Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1807001798316
Complainant is Transamerica Corporation ("Complainant"), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericapremire.com>, registered with GoDaddy.com, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 24, 2018; the Forum received payment on July 24, 2018.
On July 25, 2018, GoDaddy.com, LLC confirmed by email to the Forum that the <transamericapremire.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@transamericapremire.com. Also on July 26, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a holding company for a group of companies engaged in the sale of life insurance, investment planning, and retirement services. Complainant's largest subsidiary had more than $1 trillion of insurance in force at the end of 2016. Complainant has used the TRANSAMERICA mark since 1929, and states that its companies spend millions of dollars every year to advertise and promote the mark. Complainant's subsidiary companies include Transamerica Premier Life Insurance Company. Complainant owns numerous U.S. trademark registrations for TRANSAMERICA, both standing alone and in combination with other terms.
The disputed domain name <transamericapremire.com> was registered through a privacy registration service in June 2018. It resolves to a website entitled "transamericapremire.com - This website is for sale! - transamericapremire Resources and Information." The website consists of a list of links to other websites, including competitors of Complainant, along with "Buy this domain" link. Complainant states that it has not authorized Respondent to use its mark in any manner, and that Respondent is not commonly known by TRANSAMERICA or variations thereof.
Complainant contends on the above grounds that the disputed domain name <transamericapremire.com> is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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 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 disputed domain name <transamericapremire.com> incorporates Complainant's registered TRANSAMERICA trademark, adding "premire" (presumably a misspelling of the generic term "premier," which appears within the name of Complainant's subsidiary Transamerica Premier Life Insurance Company) and the ".com" top-level domain. These additions do not substantially distinguish the domain name from Complainant's mark. See, e.g., Transamerica Corp. v. Zhichao Yang, FA 1734402 (Forum July 5, 2017) (finding <premieretransamerica.com> confusingly similar to TRANSAMERICA); Transamerica Corp. v. DOMAIN MAY BE FOR SALE CHECK IGLOO.COM Domain Admin / Domain Registries Foundation, FA 1700612 (Forum Dec. 5, 2016) (finding <premiertransamerica.com> confusingly similar to TRANSAMERICA).
Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to display what presumably are pay-per-click links to competitors of Complainant, and to solicit purchase offers for the domain name. Such conduct does not give rise to rights or legitimate interests under the Policy. See, e.g., Transamerica Corp. v. DOMAIN MAY BE FOR SALE CHECK IGLOO.COM Domain Admin / Domain Registries Foundation, supra (finding lack of rights or legitimate interest where domain name was used to display links to competing products and services).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and are being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's website announces in multiple locations that the disputed domain name is for sale. Given the unlikelihood that the domain name would be of substantial interest to anyone for legitimate purposes unrelated to Complainant, and the fact that Respondent has been found in a previous proceeding under the Policy to have registered a domain name in bad faith and advertised it for sale, see Serco Group Plc v. Administrator Dom, Muscari Holding Ltd. / Carolina Rodrigues, D2018-0185 (WIPO Mar. 21, 2018), the Panel is inclined to believe that Respondent registered and is using the domain name at least in part for the purpose of selling it to Complainant or a competitor thereof for consideration in excess of Respondent's out-of-pocket costs, as provided by paragraph 4(b)(i).
Furthermore, Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). And the Panel notes that Respondent has been found in prior proceedings to be a "serial cyber-squatter," Airgas, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1788604 (Forum July 9, 2018), who has engaged in a pattern of registering domain names in bad faith, BlackBerry Ltd. v. Carolina Rodrigues, D2016-0707 (WIPO June 9, 2016).
Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericapremire.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 20, 2018
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