Transamerica Corporation v. Jos Antonio Lpez Esteras / Inverantic
Claim Number: FA1610001700609
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, District of Columbia, USA. Respondent is Jos Antonio Lpez Esteras / Inverantic (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericamotor.com>, registered with Dinahosting s.l..
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 Forum electronically on October 31, 2016; the Forum received payment on October 31, 2016.
On November 2, 2016, Dinahosting s.l. confirmed by e-mail to the Forum that the <transamericamotor.com> domain name is registered with Dinahosting s.l. and that Respondent is the current registrant of the name. Dinahosting s.l. has verified that Respondent is bound by the Dinahosting s.l. 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 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2016 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@transamericamotor.com. Also on November 3, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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:
1. Complainant’s rights in the TRANSAMERICA mark are based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 718,358, registered July 11, 1961). Respondent’s domain name is confusingly similar to the TRANSAMERICA mark as it includes the entire mark merely differs through the addition of the non-distinctive term “motor.”
2. Complainant has not authorized Respondent to use the TRANSAMERICA mark and there is no evidence that Respondent has been commonly known by the disputed domain name. Respondent has used the TRANSAMERICA mark since 1929 and Respondent did not acquire its domain until 2014.
3. Respondent registered and is using the disputed domain name in bad faith. Respondent’s bad faith is evident from failing to use the disputed domain name to resolve to an active website. Further, Respondent should be held to have actual or constructive knowledge of Complainant’s rights in the TRANSAMERICA mark based on the fame of the mark and the confusing similarity of the domain name to the mark.
B. Respondent:
1. Respondent has not submitted a Response in this proceeding.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
1. Respondent’s <transamericamotor.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <transamericamotor.com> domain name.
3. Respondent registered or used the <transamericamotor.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(f), 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 (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 claims to have rights in the TRANSAMERICA mark based on registration of the mark with the USPTO (e.g., Reg. No. 718,358, registered July 11, 1961). See Compl., at Attached Ex. B. Panels routinely find that registration of a mark with the USPTO is sufficient to demonstrate a registrant’s rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant next claims that Respondent’s domain name <transamericamotor.com> is confusingly similar to the TRANSAMERICA mark in which Complainant asserts rights. The disputed domain name appears to differ from the mark through the addition of the term “motor” and the generic top-level domain (“gTLD”) “.com.” Panels have found that the addition of gTLDs and generic terms or terms descriptive of a complainant’s business do not distinguish a domain from the mark to which the term is attached. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel concludes that Respondent’s <transamericamotor.com> domain name is confusingly similar to the TRANSAMERICA mark for purposes 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 (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 (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 argues that Respondent has not been authorized to use the TRANSAMERICA mark or been commonly known by the disputed domain name. WHOIS information associated with the domain name identifies Respondent as “Jos Antonio Lpez Esteras,” of the organization “Inverantic.” See Compl., at Attached Ex. F. Panels have held a respondent to not be commonly known by a disputed domain name based on WHOIS information, a lack of authorization from a complainant, and a lack of evidence to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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). The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next argues that Respondent could not have rights or legitimate interests in the disputed domain name based on Complainant’s longstanding ownership and use of the TRANSAMERICA mark. Respondent’s domain resolves to a website that is not being used actively in any manner. See Compl., at Attached Ex. G. Panels have held that failing to make an active use of a domain name can be a factor in determining that a respondent lacks rights or legitimate interests in a domain as failing to make an active use is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). This Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or ¶ 4(c)(iii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant claims that Respondent’s failure to make an active use of the disputed domain name demonstrates bad faith under Policy ¶ 4(a)(iii). As stated previously, Respondent’s domain name resolves to a website that is not currently being used and displays the message, “Error. Page cannot be displayed. Please contact your service provider for more details.” See Compl., at Attached Ex. G. Panels have routinely concluded that failing to make an active use of a disputed domain name for a protracted period of time may demonstrate a respondent’s bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel finds that Respondent’s inactive use of the domain is indicative of bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that its trademark registrations for the TRANSAMERICA mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive or actual knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, 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 name 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 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of 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 <transamericamotor.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 13, 2016
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