Transamerica Corporation v. Steven Canady
Claim Number: FA1411001589718
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Steven Canady (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <transamericainvestgroup.co>, <transamericainvestgroup.info>, <transamericainvestgroup.net> and <transamericainvestgroup.org>, registered with GODADDY.COM, INC.
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 12, 2014; the National Arbitration Forum received payment on November 12, 2014.
On November 12, 2014, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <transamericainvestgroup.co>, <transamericainvestgroup.info>, <transamericainvestgroup.net> and <transamericainvestgroup.org> domain names are registered with GODADDY.COM, INC. and that Respondent is the current registrant of the names. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. 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 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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.co, postmaster@transamericainvestgroup.info, postmaster@transamericainvestgroup.net, and postmaster@transamericainvestgroup.org. Also on November 13, 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 12, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns the TRANSAMERICA mark through registration 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.
2. The <transamericainvestgroup.co>, <transamericainvestgroup.info>, <transamericainvestgroup.net>, and <transamericainvestgroup.org> domain names are confusingly similar to the TRANSAMERICA mark as Respondent merely adds the descriptive phrase “invest group” to the mark. These domain names were registered in February 2014.
3. Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names.
4. Respondent is using the disputed domain names in connection with pay-per-click advertising websites, which is not a protected use pursuant to Policy ¶ 4(a)(ii).
5. Respondent has recently been involved in another UDRP proceeding involving Complainant in which the panel determined Respondent to have engaged in bad faith use and registration regarding the <transamericainvestgroup.com> domain name.
6. Respondent’s past and continued attempts to register Complainant’s mark indicate a pattern of bad faith on Respondent’s part.
7. Further, given the fame of Complainant, Respondent registered the disputed domain names with actual knowledge of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TRANSAMERICA mark. Respondent’s domain names are confusingly similar to Complainant’s TRANSAMERICA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <transamericainvestgroup.co>, <transamericainvestgroup.info>, <transamericainvestgroup.net>, and <transamericainvestgroup.org> domain names, and that Respondent registered and uses the 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 uses the TRANSAMERICA mark in connection with insurance, investment and retirement services. Complainant owns the TRANSAMERICA mark through registration with the USPTO (e.g., Reg. No. 718,358, registered July 11, 1961). Complainant’s registrations with the USPTO demonstrate Complainant has rights in the TRANSAMERICA mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues the <transamericainvestgroup.co>, <transamericainvestgroup.info>, <transamericainvestgroup.net> and <transamericainvestgroup.org> domain names are confusingly similar to the TRANSAMERICA mark as Respondent merely adds the phrase “invest group” to the mark. The disputed domain names affix either a generic or country-code top-level domain. The addition of a top-level domain is irrelevant to the confusing similarity analysis, and the insertion of terms illustrative of the complainant’s business may actually serve to increase likelihood of confusion rather than mitigate. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds the disputed domain names 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 claims that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant urges that Respondent is not commonly known by the domain names. As Respondent has failed to submit any evidence to the contrary, and the WHOIS record merely lists “Steven Canady” as registrant, the Panel concludes that Respondent is not commonly known by the these 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 next argues that Respondent has made neither a bona fide offering of goods or services, nor a legitimate noncommercial of fair use of the domain names. Instead, Complainant asserts that Respondent is using the disputed domain names in connection with pay-per-click advertising websites. The disputed domain names resolve to websites that promote such links as “Fixed income investing,” “Term Life Insurance,” and “CMW Wealth Advisors.” The Panel determines that Respondent’s use of the disputed domain names to promote such links in competition with Complainant’s own offerings in the financial and insurance sectors amounts to neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant notes that Respondent has recently been involved in another UDRP proceeding involving Complainant in which the panel determined Respondent engaged in bad faith use and registration regarding the <transamericainvestgroup.com> domain name. See Transamerica v. Alliance Warburg Capital Management, Inc., FA 1557768 (Nat. Arb. Forum June 12, 2014). The Respondent in this matter is identified in the WHOIS by the e-mail, “sc@alliancewarburg.com,” which seems to suggest a relationship between the respondent in Transamerica v. Alliance Warburg Capital Management, Inc., FA 1557768 and this Respondent. Complainant claims that Respondent’s past and continued attempts to register domain names incorporating Complainant’s mark indicate a pattern of bad faith. The Panel agrees and finds bad faith pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). Furthermore, Respondent’s four subject domain names bearing the TRANSAMERICA mark also serves to demonstrate a pattern of bad faith pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
In addition, Complainant claims, given the fame of Complainant in the financial services industry, that Respondent registered the disputed domain names with actual knowledge of Complainant. For example, 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).” Here, the Panel holds that Respondent had actual knowledge of Complainant and its TRANSAMERICA mark at the time of domain name registration, and therefore finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
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 <transamericainvestgroup.co>, <transamericainvestgroup.info>, <transamericainvestgroup.net> and <transamericainvestgroup.org> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 23, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page