Transamerica Corporation v. Domain Manager / samirnet -domain names for sale
Claim Number: FA1709001748623
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Domain Manager / samirnet -domain names for sale (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericaservices.com>, registered with CommuniGal Communication Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2017; the Forum received payment on September 12, 2017.
On September 12, 2017 CommuniGal Communication Ltd. confirmed by e-mail to the Forum that the <transamericaservices.com> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication 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 September 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@transamericaservices.com. Also on September 20, 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 October 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
FACTUAL AND LEGAL GROUNDS
Background
a. Complainant, Transamerica Corporation, is a Delaware corporation headquartered in Cedar Rapids, Iowa. Complainant is a holding company for a group of subsidiaries engaged in the sale of life insurance, investment planning, and retirement services. Transamerica’s largest subsidiary, Transamerica Life Insurance Company (“Transamerica Life”), has been underwriting insurance since 1906 and has had more than $1,055 billion of insurance in force as of December 31, 2016. The Transamerica Companies include, among others, Transamerica Financial Life Insurance Company, a provider of life insurance products, annuities and investment options and services, Transamerica Advisors Life Insurance Company, a provider of annuity and life insurance, Transamerica Premier Life Insurance Company, a provider of annuities, life insurance, long term care, cancer, disability income, and Medicare supplement solutions, and Transamerica Casualty Insurance Company, a provider of property and casualty insurance services. The Transamerica Companies and their predecessors have used the name “Transamerica” since 1929 as a trade name and service mark. Transamerica owns numerous service mark registrations, with variations of the “Transamerica” theme, such as “Transamerica Reinsurance,” “Transamerica Classic,” and “Transamerica Catalyst.” The Transamerica Companies have advertised and promoted “Transamerica” as a name and service mark for many years in national consumer publications such as Barrons, Businessweek, Forbes, Investor’s Business Daily, Kiplingers, Money, Newsweek, Sports Illustrated, Time, U.S. News World Report, and The Wall Street Journal. Transamerica has also marketed itself in television advertisements, print brochures, press releases, and point of sale pieces. The Transamerica Companies spend millions of dollars every year to advertise and promote “Transamerica” as a name and service mark. Complainant’s “Transamerica” name is advertised by the Transamerica Companies at multiple websites, including but not limited to www.transamerica.com, www.transamericafunds.com, www.transamericaseriestrust.com, www.ta-retirement.com, and www.transamericaworksite.com. Complainant actively enforces its rights in the “Transamerica” service mark.
b. Complainant has acquired numerous domain names, including those incorporating variations of the TRANSAMERICA, through enforcement efforts aimed at protecting its marks from cybersquatting and online infringement. See, e.g., Transamerica Corporation v. DreamNet Inc., FA0112000103036 (Forum Feb. 8, 2002) (ordering the transfer of <misstransamerica.com> to Transamerica Corporation); Transamerica Corporation v. domstrad.com, FA 0801001140400 (Forum Apr. 1, 2008) (ordering the transfer of <transamericawarranty.com>, <transamwarranty.com> and <transamericatrek.com> to Transamerica Corporation); Transamerica Corporation v. Mary Taylor FA0809001223542 (Forum Oct. 21, 2008) (ordering the transfer of <transamerinc.com> to Transamerica Corporation; Transamerica Corporation v. Financial Group, FA0810001227506 (Forum Nov. 4, 2008) (ordering the transfer of <transamericafinancialgroup.com> to Transamerica Corporation); Transamerica Corporation v. Miguel Gila, FA0812001238257 (Forum Jan. 26, 2009) (ordering the transfer of <transamericaannuity.com> to Transamerica Corporation); Transamerica Corporation v. Transport Corporation of America, FA0812001238278 (Forum Jan. 23, 2009) (ordering the transfer of <transamericaservices.com>, <transamericafinancialservices.com>, <transamericaretirementservices.com>, and <transamericaoccidentallife.com> to Transamerica Corporation); Transamerica Corporation v. Marshall Taheri, FA1110001413096 (Forum Dec. 7, 2011) (ordering the transfer of <transamericacorporation.com>, <transamericainvestment.com>, and <transamericainvestment.net> to Transamerica Corporation); Transamerica Corporation v. Global Access, FA1203001433703 (Forum Apr. 17, 2012) (ordering the transfer of <transamericannuities.com> to Transamerica Corporation); Transamerica Corporation v. G Domains, FA1203001433703 (Forum Apr. 17, 2012) (ordering the transfer of <transamericannuities.com> to Transamerica Corporation); Transamerica Corporation v. Trade Out Investments Ltd., FA1203001435010 (Forum May 1, 2012) (ordering the transfer of <transamericaretirement.com> to Transamerica Corporation); Transamerica Corporation v. Jamie Hellman, Prime Diagnostic Imaging, LLC, FA1402001543208 (Forum Apr. 9, 2014) (ordering the transfer of <transamericahealth.com> and< transamericahealth.net> to Transamerica Corporation); Transamerica Corporation v. Alliance Warburg Capital Management, Inc., FA1405001557768 (Forum June 12, 2014) (ordering the transfer of <transamericainvestgroup.com> to Transamerica Corporation); Transamerica Corporation v. Appia Anigbogu, FA1407001570214 (Forum Aug. 28, 2014) (ordering the transfer of <globaltransamerica.com> to Transamerica Corporation); Transamerica Corporation v. Jamal Satan / Home First Realty, FA1409001579005 (Forum Oct. 6, 2014) (ordering the transfer of <transamericancorp.com> to Transamerica Corporation); Transamerica Corporation v. Manuel Soto, FA1411001589206 (Forum Dec. 22, 2014) (ordering the transfer of <transammarketing.com> to Transamerica Corporation); Transamerica Corporation v. Steven Canady, FA1411001589718 (Forum Dec. 23, 2014) (ordering the transfer of <transamericainvestgroup.co>,< transamericainvestgroup.info>, <transamericainvestgroup.net> and <transamericainvestgroup.org> to Transamerica Corporation); Transamerica Corporation v. Remigio Lopez / Transamerica, FA1411001591667 (Forum Jan. 5, 2015) (ordering the transfer of <transamericamexico.com> to Transamerica Corporation); Transamerica Corporation v. yangzhichao, FA1605001674974 (Forum June 14, 2016) (ordering the transfer of <transamericaanuities.com> to Transamerica Corporation); Transamerica Corporation v. Jos Antonio Lpez Esteras / Inverantic, FA1610001700609 (Forum Dec. 13, 2016) (ordering the transfer of <transamericamotor.com> to Transamerica Corporation); Transamerica Corporation v. Domain May be for Sale Check Igloo.com Domain Admin / Domain Registries Foundation, FA1610001700612 (Forum Dec. 5, 2016) (ordering the transfer of <premiertransamerica.com> to Transamerica Corporation); Transamerica Corporation v. Whois Foundation, FA1610001700616 (Forum Dec. 5, 2016) (ordering the transfer of <premiertransamerica.nu> to Transamerica Corporation); Transamerica Corporation v. John Hyatinth, FA1610001700628 (Forum Dec. 6, 2016) (ordering the transfer of <transamericalogistics.net> to Transamerica Corporation); Transamerica Corporation v. Domain May be For Sale, Check Afternic.com Domain Admin / Domain Foundation / Whois Foundation, FA1610001700635 (Forum Dec. 5, 2016) (ordering the transfer of <lifesalestransamerica.com>, <transamericalprotect.com>, <transamericaprotec.com>, <transamericaprotecr.com>, <ttransamerica.com>, and< transamericanprotect.com> to Transamerica Corporation); Transamerica Corporation v. Domain Administrator / Sandesa, Inc., FA1611001704763 (Forum Jan. 4, 2017) (ordering the transfer of <transamericamoving.com> to Transamerica Corporation; Transamerica Corporation v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd., FA1705001730186 (Forum Jun. 2, 2017) (ordering the transfer of <transamericafinancial.com> to Transamerica Corporation; Transamerica Corporation v. Zhichao Yang, FA1706001734402 (Forum Jul. 5, 2017) (ordering the transfer of <premieretransamerica.com> to Transamerica Corporation); Transamerica Corporation v. Above.com Domain Privacy, FA1707001739808 (Forum Aug. 12, 2017) (ordering transfer of <transamericalifeinsurancecompany.com> to Transamerica Corporation); Transamerica Corporation v. Super Privacy Service c/o Dynadot, FA1707001739820 (Forum Aug. 17, 2017) (ordering transfer of <transamericalifeinsurance.com> to Transamerica Corporation); Transamerica Corporation v. Zhichao Yang, FA1708001743458 (Forum Aug. 31, 2017) (ordering transfer of < transamericaannuites.com> to Transamerica Corporation).
c. From March 2017 through August 2017, the www.transamerica.com website received over 1 million web page visits. Since December 5, 1994, Transamerica has owned and used the domain transamerica.com to offer its financial services products.
