Transamerica Corporation v. Zhichao Yang
Claim Number: FA2007001904731
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericaemployerbenefits.com>, registered with Name.com, Inc..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2020; the Forum received payment on July 17, 2020.
On July 24, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <transamericaemployerbenefits.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 July 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2020 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@transamericaemployerbenefits.com. Also on July 27, 2020, 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 August 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a holding company that engages in the sale of life insurance, investment planning, and retirement services. Complainant asserts rights in the in the TRANSAMERICA trademark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 718,358, registered on July 11, 1961). Respondent’s <transamericaemployerbenefits.com> domain name is confusingly similar to Complainant’s trademark, as it incorporates the trademark in its entirety and merely incorporates a misspelling of Complainant’s <transamericaemployeebenefits.com> domain name.
Respondent lacks rights or legitimate interests in the <transamericaemployerbenefits.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TRANSAMERICA trademark. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to divert Internet users to competing websites through third party hyperlinks for financial gain.
Respondent registered and uses the <transamericaemployerbenefits.com> domain name in bad faith. Respondent’s registration of the domain name is an example of typosquatting. Additionally, Respondent had knowledge of Complainant’s rights in the TRANSAMERICA trademark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 718,358 TRANSAMERICA (word), registered July 11, 1961;
No. 831,626 TRANSAMERICA (word), registered July 4, 1967;
No. 978,808 TRANSAMERICA (word), registered February 12, 1974;
No. 1,129,244 TRANSAMERICA (word), registered January 15, 1980 for goods in class 16;
No. 1,202,289 TRANSAMERICA (word), registered July 20, 1982 for services in class 36;
No. 1,635,681 TRANSAMERICA (fig), registered February 19, 1991 for services in classes 35, 36, 37, 39 and 41;
No. 1,635,682 TRANSAMERICA (word), registered February 19, 1991 for services in classes 35, 36, 37, 39 and 41;
No. 2,224,207 TRANSAMERICA TRIBUTE (word), registered February 16, 1999 for services in class 36;
No. 2,228,202 TRANSAMERICA CLASSIC (word), registered March 2, 1999 for services in class 36;
No. 2,246,732 TRANSAMERICA BOUNTY (word), registered May 18, 1999 for services in class 36;
No. 2,284,121 TRANSAMERICA PLAN MAXIMIZER (word), registered October 5, 1999 for services in class 36;
No. 2,458,663 TRANSAMERICA ELITE (word), registered June 5, 2001 for services in class 36;
No. 2,486,240 TRANSAMERICA SECURE REWARDS (word), registered September 4, 2001 for services in class 36;
No. 2,609,854 TRANSAMERICA PLAN PLUS (word), registered August 20, 2002 for services in class 36;
No. 3,058,524 TRANSAMERICA CENTER FOR RETIREMENT STUDIES (word), registered February 14, 2006 for services in classes 35 and 41;
No. 3,430,218 TRANSAMERICA SECURE (word), registered May 20, 2008 for services in class 36;
No. 3,665,517 TRANSAMERICA I-SERIES (word), registered August 11, 2009 for services in class 36;
No. 4,031,172 TRANSAMERICA MOBILE ENROLLER (word), registered September 27, 2011 for services in class 36;
No. 4,169,169 TRANSAMERICA TRANSFORM TOMORROW (word), registered July 3, 2012 for services in class 36;
No. 4,392,736 TRANSAMERICA TOTAL PLAN MANAGEMENT (word), registered August 27, 2013 for services in class 36;
No. 4,511,738 TRANSAMERICA WEALTH MANAGEMENT STRATEGIES (word), registered April 8, 2014 for services in class 36;
No. 4,511,809 TRANSAMERICA (word), registered April 8, 2014 for services in class 36;
No. 4,511,811 TRANSAMERICA (fig), registered April 8, 2014 for services in class 36;
No. 4,549,033 THE TRANSAMERICA DIFFERENCE (word), registered June 10, 2014 for services in class 36;
No. 4,601,889 TRANSAMERICA JOURNEY (word), registered September 9, 2014 for services in class 36;
No. 4,634,309 TRANSAMERICA INSTITUTE (word), registered November 4, 2014 for services in classes 35 and 41;
No. 4,660,133 TRANSAMERICA RETIREMENT SOLUTIONS (word), registered December 23, 2014 for services in class 35;
No. 4,660,134 TRANSAMERICA RETIREMENT SOLUTIONS (word), registered December 23, 2014 for services in class 36;
No. 4,725,082 TRANSAMERICA CENTER FOR HEALTH STUDIES (word), registered April 21, 2015 for services in classes 35 and 41;
No. 4,761,806 TRANSAMERICA FINACIAL FOUNDATION IUL (word), registered June 23, 2015 for services in class 36;
No. 4,795,843 TRANSAMERICA SECURE RETIREMENT INDEX (word), registered August 18, 2015 for services in class 36;
No. 4,813,213 TRANSAMERICA (fig), registered September 15, 2015 for goods in class 16;
No. 4,818,494 TRANSAMERICA INCOME PLUS (word), registered September 22, 2015 for services in class 36;
No. 4,819,598 TRANSAMERICA FREEDOM ASSET ADVISOR (word), registered September 22, 2015 for services in class 36;
