Transamerica Corporation v. DOMAIN MAY BE FOR SALE CHECK IGLOO.COM Domain Admin / Domain Registries Foundation
Claim Number: FA1610001700612
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, Washington D.C., United States. Respondent is DOMAIN MAY BE FOR SALE CHECK IGLOO.COM Domain Admin / Domain Registries Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <premiertransamerica.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 31, 2016; the Forum received payment on October 31, 2016.
On November 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <premiertransamerica.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 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@premiertransamerica.com. Also on November 1, 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.
A timely Response was received and determined to be complete on November 21, 2016.
On November 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in TRANSAMERICA and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Response makes it submissions under a heading: “Response to Factual and Legal Allegations Made in Complaint”. However, it does not address the Policy but instead repeats Respondent’s willingness to transfer the disputed domain name “without admitting fault or liability and without responding substantively to the allegations raised by Complainant”.
The submissions rely, in essence, on the procedural expediency of a Panel decision ordering immediate transfer of the disputed domain name “without findings of fact or conclusions under [the Policy].”
The factual findings pertinent to the decision in this case are that:
1. Complainant is engaged in the underwriting, administration, brokerage, and distribution of life insurance and annuities which it undertakes by reference to the trademark, TRANSAMERICA;
2. One of Complainant’s subsidiary companies is named “Transamerica Premier Life Insurance Company”;
3. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) Reg. No. 718,358, registered July 11, 1961, for the trademark TRANSAMERICA;
4. the disputed domain name was registered on March 4, 2015 and resolves to a website that displays links to Complainant and to services that are directly competitive with Complainant’s business under the TRANSAMERICA trademark; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Preliminary Issue: Consent to Transfer
Following notification of the Complaint, Respondent[1] wrote to the Forum indicating its preparedness to voluntarily give up the disputed domain name. Further, a timely filed Response was filed which amplified Respondent’s willingness to transfer the domain name.
Panel has discretion whether or not to directly order transfer of the disputed domain name to Complainant.
Panel notes that “consent-to-transfer” offers are one way for cybersquatters to avoid decisions against them (see, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008)). As found hereunder, the registration was made in bad faith in knowledge of Complainant’s rights.
Further, there is no indication from Complainant that it is ready to take transfer of the domain name and forego the analysis of the Complaint according to the Policy[2] (contra, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) where the panelist was presented with a bilateral request for transfer).
This Panel decides that it is in the circumstances appropriate to apply the Policy.
Primary Issues – UDRP
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for TRANSAMERICA the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
For the purposes of comparison of the domain name and the trademark, it is agreed by panelists that gTLDs can generally be disregarded, as it can in this case (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
So, too, lack of punctuation can generally be disregarded unless the unpunctuated term is ambiguous (see, for example, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) finding that the elimination of spaces between terms does not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also, Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) finding <newbergerberman.com> confusingly similar to the complainant’s NEUBERGER BERMAN trademark).
Otherwise, the domain name takes the whole of the trademark and merely adds the word “premier” which is descriptive/generic and which might also be mistaken as a reference to Complainant’s subsidiary, “Transamerica Premier Life Insurance Company”.
Panel finds the domain name confusingly similar to Complainant’s trademark (see, for example, Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark; Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) finding <amextravel.com> confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Complainant has therefore satisfied the first limb of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information provides no suggestion that Respondent might be commonly known by the disputed domain name since it lists “DOMAIN MAY BE FOR SALE CHECK IGLOO.COM Domain Admin” as the registrant.
There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark. The domain name resolves to a website that displays links to products and services that are directly competitive with Complainant’s business. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use (see, for example, Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business.”; see also McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services 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 pursuant to Policy ¶ 4(c)(iii).”).
Finally, although Response states that it is not concerned with “responding substantively to the allegations raised by Complainant”, it does claim that Respondent “owns a portfolio of generic and descriptive domain names”. There is no better information concerning that claim. Moreover, it is contradicted by the prominent inclusion within the disputed domain name of a Federally registered trademark.
The Panel finds that Complainant has made a prima facie case. Accordingly, the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, the prima facie case against Respondent is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The use of the domain name is for commercial gain, either directly or by way of pay-per-click referral revenue. Panel has already found a likelihood of confusion between the trademark and the domain name. The use of the word “premier” indicates Respondent’s awareness of Complainant’s business and shows an intention to create a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on that site or location (see, for example, AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <premiertransamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 5, 2016
[1] The sender was named as “Domain Registries Foundation”, which is the Registrant Organisation on the WhoIs database.
[2] On the contrary, an unsupported claim in Response is that in pre-Complaint correspondence Respondent made the same offer of transfer directly to Complainant which indicated that it was not interested in that offer.
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