Transamerica Corporation v. Super Privacy Service c/o Dynadot
Claim Number: FA1707001739820
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Super Privacy Service c/o Dynadot (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericalifeinsurance.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2017; the Forum received payment on July 13, 2017.
On July 18, 2017, Dynadot, LLC confirmed by e-mail to the Forum that the <transamericalifeinsurance.com> domain name is 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 July 18, 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@transamericalifeinsurance.com. Also on July 18, 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 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) 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 <transamericalifeinsurance.com> domain name is confusingly similar to Complainant’s mark because it merely appends the descriptive terms “life” and “insurance,” as well as the generic top-level-domain (“gTLD”) “.com” to the wholly incorporated mark.
ii) Respondent does not have rights or legitimate interests in the <transamericalifeinsurance.com> 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. 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. Further, Respondent utilized a WHOIS privacy service to register the disputed domain name.
iii) Respondent has registered and is using the <transamericalifeinsurance.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. The Panel notes that <transamericalifeinsurance.com> was registered on April 10, 2004.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 asserts rights in the TRANSAMERICA mark based upon registration with the USPTO. Registration of a mark with a trademark authority such as the USPTO confers rights in a mark. 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). Thus, the Panel finds that Complainant has rights in the TRANSAMERICA mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <transamericalifeinsurance.com> domain name is confusingly similar to Complainant’s mark because it merely appends the descriptive terms “life” and “insurance,” as well as the gTLD “.com” to the wholly incorporated mark. The addition of descriptive terms and a gTLD to a complainant’s mark is not considered sufficient to negate a finding of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Here, the terms “life” and “insurance” are each descriptive of Complainant’s business. Therefore, the Panel holds that Respondent’s <transamericalifeinsurance.com> domain name is confusingly similar to Complainant’s mark.
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 <transamericalifeinsurance.com> 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; likewise, WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name even if a WHOIS privacy service has been utilized. 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); see also 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); see also 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 Panel notes that a privacy service was used by Respondent. The WHOIS information of record lists “Whois Agent” as the registrant of the disputed domain name. Therefore, the Panel holds that Respondent is not commonly known by <transamericalifeinsurance.com> per Policy ¶ 4(c)(ii).
Next, Complainant contends that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or any 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, FA1506001626318 (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). Here, Complainant supplied screenshots of the <transamericalifeinsurance.com> resolving website, and the website displays competing hyperlinks such as “Life Insurance Policy,” “Whole Life Insurance Policy,” and “Term Life Insurance Policy.” Therefore, the Panel holds that Respondent has failed to use the disputed domain name in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Complainant asserts that Respondent is disrupting its 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 per 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).”). The Panel notes that resolving website for the disputed domain name displays various links to competitors of Complainant’s business. Therefore, the Panel holds that Respondent registered and used the <transamericalifeinsurance.com> domain name in bad faith.
Second, Complainant argues that Respondent has registered and is using the <transamericalifeinsurance.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 therein 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.”). Here, Complainant asserts Respondent hosts pay-per-click links that presumably provide revenue to Respondent. Therefore, the Panel concludes that Respondent created confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant alleges that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. Actual knowledge 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 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 <transamericalifeinsurance.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. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the TRANSAMERICA mark prior to registering the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericalifeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 17, 2017
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