Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), Paragraph 3(b).

The Administrative Panel consisting of a single member was appointed on August 6, 2000 by WIPO.

The Complainant is Transamerica Corporation, a Delaware corporation with principal offices at 600 Montgomery Street, San Francisco, California 94111, U.S.A. (hereinafter "Complainant" or "Transamerica").

The Respondent in this administrative proceeding is Inglewood Computer Services, Calthwaite, Penrith, Cumbria CA11 9RQ, United Kingdom (hereinafter the "Respondent").

The Complainant owns a number of United States Service Mark Registrations which all include the word "Transamerica". They and its business relate to the provision of a number of financial services products, including advice, financing and insurance.

The Respondent registered the domain name "trans-america.com" with Network Solutions, Inc. 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.

The registration service agreement, pursuant to which the aforesaid domain name is registered, incorporates the Policy.

The record in this proceeding which was delivered to the Administrative Panel consisted of the following:

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.

The Complainant says that the Respondent’s domain name is identical, for all relevant purposes, to service mark "Transamerica", that the Respondent has no apparent rights or legitimate interest in respect of the domain name and that the Respondent should be considered to have registered the name in bad faith. It seeks a decision that the domain name be cancelled.

The Respondent apparently contends that it registered the domain name with the intention to import Transam automobiles into the United Kingdom.

The Complainant referred to correspondence from the Respondent’s counsel.

On February 24, 2000, it was asserted by counsel that the Respondent registered the domain name with the intention to import Transam automobiles into the United Kingdom. The Complainant says that this is "…belied by the absence of any relevant web site located at www.trans-america.com and, even if true, it fails to explain why the Respondent registered a domain name identical to [the Complainant’s] service marks".

In the same correspondence, counsel for the Respondent stated that his client "…is not currently using the domain name for any commercial purpose" and in that correspondence and in an April 7, 2000, letter sought a "…reasonable offer to purchase the domain name".

A recent search of the aforesaid web site by the Administrative Panel, disclosed no commercial activity there.

Paragraph 4(a) of the Policy requires the Complainant to prove that:

a) a domain name is identical or confusingly similar to a service mark to which the Complainant has rights;

b) the Respondent has no legitimate interest in respect of the domain name;

c) the domain name has been registered or is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith if, inter alia, there are circumstances indicating registration of a domain name for the purpose of selling it to the Complainant for valuable consideration in excess of its documented out-of-pocket costs related directly to the domain name.

The Administrative Panel is satisfied that the domain name is confusingly similar to the Complainant’s mark, Transamerica. It is virtually identical in that it differs only by the lower case "t" and the inclusion of a dash after the fifth letter in the word "transamerica".

The Respondent has advanced a reason for its registration that is not sustainable in the absence of further explanation. There is no apparent need to use the word "transamerica" in connection with the importation of "transam" automobiles and, in any event, there is no evidence that the domain name is being used in relation to such importation.

The circumstances in this case clearly indicate that the primary purpose of the registration was to sell it to the Complainant. The correspondence from counsel for the Respondent is direct evidence of that fact and it is corroborated by the lack of any apparent commercial activity by the Respondent in connection with the domain name. There is no evidence of any documented costs incurred by the Respondent which are related directly to the domain name.

The Administrative Panel is satisfied the Complainant has proved the elements of its complaint as required by paragraph 4(a) of the Policy.

It is the decision of this Administrative Panel that the domain name "trans-america.com" be cancelled.

Edward C. Chiasson Q.C.
Administrative Panel

Dated: August 20, 2000