for insurance and financial services, including health insurance. See, e.g., Reg. No. 718,358 registered July 11, 1961. The Panel agrees that such registrations are sufficient to establish Complainant’s rights in the TRANSAMERICA mark under Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).
Complainant argues that the <transamericahealth.com> and <transamericahealth.net> domain names are confusingly similar to Complainant’s TRANSAMERICA mark. Complainant contends that Respondent’s addition of the term “health” to Complainant’s mark enhances the confusing similarity of the disputed domain names by capitalizing on an association in the public mind between Complainant's name and health insurance. Previous panels have found terms descriptive of a complainant’s business to be incapable of distinguishing a domain name from the complainant’s mark. See, e.g., Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel further notes that each of Respondent’s domains append the generic top-level domain “.com,” but finds that such additions are not relevant under the Policy. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Accordingly, the Panel concludes that Respondent’s <transamericahealth.com> and <transamericahealth.net> domain names are confusingly similar to Complainant’s TRANSAMERICA mark within the meaning of Policy ¶ 4(a)(i).
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 avers that Respondent is not commonly known by the name “Transamerica” according to the Whois data, the records of the Texas Secretary of State, and the records of the Nevada Secretary of State and Respondent’s website at www.primemri.com.
The Panel considers the WHOIS information’s indication of Respondent as “Jamie Hellman, Prime Diagnostic Imaging, LLC” as evidence that Respondent is not commonly known by <transamericahealth.com> or <transamericahealth.net> in addition to neither records of the Texas Secretary of State and of the Nevada Secretary of State and nor Respondent’s website at www.primemri.com indicating Respondent being known by the disputed domain names within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate commercial use. Complainant asserts that Respondent uses the disputed domain names for keyword advertising featuring links to the websites of Complainant's competitors. See Complainant’s Exhibit H. Complainant further posits that Respondent’s redirection of Internet users to third-party websites implies that Respondent is receiving compensation for such redirection. The panel in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) found that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, the respondent was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel similarly finds that Respondent’s use of the <transamericahealth.com> and <transamericahealth.net> domain names to host competing hyperlinks represents neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant complains that Respondent’s registration and use of the disputed domain names illustrates bad faith according to Policy ¶ 4(b)(iv). Complainant claims that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites to which the disputed domain names resolve which feature pay-per-click links leading to advertisements by Complainant's direct competitors. The panel in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) explained that a respondent's use of a misleading domain name to provide links to complainant's competitors, from which respondent presumably commercially benefits by receiving ‘click-through-fees,’ is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that Respondent is presumed to have been aware of Complainant’s name and federally registered TRANSAMERICA service mark. It further argues that “Opportunistic bad faith” is shown when a domain name incorporating a well-known mark is registered by someone with no connection with the Complainant. It continues to assert that Complainant’s name is well known and famous for all purposes relevant to the trademark law as a result of substantive advertisements and sponsorship of golf championships and international sports events.
Previous panels have concluded that constructive notice is not sufficient to support a bad faith finding. The Panel agrees with the previous panels on this point. On the other hand, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Therefore, the Panel determines that Respondent has registered and used the <transamericahealth.com> and <transamericahealth.net> domain names in a similar way, namely to improperly attract consumers for Respondent’s own commercial gain, the Panel finds bad faith on the part of Respondent pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericahealth.com> and <transamericahealth.net> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 9, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page