Transamerica Corporation v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1903001836374
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericainsurence.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2019; the Forum received payment on March 28, 2019.
On March 28, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <transamericainsurence.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 March 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2019 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@transamericainsurence.com. Also on March 29, 2019, 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 April 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Transamerica Corporation, uses its mark TRANSAMERICA in connection with insurance goods and services. Complainant has rights in the TRANSAMERICA mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 718,358, registered July 11, 1961). Respondent’s <transamericainsurence.com>[i] domain name is confusingly similar to Complainant’s TRANSAMERICA mark, as it incorporates the mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <transamericainsurence.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the TRANSAMERICA mark in any manner.
3. Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the domain name to divert users away from Complainant’s website. Respondent uses the domain name to host pay-per-click links that directly compete with the Complainant.
4. Respondent registered and is using the <transamericainsurence.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Specifically, Respondent’s bad faith is demonstrated by its use of the domain name to divert users for financial gain by hosting pay-per-click links in direct competition with Complainant. Respondent also registered the domain name with a privacy service.
5. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the TRANSAMERICA mark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TRANSAMERICA mark. Respondent’s domain name is confusingly similar to Complainant’s TRANSAMERICA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <transamericainsurence.com> domain name and that Respondent registered and uses the 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the TRANSAMERICA mark based upon registration of the mark with the USPTO (e.g. Reg. No. 718,358, registered July 11, 1961). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018). Complainant’s registration of the TRANSAMERICA mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <transamericainsurence.com> domain name is confusingly similar to the TRANSAMERICA mark, as it incorporates the mark in its entirety, merely adding the term “insurance” (misspelled version of “insurance”) and a gTLD “.com.” The addition of generic or descriptive terms and/or a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel agrees that the <transamericainsurence.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <transamericainsurence.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <transamericainsurence.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the TRANSAMERICA mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the domain name. See 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). Additionally, lack of authorization from complainant to use its mark may be evidence that the respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the <transamericainsurence.com> domain name as “Super Privacy Service LTD c/o Dynadot” and no information in the record indicates Respondent is authorized to register a domain name with Complainant’s mark. Under Policy ¶ 4(c)(ii) Respondent has not been commonly known by the <transamericainsurence.com> domain name.
Complainant contends Respondent’s lack of rights or legitimate interests in the <transamericainsurence.com> domain name is demonstrated by its use of the domain name to host pay-per-click links to Complainant’s competitors. Use of a domain name incorporating the mark of another to host pay-per-click links is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (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.”). Here, Complainant provides a screenshot of the website associated with the <transamericainsurence.com> domain name to support this contention. The Panel holds that Respondent had not demonstrated any rights or legitimate interests in the <transamericainsurence.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith is indicated by its use of the <transamericainsurence.com> domain name to divert internet users away from Complainant’s own website by hosting pay-per-click links that directly compete with Complainant. Use of a domain name that incorporates the mark of another to divert users away from a complainant’s website by hosting pay-per-click links to complainant’s competitors demonstrates bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 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)”). Complainant provides a screenshot of the website associated with the <transamericainsurence.com> domain name to support this contention. The Panel holds that Respondent is using the <transamericainsurence.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Further, Complainant asserts that Respondent’s bad faith is demonstrated by its actual knowledge of Complainant’s rights in the TRANSAMERICA mark prior to registering the disputed domain name. A respondent’s actual knowledge of a Complainant’s rights in a mark prior to registering a domain name incorporating that mark demonstrates bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel holds that Respondent registered the <transamericainsurence.com> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericainsurence.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 25, 2019
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