d. On January 13, 2009, Respondent registered the domain name transamericaservices.com. Respondent is a provider of private registration services, Samirnet – Domain Names for Sale.
e. On May 12, 2017, Attorney Gail Podolsky, on behalf of Complainant, sent cease and desist correspondence to Respondent regarding, inter alia, the transamericaservices.com domain name registration. In said correspondence, Complainant, among other things, demanded that Respondent immediately cease from violating Complainant’s trademark rights. Respondent did not reply to this correspondence.
f. As of September 12, 2017, Respondent’s website located at transamericaservices.com prominently displays the term “transamerica” at the top of the home page. The transamericaservices.com website contains a listing of links which brings the Internet user to websites containing links to Complainant’s competitors which offer services in direct competition with those offered by Complainant. Therefore, Complainant’s customers and other Internet users may reasonably, but mistakenly, believe they can obtain these services from Complainant through Respondent’s website, and that Respondent’s website is sponsored by Complainant. Respondent’s use of the domain name transamericaservices.com thus creates a likelihood of confusion among users by creating the perception and impression that Complainant owns, sponsors, or endorses Respondent’s website.
g. Respondent’s transamericaservices.com domain name appears in the source code of the transamericaservices.com website.
The transamericaservices.com Domain Name is
Confusingly Similar to Complainant’s Mark
h. The transamericaservices.com domain name is confusingly similar to Complainant’s TRANSAMERICA mark as it incorporates this mark in its entirety and is used as the dominant component of the second level domain. See Choice Hotels International, Inc. v. Michele Dinoia a/k/a SZK.com, FA 282792, p. 5 (Forum Jul. 28, 2004) (“Generally, the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the [ICANN] Policy.”). The addition of the term “services” is not sufficient to distinguish the domain name from the TRANSAMERICA mark. See Perot Sys. Corp. v. Brown, FA 97303 (Forum June 25, 2001) (finding the domain names <urn2perotsystems.net> and <urn2perotsystems.org> were confusingly similar to Complainant’s PEROT SYSTEMS mark); Victoria’s Secret et al v. Brown, FA 96561 (Forum Mar. 19, 2001) (finding the domain names are <urn2victoriassecret.com> and <urn2victoriassecrets.com> were confusingly similar to Complainant’s VICTORIA’S SECRET mark); DIRECTV, Inc. v. SEO KINGPIN, FA 956507, p. 3 (Forum May 29, 2007) (finding <direct-tv-com> confusingly similar to Complainant’s DIRECTV mark); Microsoft Corporation v. Charilaos Chrisochoou, D2004-0186, p. 3 (WIPO, May 10, 2004) (hereinafter “Microsoft”) (finding <microsoft-com> confusingly similar to Complainant’s MICROSOFT mark). Furthermore, the addition of the “.com” suffix does not overcome the confusing similarity of the domain name with Complainant’s marks. See Wal-Mart Stores, Inc. v. Michael Folan, FA1076262, p. 3 (Forum Oct. 26, 2007) (“the addition of ... a top-level domain is required for all domain names.”); Google Inc. v. Tobec Acquisitions, FA1296156, p. 3 (Forum Jan. 15, 2010) (finding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” “.info,” or “.org” is “insufficient to adequately distinguish the disputed domain name from the Complainant’s mark.”).
i. Based on the above, Respondent’s registration of the transamericaservices.com domain name serves only to cause confusion, mistake, or deception among consumers attempting to locate Complainant’s website.
Respondent Has No Rights or Legitimate Interests in transamericaservices.com, and Respondent Registered and is Using the Domain Name in Bad Faith.
j. Complainant never authorized Respondent to register or use the TRANSAMERICA mark in any manner. Respondent has no rights or legitimate interests in the transamericaservices.com domain name under ¶4(c) of the UDRP Policy.
k. Complainant is unaware of any evidence that Respondent has ever commonly been known by the name “Transamerica” (or variations thereof) prior to Respondent’s registration of the transamericaservices.com domain name. Therefore, Respondent lacks rights or legitimate interests in the domain name. See UDRP Policy ¶4(c)(ii); AAA Employment, Inc., v. Ahearn and Assoc., FA0520670, p. 6 (Forum Sept. 6, 2005) (“[i]t must be shown by evidence that Respondent was commonly known by the domain name at the time of registration of the domain name.”); Yoga Works, Inc. v. Jenna Arpita d/b/a Shanti Yoga Works, FA0155461, p. 4 (Forum June 17, 2003) (finding that UDRP Policy ¶4(c)(ii) was not satisfied where there was no evidence that respondent was commonly known by the <shantiyogaworks.com> domain name prior to its registration of the disputed domain name).
