DECISION

Transamerica Corporation v. yangzhichao

Claim Number: FA1711001759512

PARTIES

Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is yangzhichao (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <transamericamedicare.com>, registered with 22net, Inc..

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 21, 2017; the Forum received payment on November 21, 2017.

On November 22, 2017, 22net, Inc. confirmed by e-mail to the Forum that the <transamericamedicare.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 22net, Inc. has verified that Respondent is bound by the 22net, Inc. 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 December 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 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@transamericamedicare.com. Also on December 12, 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 January 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

Complainant

1. Complainant, Transamerica Corporation, is a holding company for a group of subsidiaries engaged in the sale of life insurance, investment planning, and retirement services. Complainant uses its TRANSAMERICA mark to promote its goods and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 718,358 registered July 11, 1961). See Compl. Ex. 1. Respondent’s <transamericamedicare.com> domain name is confusingly similar to Complainant’s mark because it appends the term “medicare” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.

2. Respondent does not have rights or legitimate interests in the <transamericamedicare.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion. Respondent is not commonly known by the domain name as the WHOIS information of record initially listed “Domain Admin / Information Privacy Protection Services Limited” but now lists “yangzhichao/yangzhichao” as the registrant. See Compl. Annex 4. Respondent is not using the <transamericamedicare.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent originally used the domain name to resolve to a website containing links to Complainant’s competitors. Currently, Respondent uses the domain name to divert Internet users to a website containing adult content.

3. Respondent registered and is using the <transamericamedicare.com> domain name in bad faith. Respondent uses the domain name to attract Internet users to its website, for commercial gain, 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. Respondent also had knowledge of Complainant’s rights in the TRANSAMERICA mark at the time of registration.

Respondent

1. Respondent did not submit a Response.

Supported Language Request

The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Therefore, the Panel may choose either of the following clauses, after reviewing the applicable rules regarding the proceedings of the UDRP:

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

FINDINGS

1. Respondent’s <transamericamedicare.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark.

2. Respondent does not have any rights or legitimate interests in the <transamericamedicare.com> domain name.

3. Respondent registered or used the <transamericamedicare.com> domain name in bad faith.

DISCUSSION

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.”).

Identical and/or Confusingly Similar

Complainant contends it registered its TRANSAMERICA mark with the USPTO (e.g., Reg. No. 718,358 registered July 11, 1961). See Compl. Ex. 1. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. 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)). Therefore, the Panel holds that Complainant has established rights in the TRANSAMERICA mark.

Next, Complainant contends that Respondent’s <transamericamedicare.com> domain name is confusingly similar to Complainant’s mark because it appends the term “medicare” and the gTLD “.com” to the fully incorporated mark. The addition of a generic word and gTLD do not negate confusing similarity between a disputed domain name and a mark. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Respondent’s <transamericamedicare.com> domain name is confusingly similar to Complainant’s mark.

Rights or Legitimate Interests

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 alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its TRANSAMERICA mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <transamericamedicare.com> initially listed “Domain Admin / Information Privacy Protection Services Limited” but the privacy shield was dropped as a result of this proceeding and the WHOIS information now lists “yangzhichao/yangzhichao” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <transamericamedicare.com> domain name per Policy ¶ 4(c)(ii).

Next, Complainant contends that Respondent’s original use of the <transamericamedicare.com> domain name was not in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use because the domain name resolved to a website containing links to Complainant’s competitors. Use of a domain name to resolve to a website featuring pay-per-click hyperlinks that compete with a Complainant’s business is not considered to make a bona fide offering of goods or services or 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). Complainant provided the cease and desist letter allegedly sent to Respondent on April 11, 2017, which references Respondent’s use of the <transamericamedicare.com> domain name to resolve to competing hyperlinks. See Compl. Ex. 5. Complainant did not provide screenshots of the <transamericamedicare.com> domain name’s resolving website when it was allegedly used to display hyperlinks. The Panel finds that Respondent used the resolving website to display competing hyperlinks, and the Panel holds that Respondent failed to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.

Further, Complainant contends that Respondent currently uses the domain name to divert Internet users to a website containing adult content. Use of a confusingly similar domain name to divert Internet users to a website displaying adult content may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant alleges that screenshots of the <transamericamedicare.com> domain name’s resolving website indicate that the site features adult content. See Compl. Ex. 6. Therefore, the Panel concludes that Respondent used the <transamericamedicare.com> domain name to resolve to a website containing adult content and failed to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.

Registration and Use in Bad Faith

Complainant contends that Respondent registered and is using the <transamericamedicare.com> domain name in bad faith by creating a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain. Use of a domain name to create confusion as to the source sponsorship, affiliation, and endorsement of the content therein can evidence bad faith. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”). Complainant contends that the <transamericamedicare.com> domain name’s resolving website originally featured competing hyperlinks. See Compl. Ex. 5. The Panel finds that Respondent used the disputed domain name to feature competing hyperlinks for Respondent’s commercial gain, and the Panel agrees that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

Further, Complainant alleges that Respondent had knowledge of Complainant’s rights in the TRANSAMERICA mark at the time of registration. Actual knowledge of a complainant’s rights in a mark may indicate bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 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.”). Complainant contends that Respondent’s knowledge is evidenced by Respondent’s use of Complainant’s entire TRANSAMERICA mark in the <transamericamedicare.com> domain name. Registration of a domain name that incorporates a complainant’s entire mark may demonstrate Respondent’s actual knowledge of Complainant’s rights in a mark. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). As such, the Panel holds that Respondent registered and used the <transamericamedicare.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <transamericamedicare.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: January 19, 2017