Transamerica Corporation v. LI JIANG
Claim Number: FA1806001792541
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is LI JIANG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericaemployeebenefits.co>, registered with Uniregistrar Corp.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 19, 2018; the Forum received payment on June 19, 2018.
On June 20, 2018, Uniregistrar Corp confirmed by e-mail to the Forum that the <transamericaemployeebenefits.co> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 June 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2018 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@transamericaemployeebenefits.co. Also on June 21, 2018, 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 July 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a holding company for a group of subsidiaries engaged in the sale of life insurance, investment planning, and retirement services. Complainant’s largest subsidiary, Transamerica Life Insurance Company, has been underwriting insurance since 1906 and has had more than $1,055 billion of insurance in force as of December 31, 2016.
Complainant has rights in the TRANSAMERICA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <transamericaemployeebenefits.co> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the terms “employee” and “benefits” along with the “.co” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <transamericaemployeebenefits.co> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the at-issue domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the resolving webpage contains links to financial services offerings in direct competition with those offered by Complainant. Further, Respondent registered the domain name using a privacy services.
Respondent registered and uses the <transamericaemployeebenefits.co> domain name in bad faith. Respondent uses the resolving webpage to display links to financial services offerings in direct competition with those offered by Complainant. Further, Respondent registered the domain name using a privacy services. Finally, Respondent clearly registered the domain name with actual, or at least constructive, knowledge of Complainant’s rights in the TRANSAMERICA mark given the fame and notoriety of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TRANSAMERICA mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the TRANSAMERICA mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses <transamericaemployeebenefits.co> to address a website that presents pay-per-click links to services that compete with services offered by Complainant.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the TRANSAMERICA trademark evidences its rights in such mark for the purposes of Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO).
Additionally, the at-issue domain name contains Complainant’s entire TRANSAMERICA trademark followed by the descriptive terms “employee” and “benefits” (or simply “employeebenefits”) with the top-level domain name “.co” appended thereto. The differences between the at-issue <transamericaemployeebenefits.co> domain name and Complainant’s TRANSAMERICA trademark are insufficient to distinguish one from the other for the purposes of the Policy. In fact, the domain name’s inclusion of the term “employeebenefits” adds to any confusion between the domain name and Complainant’s trademark as it suggests Complainant’s financial related business. Therefore, the Panel finds that under Policy ¶ 4(a)(i) Respondent’s <transamericaemployeebenefits.co> domain name is confusingly similar to Complainant’s TRANSAMERICA trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also, 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.”); see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that top-level domains are irrelevant for purposes of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Uncloaked WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Li Jiang.” The Panel is unaware of any evidence that otherwise tends to prove that Respondent is commonly known by the <transamericaemployeebenefits.co> domain name. The Panel therefore concludes that Respondent is not commonly known by the <transamericaemployeebenefits.co> domain name for the purposes of Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
Furthermore, Respondent uses the <transamericaemployeebenefits.co> domain name to address a website that presents pay-per-click links to services that directly compete with Complainant. These links address particular services such as “Employee Benefits” and “Employee Health Insurance.” Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii). 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.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4 (a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses the confusingly similar at-issue domain name to capitalize on the goodwill in Complainant’s TRANSAMERICA trademark so that it might mislead internet users to pay-per-click links to services which compete with Complainant. Using a confusingly similar domain name to offer links to competing products or services demonstrates bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”).
Additionally, Respondent registered the <transamericaemployeebenefits.co> domain name knowing that Complainant had trademark rights in TRANSAMERICA. Respondent’s prior knowledge is evident from Respondent’s use of the <transamericaemployeebenefits.co> domain name as discussed above as well as from the notoriety of Complainant’s TRANSAMERICA trademark. It is therefore clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <transamericaemployeebenefits.co> domain name in bad faith pursuant to 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericaemployeebenefits.co> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 17, 2018
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