l. As discussed above, the transamericaservices.com website contains links to financial services offerings in direct competition with those offered by Complainant. Use of a confusingly similar domain name to divert Internet users to a website containing such links is not a bona fide offering of goods or services pursuant to UDRP Policy ¶4(c)(i). Instead, this demonstrates that Respondent registered and is using the transamericaservices.com domain name in bad faith, for the purpose of intentionally attempting to divert, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s TRANSAMERICA mark as to the source, sponsorship, affiliation, and endorsement of the services offered through links on Respondent’s website. See UDRP Policy ¶4(b)(iii) and ¶4(b)(iv); State Farm Mutual Automobile Insurance Company v. xi wang, FA1579058, pp. 5-6 (Forum October 13, 2014) (“Respondent previously used the <statefarmsusa.com> domain name for a parked webpage that consisted of a variety of different links, some of which were in direct competition with Complainant. . . . the Panel finds that Respondent’s previous use of the disputed domain name constitutes bad faith pursuant to Policy ¶4(b)(iv).”); Boston Green Goods Inc. v. Dealwave, FA1115186, pp. 5-6 (Forum Jan. 15, 2008) (“Respondent previously used the . . . domain name to host a website featuring third-party links, some in direct competition with Complainant. The Panel finds that such use is not a bona fide offering of goods or services under [UDRP] Policy ¶4(c)(i) or a legitimate noncommercial or fair use under [UDRP] Policy ¶4(c)(iii).”); Major Hustle Entertainment/Records, Co., v. Major Hustle Ent LLC, FA1071809, pp. 4-5 (Forum Oct. 17, 2007) (“Respondent’s disputed domain names resolve to a website that offers links to competing websites. The Panel finds that such use amounts to a disruption of Complainant’s business, which supports a finding of registration and use in bad faith pursuant to [UDRP] Policy ¶4(b)(iii).”); Enterprise Holdings, Inc. v. (Undisclosed), FA1337431, p. 4 (Forum Sep. 12, 2010) (“The Panel finds that Respondent’s use of the disputed domain name to display various third-party links to . . . the websites of Complainant’s competitors, presumably for financial gain, is further evidence of Respondent’s bad faith registration and use under Policy ¶4(b)(iv)”).
m. Also, Respondent’s use of the transamericaservices.com domain name is “evidence of bad faith pursuant to [UDRP] Policy ¶4(b)(iv) because the domain name provides links to Complainant’s competitors and Respondent presumably commercially benefits from the misleading domain name by receiving ‘click-through-fees.’” Associated Newspapers Limited v. Domain Manager, FA0201976, p. 4 (Forum Nov. 19, 2003). See also Google Inc. v. Aloysius Thevarajah, FA1295342, p. 4 (Forum Dec. 31, 2009) (“[T]he <googleos.org> domain name resolves to a parked website that features hyperlinks to third-parties unrelated to Complainant. The Panel assumes that Respondent receives click-through fees . . . This use of the disputed domain name constitutes bad faith registration and use under [UDRP] Policy ¶4(b)(iv).”).
n. Respondent is not making a legitimate noncommercial or fair use of the domain name transamericaservices.com, therefore, UDRP Policy ¶4(c)(iii) does not apply. See CanadaDrugs.com Partnership v. MyCanadaDrugs LLC, FA0429088, p. 4 (Forum Apr. 7, 2005) (“. . . [UDRP] Policy ¶4(c)(iii) does not apply since Respondent is not making noncommercial or fair use of the domain name.”).
o. Respondent’s use of a privacy service is additional evidence of bad faith under the Policy. See Burt’s Bees, Inc. v. Private Registration, D2011-1808, p. 3 (WIPO Dec. 18, 2011) (“the use of a privacy or identity shield in this case further supports a finding that the Respondent has acted in bad faith. Although privacy shields may be legitimate in some cases, where, as in this case the Disputed Domain Name at issue fully encompasses the Complainant’s reputed mark and has obviously been used to divert Internet users in terms of paragraph 4(b)(iv) of the Policy, then it seems more likely than not that the Respondent is using a privacy shield to mask its true identity in an attempt to facilitate cybersquatting . . . .”). Pursuant to UDRP Policy ¶4(a)(ii), the concealment of Respondent’s true identity through the use of a privacy service is indicative of bad faith registration and use of the transamericaservices.com domain name. See Spin Master Ltd. v. DCSTEAM INC., FA1210515, p. 6 (Forum Aug. 5, 2008) (“The Panel therefore finds that this concealment of the Respondent’s true identity was indicative of bad faith registration and use of the disputed domain name pursuant to [UDRP] Policy ¶4(a)(ii).”).
