Transamerica Corporation v. Jin Dong Li / Li Jin Dong
Claim Number: FA2011001923147
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., United States. Respondent is Jin Dong Li / Li Jin Dong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericca.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2020; the Forum received payment on November 30, 2020.
On December 1, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <transamericca.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 December 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 2020 by which Respondent could file a Response to the Complaint, via e-mail addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the attention of postmaster@transamericca.com. Also, on December 3, 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 December 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant and its subsidiaries, operating under the name and mark TRANSAMERICA, are engaged in the sale of life insurance, investment planning and retirement services.
Complainant holds a registration for the TRANSAMERICA service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 978,808, registered February 12, 1974, and renewed most recently as of July 18, 2013.
Respondent registered the domain name <transamericca.com> on October 4, 2019.
The domain name is confusingly similar to Complainant’s TRANSAMERICA service mark.
Respondent has not been commonly known by the domain name. Complainant has not authorized Respondent to use its TRANSAMERICA mark.
Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to resolve to a website which hosts hyperlinks to other websites operating in competition with the business of Complainant.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the TRANSAMERICA mark prior to registering the domain name.
Respondent registered the domain name using a privacy service to disguise its identity.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Language Of The Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
(i) the content of the <transamericca.com> website is displayed in the English language; and
(ii) the privacy policy for the website resolving from Respondent’s <transamericca.com> domain name is rendered in English; and
(iii) these facts demonstrate that Respondent is proficient in English.
Respondent does not contest any of these assertions. For that reason, and inasmuch as requiring Complainant to translate into Chinese all of the documents required to prosecute this proceeding would put Complainant to a substantial financial burden and would unnecessarily delay this proceeding, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 rights in the TRANSAMERICA service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <transamericca.com> domain name is confusingly similar to Complainant’s TRANSAMERICA service mark. The domain name incorporates the mark in its entirety, with only the addition of an extraneous duplicate letter “c” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum August 10, 2015):
Respondent’s … domain name is confusingly similar to the … mark under Policy ¶ 4(a)(i) because the disputed domain merely adds [to the mark] the letter ‘i’ ....
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the contested <transamericca.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged <transamericca.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the TRANSAMERICA service mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Jin Dong Li,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without any objection from Respondent, that Respondent uses the <transamericca.com> domain name to resolve to a website hosting hyperlinks to other websites operating in competition with the business of Complainant, from the functioning of which links Respondent presumably profits from the receipt of click-through fees. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Ashley Furniture Industries, Inc. v. domain admin, FA1626253 (Forum July 29, 2015):
Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs the disputed <transamericca.com> domain name, which we have found to be confusingly similar to Complainant’s Transamerica service mark, to attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent employed a domain name that was confusingly similar to the mark of a UDRP complainant to divert Internet users searching for the website of that complainant to its own website, likely profiting in the process).
We are also convinced by the evidence that Respondent registered the <transamericca.com> domain name full well knowing of Complainant and its rights in the TRANSAMERICA mark. This further demonstrates Respondent’s bad faith in registering the domain name. See, for example, iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018):
Respondent’s prior knowledge [and, therefore, bad faith registration] is evident from the notoriety of Complainant’s … trademark as well as from Respondent’s use of its trademark[-] laden domain name to direct internet traffic to a website which is a direct competitor of Complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <transamericca.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 31, 2020
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