Transamerica Corporation v. Above.com Domain Privacy
Claim Number: FA1707001739808
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericalifeinsurancecompany.com>, registered with Above.com Pty Ltd..
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 July 13, 2017; the Forum received payment on July 13, 2017.
On July 16, 2017, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <transamericalifeinsurancecompany.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty 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 July 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@transamericalifeinsurancecompany.com. Also on July 17, 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 August 9, 2017, 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, Transamerica Corporation, is an American holding company for various life insurance companies and investment firms. Complainant uses its TRANSAMERICA mark to promote its business. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 718,358, registered July 11, 1961). Respondent’s <transamericalifeinsurancecompany.com> domain name is confusingly similar to Complainant’s mark because it merely appends the descriptive terms “life,” “insurance,” and “company” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the <transamericalifeinsurancecompany.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its TRANSAMERICA mark. Respondent is not commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website displaying hyperlinks that redirect Internet users to Complainant’s competitors.
Respondent has registered and is using the <transamericalifeinsurancecompany.com> domain name in bad faith. Respondent attempts to disrupt the business of Complainant by displaying competing hyperlinks. 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. Furthermore, Respondent had actual knowledge of Complainant’s rights in the TRANSAMERICA mark prior to registering the disputed domain name and engaged a privacy service to conceal its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Transamerica Corporation, is an American holding company for various life insurance companies and investment firms. Complainant uses its TRANSAMERICA mark to promote its business. Complainant has rights in the TRANSAMERICA mark through registration with the USPTO (Reg. No. 718,358, registered July 11, 1961). Respondent’s <transamericalifeinsurancecompany.com> domain name is confusingly similar to Complainant’s mark.
Respondent, Above.com Domain Privacy, registered the <transamericalifeinsurancecompany.com> domain name on July 1, 2007.
Respondent does not have rights or legitimate interests in the <transamericalifeinsurancecompany.com> domain name. Respondent uses the domain name to resolve to a website displaying hyperlinks that redirect Internet users to Complainant’s competitors, presumably for commercial gain.
Respondent has registered and is using the <transamericalifeinsurancecompany.com> domain name 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 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) based upon registration with the USPTO. See 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).
Respondent’s <transamericalifeinsurancecompany.com> domain name is confusingly similar to Complainant’s mark because it merely appends the descriptive terms “life,” “insurance,” and “company” and the gTLD “.com” to the fully incorporated mark.
Respondent has no rights or legitimate interests in the <transamericalifeinsurancecompany.com> domain name. Complainant has not authorized Respondent to use its TRANSAMERICA mark. Respondent used a privacy service for registration of the domain name. The WHOIS information of record lists “ABOVE.COM DOMAIN PRIVACY” as the registrant. Respondent is not commonly known by <transamericalifeinsurancecompany.com> under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA 1620789 (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); see also Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (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); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (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).”).
Respondent is not using the <transamericalifeinsurancecompany.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Use of a confusingly similar domain name to display competing hyperlinks is not a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Provide Commerce, Inc. v. e on Craze, FA 1626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business); see also Direct Line Group Ltd. v. Purge I.T., D2000-0583, (WIPO Aug. 13, 2000) (finding that use of the complainant’s name and adoption of it in a domain name is inherently likely to lead some people to believe that the complainant’s are connected with it).
Respondent registered and used the <transamericalifeinsurancecompany.com> domain name in bad faith. Respondent is disrupting Complainant’s business by attempting to divert potential customers away from Complainant by hosting competing hyperlinks. Use of a disputed domain name to host links to competitors of a complainant does not demonstrate good faith registration and use under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”).
Respondent has registered and is using the <transamericalifeinsurancecompany.com> domain name in bad faith under Policy ¶ 4(b)(iv) by utilizing a confusingly similar domain name to attract Internet traffic and commercially benefit from the goodwill of the TRANSAMERICA mark via the display of competing hyperlinks. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content constitutes bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Respondent had actual knowledge of Complainant’s rights in the TRANSAMERICA mark prior to registering the <transamericalifeinsurancecompany.com> domain name. Therefore, Respondent registered the domain name in 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 mark when an obvious link between the content of the resolving website and the complainant’s mark exist. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). Here, the
<transamericalifeinsurancecompany.com> domain name resolves to a website that displays Complainant’s TRANSAMERICA mark at the top and lists 10 hyperlinks referring to the insurance industry which Complainant operates within.
Further, under the circumstances of this case, Respondent’s use of a privacy shield to disguise its identity constitutes bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding that the respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar was an example of bad faith conduct).
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 <transamericalifeinsurancecompany.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 12, 2017
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