Transamerica Corporation v. Manuel Soto
Claim Number: FA1411001589206
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Manuel Soto (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transammarketing.com>, registered with GODADDY.COM, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2014; the National Arbitration Forum received payment on November 7, 2014.
On November 10, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <transammarketing.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 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@transammarketing.com. Also on November 11, 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 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant’s rights in the TRANSAMERICA mark are evidenced by registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 718,358, registered July 11, 1961). Complainant uses the TRANSAMERICA mark in connection with insurance, investment, and retirement services. Notably here, Complainant also offers marketing services.
2. The <transammarketing.com> domain name is confusingly similar to the TRANSAMERICA mark as the name comprises an abbreviation of Complainant’s mark with the addition of the generic term “marketing.”
3. Respondent is not commonly known by the disputed domain name, as demonstrated by the WHOIS information. Further, Complainant has never authorized Respondent’s use of the TRANSAMERICA mark, nor does Respondent have any trademark registrations or business entity filings involving this name.
4. Respondent uses the <transammarketing.com> domain name to promote the services of “TransAmerica Marketing Co.,” which claims to be a marketing agency. The resolving website also purports to provide financial services including real estate and lending services.
5. Respondent is using the disputed domain name to attract, for commercial gain, users to Respondent’s own website. Further indicating Respondent’s bad faith, Respondent is a former agent for one of Complainant’s companies.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TRANSAMERICA mark. Respondent’s domain name is confusingly similar to Complainant’s TRANSAMERICA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <transammarketing.com> domain name, and that Respondent registered and uses the 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 claims rights in the TRANSAMERICA mark as evidenced by registrations with the USPTO (e.g., Reg. No. 718,358, registered July 11, 1961). Complainant uses the TRANSAMERICA mark in connection with insurance, investment, and retirement services. Complainant also offers marketing services under the mark. Complainant’s registration with the USPTO serves to demonstrate Policy ¶ 4(a)(i) rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <transammarketing.com> domain name, registered in March 2014, is confusingly similar to the TRANSAMERICA mark as the name comprises an abbreviation of the mark with the addition of the generic term “marketing.” Complainant urges that the inclusion of “marketing” only adds to the confusion as Complainant provides, in part, marketing services under the subject mark. The domain name includes the generic top-level domain (“gTLD”) “.com,” which serves no distinguishing value according to Policy ¶ 4(a)(i) analysis. Confusing similarity exists where a domain name relies on an abbreviated version of a mark combined with a generic or descriptive term. See, e.g., Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated). Accordingly, the Panel finds the <transammarketing.com> domain name confusingly similar to the TRANSAMERICA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the disputed domain name, as demonstrated by the WHOIS information, which lists “Manuel Soto” as registrant. Further, Complainant has never authorized Respondent’s use of the TRANSAMERICA mark, and Respondent does not hold any trademark registrations or business entity filings involving this name. Based on the available record, there is no evidence to demonstrate Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”).
Complainant argues that Respondent uses the <transammarketing.com> domain name to promote the services of “TransAmerica Marketing Co.,” which claims to be a marketing agency. Complainant notes that throughout the resolving website Respondent offers financial services including real estate and lending services. In Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the panel wrote, “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).” Moreover, because the Respondent’s financial and marketing services are competitive with Complainant’s own offerings in the field, Respondent’s use of the <transammarketing.com> domain name to promote its own marketing and financial services in competition with Complainant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is using the disputed domain name to attract, for commercial gain, users to Respondent’s own website. Complainant presumes that Respondent’s promotion of its marketing and financial services through the <transammarketing.com> domain name leads to commercial gain. Respondent’s use of the <transammarketing.com> domain name to promote marketing and financial offerings comparable to those of Complainant is indicative of Policy ¶ 4(b)(iv) bad faith. See, e.g., Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Further indicating Respondent’s bad faith, Complainant urges that Respondent is a former agent for one of Complainant’s companies. This is a further ground upon which to find bad faith under Policy ¶ 4(a)(iii). See, e.g., MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding bad faith use and registration where a disgruntled former employee registered an infringing domain name to open an online business that competed with the complainant); William Hill Org. Ltd. v. Fulfillment Mgmt. Servs. Ltd., D2000-0826 (WIPO Sept. 17, 2000) (finding bad faith registration and use where “[R]espondent’s employee must have had the Complainant’s trade marks in mind when choosing the disputed domain name and that the respondent‘s interest was to deprive the complainant of the opportunity to reflect its mark in that name until the registration expires”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transammarketing.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 22, 2014
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