Transamerica Corporation v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA1705001730186
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericafinancial.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2017; the Forum received payment on May 4, 2017.
On May 5, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <transamericafinancial.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 May 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2017 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@transamericafinancial.com. Also on May 5, 2017, 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 May 31, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 registered its TRANSAMERICA mark (e.g., Reg. No. 718,358, registered July 11, 1961), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <transamericafinancial.com> is identical or confusingly similar to Complainant’s mark because it merely appends the descriptive term “financial” and the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its TRANSAMERICA mark in any fashion and Respondent is not commonly known by the disputed domain name. Furthermore, Respondent’s use of the domain name to contain links to competing financial services demonstrates a lack of any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent has registered and is using the <transamericafinancial.com> domain name in bad faith. Respondent attempts to disrupt the business of Complainant —under Policy ¶ 4(b)(iii)—by offering competing services. Respondent is also attempting to attract Internet traffic and commercially benefit from the goodwill of the TRANSAMERICA mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Respondent’s actual knowledge of Complainant’s rights in the TRANSAMERICA mark is shown by the use of the mark in the domain name. Lastly, Respondent’s use of a privacy shield serves as additional evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 contends it registered its TRANSAMERICA mark with the USPTO (e.g., Reg. No. 718,358, registered July 11, 1961), and has rights in the mark under Policy ¶ 4(a)(i). A USPTO registration confers rights in a mark. T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the TRANSAMERICA mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <transamericafinancial.com> is identical or confusingly similar to Complainant’s because it simply appends the descriptive term “financial” and the gTLD “.com”. Adding a descriptive finance-related term has been held to fail in adding distinction. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Further, the “.com” gTLD has been considered “inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.” Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007). The Panel holds that <transamericafinancial.com> is identical or confusingly similar to Complainant’s mark.
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its TRANSAMERICA mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a Complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name, especially when a privacy service is shown as the registrant. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The <transamericafinancial.com> WHOIS information lists “DOMAIN ADMIN” as the registrant and “DOMAIN PRIVACY GUARD” as the registrant organization. Therefore, the Panel holds that Respondent is not commonly known by <transamericafinancial.com>.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent is using the resolving webpage to display hyperlinks that directly compete with Complainant’s business. Such use may not be construed as a bona fide offering or a legitimate noncommercial or fair use of the disputed domain name. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (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.”). Complainant has provided screenshots of Respondent’s website which displays hyperlinks such as “Financial Planning,” “Transamerica Life Insurance,” “Financial Wealth Management,” and “Life Insurance Transamerica”. The Panel holds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name.
Complainant has proved this element.
Complainant asserts that Respondent is disrupting its business by attempting to divert potential customers away from Complainant by offering information that directly competes with Complainant. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant has provided screenshot evidence of Respondent’s resolving webpage which displays content which references goods/services similar to Complainant. The Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant contends Respondent has registered and is using the <transamericafinancial.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the TRANSAMERICA mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Complainant has provided screenshot evidence of <transamericafinancial.com> displaying hyperlinks that claim to lead to Complainant’s services or competing services. Therefore, the Panel concludes that Respondent created confusion as to the source, sponsorship, affiliation, or endorsement of the website—and that Respondent likely profits from the inclusion of click-through hyperlinks—and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant also contends that in light of the fame and notoriety of Complainant’s TRANSAMERICA mark, it is inconceivable that Respondent could have registered the <transamericafinancial.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s TRANSAMERICA mark has gained significant good will and consumer recognition around the world and has been in use by Complainant since 1961. Respondent’s use of hyperlinks mentioning Complainant’s mark and similar services are also evidence of Respondent’s actual knowledge. Therefore, due to the fame of Complainant’s mark, coupled with Respondent’s use, the Panel finds that Respondent had actual knowledge of Complainant’s rights when <transamericafinancial.com> was registered and subsequently used.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericafinancial.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 2, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page