No. 4,835,216 TRANSAMERICA GLOBAL LINK SOLUTIONS (word), registered October 20, 2015 for services in classes 35, 36 and 41;
No. 4,835,217 TRANSAMERICA GLOBAL LINK SOLUTIONS (fig), registered October 20, 2015 for services in classes 35, 36 and 41;
No. 4,841,706 TRANSAMERICA RETIREMENT PLAN EXCHANGE (word), registered October 27, 2015 for services in classes 35, 36 and 41;
No. 4,863,327 TRANSAMERICA (word), registered December 1, 2015 for services in class 41;
No. 4,877,887 TRANSAMERICA RETIREMENT SOLUTIONS (word), registered December 29, 2015 for goods in class 16;
No. 4,909,084 TRANSAMERICA (word), registered March 1, 2016 for goods in class 16;
No. 5,009,328 TRANSAMERICA FastTrack Retirement Plan (word), registered July 26, 2016 for services in class 36;
No. 5,095,977 TRANSAMERICA TRAVEL PROTECTION (word), registered December 6, 2016 for services in class 36; and
No. 5,115,467 TRANSAMERICA PROVIDER SELECT (word), registered January 3, 2017 for services in class 36.
The disputed domain name <transamericaemployerbenefits.com> was registered on February 19, 2020.
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”).
The Complainant asserts rights in the TRANSAMERICA trademark through its registration of the trademark with the USPTO. Registration of a trademark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 718,358, registered on July 11, 1961). Therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <transamericaemployerbenefits.com> domain name is confusingly similar to Complainant’s trademark because the disputed domain name incorporates the TRANSAMERICA trademark in its entirety and merely features a misspelling of Complainant’s domain name <transamericaemployeebenefits.com>. A misspelling does not save a domain name from a finding of confusing similarity under Policy ¶ 4(a)(i). See Chegg Inc. v. Company CEO / Qulity Programming, FA 1610061 (Forum Apr. 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) whereas “Respondent’s <chwgg.com> domain name is a simple misspelling of Complainant’s CHEGG.COM mark.”). Here, Complainant argues that Respondent simply misspells Complainant’s <transamericaemployeebenefits.com> domain name by simply changing the word “employee” to “employer” in the disputed domain name. The Panel agree with the Complainant that the disputed domain name incorporates the trademark TRANSAMERICA in full, followed by descriptive words that connected to the Complainant’s services, as well as similar to the description used by Complainant in Complainant’s own domain name. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <transamericaemployerbenefits.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TRANSAMERICA trademark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. 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). The WHOIS information for the disputed domain name shows that the registrant’s name is “Zhichao Yang” and nothing in the record indicates that Respondent is licensed to use Complainant’s trademark or is known by the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the <transamericaemployerbenefits.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the domain name to divert Internet users to competing websites through third party hyperlinks, which is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot of Respondent’s website which appears to feature competing hyperlinks. The Panel agrees that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant claims that Respondent registered and uses the <transamericaemployerbenefits.com> domain name in bad faith. Respondent uses the domain name to host competing hyperlinks, which is evidence of bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As previously noted, Complainant provides a screenshot of Respondent’s website which appears to feature competing hyperlinks. The Panel agree that such use is evidence of bad faith per Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent’s registration of the <transamericaemployerbenefits.com> domain name is an example of typosquatting. Typosquatting is itself independent evidence of bad faith. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Complainant argues that Respondent simply misspells Complainant’s <transamericaemployeebenefits.com> domain name by changing the word “employee” to “employer” in the disputed domain name. The Panel agrees that Respondent has engaged in typosquatting, and find it as evidence of bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered the <transamericaemployerbenefits.com> domain name with knowledge of Complainant’s rights in the TRANSAMERICA trademark. Knowledge of rights to a trademark may be shown through the trademark being fully incorporated in the disputed domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Here, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the trademark because Respondent incorporated the TRANSAMERICA trademark in its entirety and misspelled Complainant’s own domain name. The Panel agrees and find that the Respondent registered the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericaemployerbenefits.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 24, 2020
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