p. Furthermore, Respondent’s registration of the transamericaservices.com domain name “in spite of actual or constructive knowledge [of Complainant’s rights in the TRANSAMERICA mark], amounts to bad faith registration and use pursuant to [UDRP] Policy ¶4(a)(iii).” PPG Industries Ohio, Inc. v. PPG Car Paints, FA0874856, p. 6 (Forum Feb. 21, 2007). See also Digi International Inc. v. DDI Systems, FA0124506, p. 7 (Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”). Here, Respondent is presumed to have knowledge of Complainant’s registered mark and reputation because Respondent’s domain name transamericaservices.com incorporates Complainant’s mark in its entirety. See The PNC Financial Services Group Inc. v. Unasi Inc., FA0535925, p. 6 (Forum Sept. 20, 2005) (“Respondent’s registration of the disputed domain names, which contain confusingly similar versions of Complainant’s PNC, PNCBANK and PNCBANK.COM marks, and Complainant’s registration of its marks with the USPTO suggest[sic] that Respondent knew of Complainant’s rights in the mark when Respondent registered the domain names.”). Consequently, Complainant respectfully submits that Respondent has registered and has been using the transamericaservices.com domain name in bad faith.
q. Based on the above, Respondent’s domain name registration serves only to cause confusion, mistake or deception among consumers, especially those consumers who are seeking to locate Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order canceling or transferring a domain name:
(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 claims rights in the TRANSAMERICA mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,129,244, registered Jan. 15, 1980.) Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is in another country. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). Complainant has rights in the TRANSAMERICA mark under Policy ¶4(a)(i).
Complainant claims the <transamericaservices.com> domain name is confusingly similar to the TRANSAMERICA mark because it contains the mark in its entirety, adding the generic descriptive term “services” and the gTLD “.com.” Slight differences between domain names and registered marks, such as the addition of generic words describing the goods or services in connection with the mark, are irrelevant and do not adequately distinguish the domain name from the mark incorporated therein. See eBay Inc. v. eBay Motors, FA 1731822 (Forum June 26, 2017) (holding that “words like ‘online,’ which pertain to a complainant’s trademark-related activities—fails to sufficiently distinguish domain names from registered marks.”). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Respondent’s <transamericaservices.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in <transamericaservices.com> because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TRANSAMERICA mark in any way. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Domain Manager.” There is no obvious relationship between Respondent’s name and the disputed domain name. There is not a scintilla of evidence Complainant authorized Respondent to register a domain name containing Complainant’s mark. 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). Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent lacks rights or legitimate interests in <transamericaservices.com> because Respondent is not making a bona fide offering of goods or services, or legitimate noncommercial or fair use of the domain under Policy ¶4(c)(i) or Policy ¶4(c)(iii). Respondent uses the disputed domain to offer services that directly compete with Complainant’s services. Using a confusingly similar domain name to offer services that directly compete with complainant does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Respondent has failed to use <transamericaservices.com> in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶4(c)(i) and (iii).
Respondent registered the disputed domain using a WHOIS proxy service. This means Respondent has done nothing to publicly associate itself with the disputed domain name. Therefore, Respondent could not have acquired any rights to the disputed domain name simply by registering it.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <transamericaservices.com> domain name in bad faith. Respondent attracts users to its website to commercially benefit from click-through-link fees from the dynamic parking page. Displaying links to goods and services directly competing with Complainant is evidence of bad faith. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶4(b)(iv)). Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶4(b)(iv).
Complainant claims Respondent registered the <transamericaservices.com> domain name with actual knowledge of Complainant’s rights in the TRANSAMERICA mark. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name; See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant has been using its mark since at least January 1929. The links on the dynamic parking page relate to Complainant’s business. It only stands to reason Respondent is familiar with Complainant’s mark. The Panel concludes Respondent had actual knowledge of Complainant’s rights in the TRANSAMERICA mark.
Respondent registered the disputed domain name using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption of bad faith. Respondent has done nothing to rebut this presumption.
While Complainant did not mention it, the domain name is registered to “Domain Manager” of “samirnet -domain names for sale.” This certainly seems to be a thinly disguised general offer to sell the domain name for more than Respondent’s out of pocket costs, which demonstrates bad faith registration and use under Policy ¶4(b)(i). The policy provides bad faith can be found when: “… [Respondent] registered or [Respondent] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.”
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <transamericaservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, October 17, 2017
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