Transamerica Corporation v. Remigio Lopez / Transamerica
Claim Number: FA1411001591667
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, District of Columbia, USA. Respondent is Remigio Lopez / Transamerica (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericamexico.com>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2014; the National Arbitration Forum received payment on November 24, 2014.
On November 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <transamericamexico.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 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@transamericamexico.com. Also on November 25, 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 December 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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's Contentions
1. Policy ¶ 4(a)(i)
Complainant owns registrations with the United States Patent and Trademark Office ("USPTO") for the TRANSAMERICA mark (e.g., Reg. No. 718,358, registered July 11, 1961). TRANSAMERICA has been registered by Complainant with the Mexican Institute of Intellectual Property (“MIIP”) since 1991 (Reg. No. 398,737). Complainant uses the TRANSAMERICA mark to identify its services worldwide relating to the underwriting, administration, brokerage, and distribution of life insurance, annuities, and financial products. The <transamericamexico.com> domain name is confusingly similar to the TRANSAMERICA mark. The addition of the geographic term “mexico” to Complainant’s mark increases confusing similarity by capitalizing on Complainant’s efforts in Mexico.
2. Policy ¶ 4(a)(ii).
Respondent is not known by the disputed domain name, nor has it been authorized by Complainant to use its name in domain names. The inclusion of the name “Transamerica” in the WHOIS information is insufficient evidence to show Respondent is known by the name. Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for any genuine noncommercial use. Respondent uses the disputed domain name to advertise real estate services.
3. Policy ¶ 4(a)(iii).
Respondent registered and used the disputed domain name in bad faith. Respondent incorporated the famous TRANSAMERICA mark joined with a foreign country.
B. Respondent's Contentions
1. Respondent failed to respond to this Complaint.
1. Respondent’s <transamericamexico.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <transamericamexico.com> domain name.
3. Respondent registered or used the <transamericamexico.com> 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 uses the TRANSAMERICA mark to identify its services worldwide relating to the underwriting, administration, brokerage, and distribution of life insurance, annuities, and financial products. Complainant asserts that it owns registrations with the USPTO for the TRANSAMERICA mark (e.g., Reg. No. 718,358, registered July 11, 1961). Complainant adds that TRANSAMERICA has been registered with the MIIP since 1991 (Reg. No. 398,737). Prior panels have consistently found a complainant has rights under Policy ¶ 4(a)(i) in a mark that is registered in the respondent’s domicile. At present, the Panel agrees that Complainant’s registrations for TRANAMERICA with the USPTO and MIIP soundly demonstrate Policy ¶ 4(a)(i) rights in the mark. See Teck Res. Ltd. v. Amexa Ltda., FA 1420960 (Nat. Arb. Forum Jan. 27, 2012) (finding that a trademark registration with the MIIP was sufficient to establish rights in a mark under Policy ¶ 4(a)(i)); Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Complainant argues that the <transamericamexico.com> domain name is confusingly similar to the TRANSAMERICA mark. Complainant claims that the addition of the geographic term “mexico” to Complainant’s mark increases confusing similarity by capitalizing on Complainant’s efforts in Mexico. Prior panels have found confusing similarity in domain names that incorporate a mark in full, add a geographic term and affix a generic-top level domain (“gTLD”). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The Panel finds the <transamericamexico.com> domain name confusingly similar to the TRANSAMERICA mark pursuant to Policy ¶ 4(a)(i) as the addition of the gTLD is insignificant to the analysis, and the inclusion of the geographic term “mexico” serves no distinguishing value especially given Complainant’s reach into Mexico.
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.”).
Relating to Policy ¶ 4(c)(ii), Complainant argues that Respondent is not known by the disputed domain name, nor has it been authorized by Complainant to use its name in domain names. Complainant notes that the inclusion of the name “Transamerica” in the WHOIS information is insufficient evidence to show Respondent is known by the name. The Panel observes that the WHOIS information lists “Remigio Lopez” of “Transamerica” as the registrant of record. As there is no corroborating evidence to show Respondent is in fact commonly known by the disputed domain name, the Panel considers Policy ¶ 4(c)(ii) satisfied by Complainant. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant next argues that Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for any genuine noncommercial use. Complainant urges that Respondent instead uses the disputed domain name to advertise real estate services. The Panel notes that Complainant has included a screen grab of the suspect website. See Compl., at p.10. The Panel agrees Respondent’s use of the disputed domain name to redirect users to real estate services unrelated to Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Complainant claims that Respondent incorporated the famous TRANSAMERICA mark joined with a foreign country, and argues that prior panels have found evidence of bad faith under comparable circumstances. The Panel recalls that Complainant alleges Respondent is using the disputed domain name to promote its own real estate services. See Compl., at p.10. While the Complaint does not expressly invoke Policy ¶ 4(b)(iv), the Panel considers this provision as many of the citations provided by Complainant in its bad faith section allude to findings of bad faith pursuant to the Policy ¶ 4(b)(iv) provision. See e.g., Alticor Inc. v. Yuriy Izmaylov, FA 1530223 (Nat. Arb. Form Dec. 20, 2013). The Panel finds that Respondent has created the opportunity to commercially benefit from the likelihood of Internet user confusion through the promotion of its own real estate services through the <transamericamexico.com> domain name, and finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Additionally, where famous marks are involved, prior panels have been willing to infer a respondent’s actual knowledge of the complainant and its mark at the time of domain name registration. Panels have deemed registration with such knowledge demonstrative of bad faith. To illustrate, in Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012), the panel wrote, “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).” The Panel is willing to infer Respondent had actual knowledge of Complainant and its TRANSAMERICA mark at the time of domain registration, and the Panel finds evidence of Policy ¶ 4(a)(iii) bad faith registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericamexico.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 5, 2015
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