Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1909001861547
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rtransamerica.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2019; the Forum received payment on September 10, 2019.
On September 11, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rtransamerica.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 September 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2019 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@rtransamerica.com.
Also on September 12, 2019, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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. 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims ownership of rights in the TRANSAMERICA trademark based on its portfolio of trademark registrations described below and its rights established in the mark though extensive use of the mark in commerce by Complainant and its predecessors in title since 1929, including more recently but not limited to use through its Internet presence on its websites which it maintains at <www.transamerica.com, <www.transamericafunds.com>, <www.transamericaseriestrust.com>, <www.ta-retirement.com>, and www.transamericaworksite.com. Complainant has owned and used the eponymous domain name <transamerica.com> since December 5, 1994.
Complainant asserts that from February 2018 to July 2018, Complainant received over 6 million web page visits to its <www.transamerica.com> website.
Complainant submits that the disputed domain name <rtransamerica.com> domain is confusingly similar to Complainant’s TRANSAMERICA mark as it incorporates this mark in its entirety and the mark is the dominant component of the second level domain. The addition of the letter “r” at the beginning of “transamerica” is not sufficient to distinguish the domain name from the TRANSAMERICA mark. See Perot Sys. Corp. v. Brown, FA 97303 (Forum June 25, 2001) (finding the domain names <urn2perotsystems.net> and <urn2perotsystems.org> were confusingly similar to Complainant’s PEROT SYSTEMS mark); Victoria’s Secret et al v. Brown, FA 96561 (Forum Mar. 19, 2001) (finding the domain names are <urn2victoriassecret.com> and <urn2victoriassecrets.com> were confusingly similar to Complainant’s VICTORIA’S SECRET mark).
Based on the above, Respondent’s registration of the <rtransamerica.com> domain name serves only to cause confusion, mistake, or deception among consumers attempting to locate Complainant’s website.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <rtransamerica.com> alleging that Complainant never authorized Respondent to register or use the TRANSAMERICA mark in any manner; that Complainant is unaware of any evidence that Respondent has ever commonly been known by the name “Transamerica” (or variations thereof) prior to Respondent’s registration of the <rtransamerica.com> domain name. Therefore, Respondent lacks rights or legitimate interests in the domain name. Citing Policy ¶ 4(c)(ii); AAA Employment, Inc., v. Ahearn and Assoc., FA0520670, p. 6 (Forum Sept. 6, 2005) (“[i]t must be shown by evidence that Respondent was commonly known by the domain name at the time of registration of the domain name.”); Yoga Works, Inc. v. Jenna Arpita d/b/a Shanti Yoga Works, FA0155461, p. 4 (Forum June 17, 2003) (finding that UDRP Policy ¶ 4(c)(ii) was not satisfied where there was no evidence that respondent was commonly known by the <shantiyogaworks.com> domain name prior to its registration of the disputed domain name).
Complainant submits that the disputed domain name <rtransamerica.com> resolves to a website that redirects users to various websites, including, but not limited to, Edmunds.com, and websites that require users to download software. Complainant submits that such use of a confusingly similar domain name to divert Internet users to other websites unrelated to Complainant and to websites that require users to download malware is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Complainant alleges that instead, this demonstrates that Respondent registered and is using the <rtransamerica.com> domain name in bad faith, for the purpose of intentionally attempting to divert, for commercial gain, Internet users to various websites and creating confusion in the marketplace. Citing the decisions of the panels in State Farm Mutual Automobile Insurance Company v. xi wang, FA1579058, pp. 5-6 (Forum Oct. 13, 2014) (“Respondent previously used the <statefarmsusa.com> domain name for a parked webpage that consisted of a variety of different links, some of which were in direct competition with Complainant. . . . the Panel finds that Respondent’s previous use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).”); Boston Green Goods Inc. v. Dealwave, FA1115186, pp. 5-6 (Forum Jan. 15, 2008) (“Respondent previously used the . . . domain name to host a website featuring third-party links, some in direct competition with Complainant. The Panel finds that such use is not a bona fide offering of goods or services under [UDRP] Policy ¶4(c)(i) or a legitimate noncommercial or fair use under [UDRP] Policy ¶ 4(c)(iii).”).
Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the <rtransamerica.com> domain name, therefore, Policy ¶ 4(c)(iii) does not apply. See CanadaDrugs.com Partnership v. MyCanadaDrugs LLC, FA0429088, p. 4 (Forum Apr. 7, 2005) (“. . . [UDRP] Policy ¶ 4(c)(iii) does not apply since Respondent is not making noncommercial or fair use of the domain name.”).
Complainant alleges that the disputed domain name was registered on July 3, 2018 in circumstances where the registrant had actual and constructive knowledge of Complainant and its rights in the TRANSAMERICA mark. In this regard, Complainant submits that Respondent is presumed to have knowledge of Complainant’s registered mark and reputation because Respondent’s domain name <rtransamerica.com> incorporates Complainant’s mark in its entirety. See The PNC Financial Services Group Inc. v. Unasi Inc., FA0535925, p. 6 (Forum Sept. 20, 2005) (“Respondent’s registration of the disputed domain names, which contain confusingly similar versions of Complainant’s PNC, PNCBANK and PNCBANK.COM marks, and Complainant’s registration of its marks with the USPTO suggest [sic] that Respondent knew of Complainant’s rights in the mark when Respondent registered the domain names.”). Consequently, Complainant respectfully submits that Respondent has registered and has been using the <rtransamerica.com> domain name in bad faith.
