Transamerica Corporation v. John Hyatinth
Claim Number: FA1610001700628
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, Washington D.C., United States. Respondent is John Hyatinth (“Respondent”), Georgia, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericalogistics.net>, registered with Domain.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 31, 2016; the Forum received payment on October 31, 2016.
On October 31, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <transamericalogistics.net> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 October 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2016 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@transamericalogistics.net. Also on October 31, 2016, 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 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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, through a network of subsidiaries and operation divisions, is engaged in the underwriting, administration, brokerage, and distribution of life insurance and annuities to United States and international clientele. Complainant has registered the TRANSAMERICA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 718,358, registered July 11, 1961), which demonstrates Complainant’s rights in its mark. Respondent’s <transamericalogistics.net> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the descriptive term “logistics.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the name “Transamerica,” and Complainant has not authorized Respondent to use the TRANSAMERICA mark. Further, 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. Rather, Respondent’s domain name resolves to a website that displays links to products and services that are directly competitive with Complainant’s business.
Respondent registered and is using the domain name in bad faith. First, Respondent uses the domain name to host competing hyperlinks. Second, until recently, Respondent shielded its identity using a privacy service. Finally, Complainant’s use of the TRANSAMERICA mark for nearly ninety years and its federal trademark registrations in the United States and around the world make it clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Transamerica Corporation, through a network of subsidiaries and operation divisions, is engaged in the underwriting, administration, brokerage, and distribution of life insurance and annuities to United States and international clientele. Complainant has rights in the TRANSAMERICA mark through registration with the USPTO (e.g., Reg. No. 718,358, registered July 11, 1961). Respondent’s <transamericalogistics.net> domain name is confusingly similar to Complainant’s mark.
Respondent, John Hyatinth, registered the <transamericalogistics.net> domain name on February 29, 2016.
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the name “Transamerica,” and Complainant has not authorized Respondent to use the TRANSAMERICA mark. Further, 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. Rather, Respondent’s domain name resolves to a website that displays links to products and services that are directly competitive with Complainant’s business.
Respondent registered and is using the domain name in bad faith. First, Respondent uses the domain name to host competing hyperlinks. Second, until recently, Respondent shielded its identity using a privacy service. Finally, Respondent registered the domain name with actual knowledge of Complainant’s TRANSAMERICA mark.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Complainant has rights in the TRANSAMERICA mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <transamericalogistics.net> domain name is confusingly similar to Complainant’s TRANSAMERICA mark under Policy ¶ 4(a)(i) as it wholly incorporates the mark and merely adds the descriptive term “logistics.”
Respondent has no rights or legitimate interests in the <transamericalogistics.net> domain name. Respondent is not commonly known by the domain name. Complainant has not authorized Respondent to use the TRANSAMERICA mark. The WHOIS information lists “John Hyatinth” as registrant of the domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is not using the domain name in connection with 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). Respondent’s domain name resolves to a website that displays links to products and services that are directly competitive with Complainant’s business. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent uses the <transamericalogistics.net> domain name to host competing hyperlinks which is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Until recently, Respondent shielded its identity using a privacy service. The consensus view among panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Respondent’s domain name resolves to a website that displays links to products and services that are directly competitive with Complainant’s business and Respondent uses the domain name to host competing hyperlinks. Therefore, the Panel finds that Respondent has utilized a privacy shield under circumstances that constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent registered the <transamericalogistics.net> domain name with actual knowledge of Complainant’s TRANSAMERICA mark. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericalogistics.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 6, 2016
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