DECISION

Transamerica Corporation v. DreamNet Inc

Claim Number: FA0112000103036

PARTIES

Complainant is Transamerica Corporation, Los Angeles, CA (“Complainant”) represented by Bruce A. McDonald, of Wiley, Rein & Fielding LLP.  Respondent is Eddy Marin DreamNet, Inc., Pompano Beach, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <misstransamerica.com>, registered with Intercosmos Media Group.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 15, 2001; the Forum received a hard copy of the Complaint on December 18, 2001.

On December 17, 2001, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <misstransamerica.com> is registered with Intercosmos Media Group and that Respondent is the current registrant of the name.  Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@misstransamerica.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant urges the following:

Complainant has rights is a mark contained in its entirety in a domain name registered by Respondent. This domain name, <misstransamerica.com>, is confusingly similar to Complainant’s federally registered TRANSAMERICA mark.  Respondent has no rights or legitimate interests with respect to the disputed domain name.  Respondent registered and used the disputed domain name in bad faith.

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Since 1929, Complainant and its subsidiaries have continuously and exclusively used the TRANSAMERICA mark in commerce in relation to a variety of life insurance, commercial lending, commercial leasing and real estate services and goods.  On February 10, 1958, Complainant registered the TRANSAMERICA service mark on the Principal Register of the United States Patent and Trademark Office as registration number 45,630.  Complainant additionally owns many other registrations incorporating the TRANSAMERICA name.

Complainant has established substantial good will and strong secondary meaning with the public through its extensive advertising and promotion of the TRANSAMERICA name, as well as its presence on the Internet via its <Transamerica.com> domain name.

Respondent registered <misstransamerica.com> on October 16, 2001 and has linked the disputed domain name to a pornographic website.

DISCUSSION

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.”

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.

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.

Identical to and/or Confusingly Similar

Complainant has established rights in the TRANSAMERICA mark due to its continuous and exclusive use of the mark as well as its registration of the mark on the Principal Register of the USPTO.

Respondent’s <misstransamerica.com> domain name is 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.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the Complainant’s registered mark “llbean” does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).  Further, Respondent’s use of Complainant’s mark in its entirety in the disputed domain name makes the domain confusingly similar.  See Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR; the domain name is confusingly similar).

Due to the substantial secondary meaning Complainant has created with its mark, as well as its presence on the Internet, users accessing the Internet are likely to recognize Respondent’s domain name and falsely assume that the disputed domain name has the support and sponsorship of Complainant when it does not.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant has established in this proceeding that it has rights and legitimate interest in the mark contained in its entirety within the domain name registered by Respondent.  With no Response from Respondent, the Panel is permitted to make all inferences in favor of Complainant and to assume that Complainant’s allegations are true.  See 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”).

Further, with no Response from Respondent, the Panel is permitted to presume that Respondent has no rights or legitimate interests in the domain names because Respondent failed to respond to this Complaint.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent’s use of a domain name that incorporates Complainant’s registered service mark in order to display sexually explicit materials reveals its intent to confuse Complainant’s customers into associating the pornographic website with Complainant’s business.  This activity results in the tarnishing of Complainant’s name and is not considered a bona fide offering of goods pursuant to Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).

Respondent is known as DreamNet.inc and has not provided any information to indicate that it is also known as the disputed domain name or by Complainant’s mark.  As a result, Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).   See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the Respondent had no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and because Respondent had not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).  Furthermore, due to the fame of Complainant’s name and the substantial goodwill associated with it, Respondent’s use of a domain that infringes on such a well-known name indicates that it has no rights or legitimate interests in the disputed domain pursuant to Policy ¶ 4(c)(ii).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Respondent’s use of the infringing domain to commercially benefit from the fame of Complainant’s mark by diverting Internet users to a pornographic website is not a legitimate noncommercial or fair use of the domain name.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark). see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

            Registration and Use in Bad Faith

Respondent’s use of a domain name confusingly similar to Complainant’s famous mark as a link to a pornographic website indicates its bad faith registration and use.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

Respondent’s use of a domain name confusingly similar to Complainant’s famous name in order to commercially benefit from Complainant’s goodwill evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website).  Moreover, Respondent’s attempt to commercially benefit from pornography through its infringing domain indicates its bad faith registration and use.  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <misstransamerica.com> be hereby transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: February 8, 2002.

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