Transamerica Corporation v. Alliance Warburg Capital Management, Inc.
Claim Number: FA1405001557768
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Washington D.C., USA. Respondent is Alliance Warburg Capital Management, Inc. (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericainvestgroup.com>, 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 May 6, 2014; the National Arbitration Forum received payment on May 6, 2014.
On May 8, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <transamericainvestgroup.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. 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 May 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 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@transamericainvestgroup.com. Also on May 9, 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 June 4, 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.
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 name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant and its predecessors have used the TRANSAMERICA mark since 1929 for investment services, including life insurance, financial advising, asset management, retirement solutions, and more.
b) Complainant has rights in the TRANSAMERICA mark, used in connection with investment services. Complainant owns registrations for the TRANSAMERICA with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 718,358 registered July 11, 1961).
c) Respondent’s <transamericainvestgroup.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the descriptive term “invest group.”
d) Respondent does not have any rights or legitimate interests in the <transamericainvestgroup.com> domain name.
a. Respondent used its own name, which is not that of Complainant, to register the disputed domain name to monetize the disputed domain name that incorporates Complainant’s TRANSAMERICA mark. Further, Complainant has not authorized Respondent to use its TRANSAMERICA mark in any way.
b. Respondent is using the <transamericainvestgroup.com> domain name to host pay-per-click advertising for investment services, which compete directly with Complainant. See Complainant’s Exhibit H.
e) Respondent registered and is using the <transamericainvestgroup.com> domain name in bad faith.
a. Respondent has violated Policy ¶ 4(b)(iv) by using the disputed domain name to host pay-per-click advertising for investment services, which directly competes with Complainant.
B. Respondent
a) Respondent did submit a response in this proceeding.
b) Respondent registered the <transamericainvestgroup.com> domain name on February 20, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 contends it has rights in the TRANSAMERICA mark, used in connection with investment services. Complainant states it owns registrations for the TRANSAMERICA mark with the USPTO (e.g., Reg. No. 718,358 registered July 11, 1961). The Panel finds that Complainant has rights in the TRANSAMERICA mark within the meaning of Policy ¶ 4(a)(i) because Complainant holds valid registrations for the mark with the USPTO. 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)).
Complainant alleges that Respondent’s <transamericainvestgroup.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark. Complainant observes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the descriptive term “invest group.” The Panel notes that the disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the addition of generic terms to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity 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.”). Therefore, the Panel finds that Respondent’s <transamericainvestgroup.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark pursuant to 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 contends that Respondent does not have any rights or legitimate interests in the <transamericainvestgroup.com> domain name. Complainant argues that Respondent used its own name, which is not that of Complainant, to register the disputed domain name to monetize the disputed domain name that incorporates Complainant’s TRANSAMERICA mark. Further, Complainant states it has not authorized Respondent to use its TRANSAMERICA mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Alliance Warburg Capital Management, Inc.” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the TRANSAMERICA mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <transamericainvestgroup.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims Respondent is using the <transamericainvestgroup.com> domain name to host pay-per-click advertising for investment services, which compete directly with Complainant. See Complainant’s Exhibit H. The Panel notes that the links include “Retirement Investing,” “Smart, Beginner Investing,” and “Preparing for Retirement.” Id. In similar cases, panels have held that the respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the transamericainvestgroup.com> domain name to promote Complainant’s competitors via pay-per-click links.
Complainant contends that Respondent registered and is using the <transamericainvestgroup.com> domain name in bad faith. Complainant argues that Respondent has violated Policy ¶ 4(b)(iv) by using the disputed domain name to host pay-per-click advertising for investment services, which directly competes with Complainant. The Panel notes that the links include “Retirement Investing,” “Smart, Beginner Investing,” and “Preparing for Retirement.” Id. Past panels have agreed with Complainant’s reasoning, finding bad faith via attraction for commercial gain where a respondent is using a confusingly similar domain name to host competing pay-per-click advertisements. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds that Respondent registered and is using the <transamericainvestgroup.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to host pay-per-click links to Complainant’s competitors.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericainvestgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 12, 2014
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