Complainant complains that as of September 10, 2019, Respondent’s website located at <rtransamerica.com> redirects users to various websites, including, but not limited to websites that require users to download software. Therefore, Complainant’s customers and other Internet users may reasonably, but mistakenly, believe they can obtain these services from Complainant through Respondent’s website, and that Respondent’s website is sponsored by Complainant. Respondent’s use of the domain name <rtransamerica.com> thus creates a likelihood of confusion among users by creating the perception and impression that Complainant owns, sponsors, or endorses Respondent’s website. A screenshot of the home page of the website to which the disputed domain name resolved as of September 10, 2019 has been annexed to the Complaint.
On September 12, 2018, Complainant sent cease and desist correspondence to Respondent among other things, demanded that Respondent immediately cease from violating Complainant’s trademark rights by use of the disputed domain name. Respondent did not reply to this correspondence.
Complainant alleges that Respondent’s use of a privacy service is additional evidence of bad faith under the Policy
Complainant submits that pursuant to Policy ¶ 4(a)(ii), the concealment of Respondent’s true identity through the use of a privacy service is indicative of bad faith registration and use of the <rtransamerica.com> domain name. See Spin Master Ltd. v. DCSTEAM INC., FA1210515, p. 6 (Forum Aug. 5, 2008) (“The Panel therefore finds that this concealment of the Respondent’s true identity was indicative of bad faith registration and use of the disputed domain name pursuant to [UDRP] Policy ¶ 4(a)(ii).”). In this regard, Complainant also cites the decision of the panel in Burt’s Bees, Inc. v. Private Registration, D2011-1808, p. 3 (WIPO Dec. 18, 2011) (“the use of a privacy or identity shield in this case further supports a finding that the Respondent has acted in bad faith. Although privacy shields may be legitimate in some cases, where, as in this case the Disputed Domain Name at issue fully encompasses the Complainant’s reputed mark and has obviously been used to divert Internet users in terms of paragraph 4(b)(iv) of the Policy, then it seems more likely than not that the Respondent is using a privacy shield to mask its true identity in an attempt to facilitate cybersquatting . . . .”).
Further, as Complainant is the owner of the domain <transamerica.com> and the disputed domain name adds an “r” at the beginning of “transamerica”, Complainant alleges that the disputed domain name takes advantage of Internet users’ typographical errors in order to create a situation of deception and confusion among consumers attempting to locate Complainant’s website at <www.transamerica.com>.
Complainant concludes that the disputed domain name registration serves only to cause confusion, mistake or deception among consumers, especially those consumers who are seeking to locate Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a holding company for a group of subsidiaries engaged in the sale of life insurance, investment planning, and retirement services. Complainant’s largest subsidiary, Transamerica Life Insurance Company (“Transamerica Life”), has been underwriting insurance since 1906 and has had more than $1,055 billion of insurance in force as of December 31, 2016.
Complainant’s group of companies and its predecessors have used the name “Transamerica” since 1929 as a trade name and service mark. Complainant is the owner of a large portfolio of registered trademarks and service mark. The following are examples of Complainant’s earliest U.S. Trademark Registrations, all of which incorporate the term Transamerica:
|
Mark |
Registration No. |
Registration Date |
|
TRANSAMERICA |
718358 |
7/1/1961 |
|
TRANSAMERICA |
831626 |
7/4/1967 |
|
TRANSAMERICA |
978808 |
2/12/1974 |
The disputed domain name <rtransamerica.com> was registered on July 3, 2018.
There is no information available about the Respondent except for that provided in the Complaint and the Registrar’s Whois.
The disputed domain name resolves to a website which has information about automobiles and which Complainant alleges provides downloads containing malware for visitors. In the absence of a Response, this has not been denied.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has satisfied this Panel that it has rights in the TRANSAMERICA trademark and service mark acquired through its ownership of the abovementioned portfolio of registered trademarks and the extensive use of the mark by Complainant and its predecessors in title since 1929.
Having compared the TRANSAMERICA mark and the disputed domain name this Panel finds that the disputed domain name consists of Complainant’s mark in its entirety in combination with the letter “r” which adds no apparent meaning and the gTLD extension which can be ignored for the purpose of deciding on the issue of confusing similarity in the context of this Complaint.
As the dominant element of the disputed domain name is Complainant’s trademark and as the additional letter “r” has no significant function or meaning, this Panel finds that the disputed domain name is confusingly similar to the TRANSAMERICA mark in which Complainant has rights.
Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. It is well established that in such circumstances the burden of production shifts to Respondent to prove such rights and interests.
Complainant asserts that Respondent is not commonly known by the disputed domain name; Complainant has asserted superior rights in the use of the mark in the cease and desist letter which was sent to Respondent and Respondent has not responded to that; Complainant alleges that Respondent is typosquatting and using the disputed domain name for commercial purposes as the address of a website with malware downloads which cannot constitute fair use.
Respondent has failed to file a Response and so has failed to discharge the burden of production.
Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rtransamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________
James Bridgeman SC
Panelist
Dated: October 4, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page