Transamerica Corporation v. Zhichao
Claim Number: FA2009001911042
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia. Respondent is Zhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com>, registered with Dynadot, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2020; the Forum received payment on September 2, 2020.
On September 4, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@transamericaemplyeebenefits.com, postmaster@transamericaemployeebebefits.com. Also on September 8, 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 October 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Transamerica Corporation, is a holding company for a group of subsidiaries that provide life insurance, investment planning, and retirement services. Complainant has rights in the TRANSAMERICA mark. The mark was first registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 718, 358, registered on July 1, 1961) in 1961.
2. The <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com>[i] domain names are confusingly similar to Complainants mark since they incorporate the entire TRANSAMERICA mark and add a “.com” generic top-level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names. Respondent is not commonly known by the domain names and Complainant has not authorized Respondent to use the TRANSAMERICA mark.
4. Additionally, Respondent does not use the domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use; rather, Respondent uses the domains to divert Internet users to its websites where it hosts click through hyperlinks to Complainant’s competitors.
5. Respondent registered and uses the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names in bad faith. Respondent uses the domain names to confuse and divert Internet users to Respondent’s websites where it hosts click through links to Complainant’s competitors.
6. Additionally, Respondent’s use of a privacy service is further evidence of Respondent’s bad faith.
7. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the TRANSAMERICA mark based on Respondent’s use of the entire mark in the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TRANSAMERICA mark. Respondent’s domain name is confusingly similar to Complainant’s TRANSAMERICA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names and that Respondent registered and uses the domain names in bad faith.
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”).
Identical and/or Confusingly Similar
Complainant has rights in the TRANSAMERICA mark based on registration with the USPTO (e.g., Reg. No. 831,626, registered on July 4, 1967). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel holds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent does not have rights and legitimate interests in the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names because Respondent is not commonly known by the domain names and Complainant has not authorized Respondent to use the TRANSAMERICA mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS information lists “Zhichao” as the registrant and no information suggests Complainant has authorized Respondent to use the TRANSAMERICA mark in any way. Thus, the Panel holds that Respondent is not commonly known by the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain names to divert Internet users to Respondent’s website that features click through hyperlinks to the websites of Complainant’s competitors. The use of a domain name incorporating the mark of another to divert consumers and host hyperlinks to competing services does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). Complainant provides screenshots of the resolving webpages for the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names that show hyperlinks to services that directly compete with Complainant. Thus, Respondent is not using the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names in bad faith because Respondent uses the domain names to confuse and divert Internet users to Respondent’s websites where it hosts click through links to Complainant’s competitors. The use of a domain name incorporating the mark of another to divert and confuse consumers into believing an affiliation exists between a respondent and a complainant, and to host competing hyperlinks is considered evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see additionally Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Complainant provides screenshots of the resolving webpages for the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names that show hyperlinks to services the directly compete with Complainant and that Respondent likely receives some commercial benefit from. Therefore, the Panel holds that Respondent registered and uses the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names in bad faith per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Furthermore, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TRANSAMERICA mark when registering the domain names. Actual knowledge may be found based on the use made of the mark in the domain name at issue. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“[T]Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (the “Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used”). Complainant argues that because Respondent used the entire TRANSAMERICA mark in the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names, Respondent must have had knowledge of Complainant’s rights in the mark. The Panel agrees and finds that Respondent registered and uses the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 6, 2020
[i] The <transamericaemplyeebenefits.com> and <transamericaemployeebebefits.com> domain names were registered on March 22 and 25, 2020, respectively.
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