Transamerica Corporation v. Domain Administrator / Sandesa, Inc.
Claim Number: FA1611001704763
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, District of Columbia, USA. Respondent is Domain Administrator / Sandesa, Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericamoving.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 28, 2016; the Forum received payment on November 28, 2016.
On November 29, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <transamericamoving.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 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@transamericamoving.com. Also on November 30, 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 December 20, 2016.
On December 27, 2016, Complainant made a timely additional submission.
On January 3, 2017, Respondent made a timely additional submission.
All submissions were considered by the Panel.
On December 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink 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
Policy ¶ 4(a)(i)
Complainant has rights in the TRANSAMERICA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 718,358, registered on July 11, 1961). Respondent’s <transamericamoving.com> domain name is confusingly similar to the TRANSAMERICA mark because it contains the mark along with the descriptive or non-distinctive term “moving.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <transamericamoving.com> domain name as it is not authorized to use the TRANSAMERICA mark and because the WHOIS information does not indicate being so known. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website features pay-per-click links incorporating Complainant’s mark that redirect to parties competing with Complainant in insurance services.
Policy ¶ 4(a)(iii)
Respondent uses the <transamericamoving.com> domain name in bad faith because the resolving website disrupts Complainant’s business by featuring pay-per-click links that redirect to parties competing with Complainant in insurance services. Respondent registered the <transamericamoving.com> domain name in bad faith because it did so with actual or constructive knowledge of Complainant’s rights in the TRANSAMERICA mark.
B. Respondent
Policy ¶ 4(a)(i)
The <transamericamoving.com> domain name is not confusingly similar to the TRANSAMERICA mark because the generic meaning of the mark combined with the word “moving” does not suggest an association with Complainant, but rather a wholly different purpose. The <transamericamoving.com> domain name is composed of generic terms.
Policy ¶ 4(a)(ii)
The <transamericamoving.com> domain name is composed of generic terms and Respondent is a generic domain name reseller who acquired the domain name for the purpose of selling it to a moving company.
Policy ¶ 4(a)(iii)
The <transamericamoving.com> domain name is composed of generic terms and Respondent is a generic domain name reseller who acquired the domain name for the purpose of selling it to a moving company. The links provided at the resolving website were provided by a parking service without the knowledge or permission of Respondent and no revenue was generated through insurance related advertising.
C. Complainant’s Additional Submission
Respondent uses the Transamerica name for pay-per-click advertising linking
Complainant’s famous service mark to the websites of third-party advertisers offering services in competition with Complainant.
Respondent’s right to warehouse Internet domain names does not extend to domain names incorporating a famous trademark that belongs to Complainant.
Complainant’s Transamerica service mark has acquired distinctiveness through continuous use and advertising since 1929, and is a famous trademark by any definition. Such acquired distinctiveness has extended, since as early as 1958, beyond financial services to include the “transport” industry in which Respondent claims the mark is suggestive or descriptive. For 23 years, Complainant owned Budget Rent-a-Car, and advertisements for Budget included the tagline, “A Transamerica Company.” Complainant has also used the Transamerica name in connection with air transportation. The Transamerica name has residual goodwill in connection with transportation services in addition to being a famous mark.
Complainant is the only party that owns a service mark registration including the name “Transamerica.” The single exception is the service mark Trans America for “printing services.”
Complainant has owned several United States registrations covering the Transamerica name in connection with transportation services.
D. Respondent’s Additional Submission
This registration was done in good faith based on the descriptive relevance and semantic sense of transamerica or trans america related to moving.
Complainant’s mark is indeed well known but Complainant is not the exclusive user of the transamerica string, nor the very similar transamerican or transam strings.
Any advertising for Complainant that appeared automatically on the disputed domain name is unfortunate and regrettable. If this problem was anticipated in advance, Respondent would not have acquired the domain name.
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.
Complainant claims rights in the TRANSAMERICA mark through its registration with the USPTO (e.g., Reg. No. 718,358, registered July 11, 1961) for use in financial and insurance services. Complainant has provided this registration in an attached exhibit. As such, the Panel finds that Complainant has rights in the TRANSAMERICA mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant claims that Respondent’s <transamericamoving.com> domain name is confusingly similar to the TRANSAMERICA mark because it contains the mark along with the term “moving.” The domain name also contains the generic top-level domain (“gTLD”) “.com.” Complainant argues that the term “moving” is descriptive or non-distinctive. The Panel agrees with this characterization and finds the <transamericamoving.com> domain name confusingly similar to the TRANSAMERICA mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). See also TransAmerica Corporation v DreamNet Inc, FA 0112000103036 (Forum February 8, 2002) (finding that the Respondent’s <misstransamerica.com> domain name was confusingly similar to Complainant’s federally registered TRANSAMERICA mark because the disputed domain consists of Complainant’s trademark and the addition of the top level “.com” along with a generic word, “miss.” These additions do not create a domain name that is distinct from the mark of another that is contained within them when determining confusing similarity).
Complainant has proved this element.
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 maintains that Respondent is not commonly known by the <transamericamoving.com> domain name as it is not authorized to use the TRANSAMERICA mark and because the WHOIS information does not indicate being so known. The Panel notes that the available WHOIS information lists “Domain Administrator / Sandesa, Inc.” as Registrant. The Panel finds a lack of contrary evidence and finds that Respondent is not commonly known by the domain name according to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant contends that Respondent fails to use the <transamericamoving.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website features pay-per-click links incorporating Complainant’s mark that redirect to parties competing with Complainant in insurance services. Complainant has provided a screenshot of the website to demonstrate that links such as “Transamerica Insurance” are listed. The Panel finds this evidence sufficient to demonstrate competitive links and agrees that Respondent’s use of the <transamericamoving.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See 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).”).
Complainant has proved this element.
Complainant alleges that Respondent uses the <transamericamoving.com> domain name in bad faith because the resolving website disrupts Complainant’s business by featuring pay-per-click links that redirect to parties competing with Complainant in insurance services. Complainant has provided a screenshot of the website to demonstrate that links such as “Transamerica Insurance” are listed. The Panel finds this evidence sufficient to demonstrate competitive links, and agrees that Respondent’s use of the <transamericamoving.com> domain name is disruptive bad faith according to Policy ¶ 4(b)(iii). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)).
Complainant claims that Respondent registered the <transamericamoving.com> domain name in bad faith because it did so with actual or constructive knowledge of Complainant’s rights in the TRANSAMERICA mark. Complainant urges that Respondent had such knowledge based on the longstanding and well known use of the mark. The Panel finds this sufficient to show that Respondent had actual knowledge of Complainant’s rights at the time it registered the <transamericamoving.com> domain name and finds such registration to have been in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Additionally, Respondent admits that the Transamerica Mark is well known and that the parking service delivered advertising related to Complainant. Respondent makes no claim that it attempted to limit the use of the domain name by the parking service. Respondent is responsible for the use made of the domain name. Knowingly registering a domain containing another’s mark and parking it without limiting the ability of the parking service to improperly use it is sufficient evidence of bad faith registration and use.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericamoving.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 4, 2017
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