Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1901001826400
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 <transamericaretirementsolution.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically January 22, 2019; the Forum received payment January 22, 2019.
On January 22, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <transamericaretirementsolution.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 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@transamericaretirementsolution.com. Also on January 23, 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 February 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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, Transamerica Corporation, is engaged in the sale of life insurance, investment planning, and retirement services. Complainant has rights in the TRANSAMERICA RETIREMENT SOLUTIONS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,660,133, registered Dec. 23, 2014). See Compl. Ex. 1. Respondent’s <transamericaretirementsolution.com> domain name is confusingly similar to the TRANSAMERICA RETIREMENT SOLUTIONS mark as it contains Complainant’s mark in its entirety, merely adding the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <transamericaretirementsolution.com> domain name. Respondent is not permitted or licensed to use Complainant’s TRANSAMERICA RETIREMENT SOLUTIONS mark and is not commonly known by the disputed domain name. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <transamericaretirementsolution.com> domain name to redirect users to Respondent’s website, which hosts pay-per-click advertisements.
Respondent has registered and used the <transamericaretirementsolution.com> domain name in bad faith. Respondent attempts to attract users to its website for commercial gain. Additionally, Respondent uses a privacy service to conceal its identity. Further, Respondent failed to respond to a cease-and-desist letter from Complainant. Finally, Respondent had actual knowledge or constructive notice of Complainant’s TRANSAMERICA RETIREMENT SOLUTIONS mark prior to registering the <transamericaretirementsolution.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent created the <transamericaretirementsolution.com> domain name December 10, 2018, some four years after Complainant’s registration. See Compl. Ex. 4.
Complainant established rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent registered a disputed domain name containing Complainant’s protected
mark in its entirety and the disputed domain name is confusingly similar to
Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name or the mark contained within it in its entirety.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant’s rights in the TRANSAMERICA RETIREMENT SOLUTIONS mark are based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). 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 provides copies of its USPTO registrations for the TRANSAMERICA RETIREMENT SOLUTIONS mark (e.g., Reg. No. 4,660,133, registered Dec. 23 2014.) See Compl. Ex. 1. Therefore, the Panel finds that Complainant has rights in the TRANSAMERICA RETIREMENT SOLUTIONS mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant asserts that the <transamericaretirementsolution.com> domain name is confusingly similar to the TRANSAMERICA RETIREMENT SOLUTIONS mark as Respondent incorporates the mark in its entirety and adds the “.com” gTLD. Additionally, while Complainant does not specifically address this, the Panel notes that Respondent also removes a single letter “s” from the mark before incorporating it into the domain name. The addition of a gTLD and the deletion of one letter are insufficient to defeat a claim of confusing similarity under Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). The Panel agrees with Complainant and finds that Respondent’s <transamericaretirementsolution.com> domain name is confusingly similar to Complainant’s mark under a Policy ¶ 4(a)(i) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that contains
in its entirety Complainant’s protected mark and that is confusingly similar to
that mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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 of proof, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in <transamericaretirementsolution.com> as Respondent is not authorized to use Complainant’s TRANSAMERICA RETIREMENT SOLUTIONS mark and is not commonly known by the disputed domain name. Where no response is filed, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). 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.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have such rights or legitimate interests in the disputed domain name. 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). The Panel notes that Respondent used a privacy service. See Compl. Ex. 4. As a result, the Panel finds that the WHOIS information of record identifies registrant as “Carolina Rodrigues / Fundacion Comercio.” Id. Therefore, the Panel finds that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
In addition, Complainant argues that Respondent uses the <transamericaretirementsolution.com> domain name to divert Internet users to a rotating series of websites unrelated to Complainant. Use of a disputed domain name to redirect users to unrelated websites may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See WordPress Foundation v. Above.com Domain Privacy, FA 1641647 (Forum Nov. 9, 2015) (“Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name” where “Respondent is using the domain name for commercial gain by redirecting Internet users to a rotating series of unrelated third-party websites, some of which attempt to install malware on a user's computer.”). Complainant claims that the <transamericaretirementsolution.com> domain name currently redirects users to <fireplayerapp.com>. See Compl. Ex. 6. The Panel agrees with Complainant and holds that redirecting users to third-party websites is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the
disputed domain name or Complainant’s mark that is contained within it in its
entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims that Respondent registered and uses the <transamericaretirementsolution.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name, which resolves to an unrelated third-party website. Using a confusingly similar domain name to divert users for commercial gain can evidence bad faith registration and use under Policy ¶ 4(b)(iii) and/or (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant contends that Respondent’s confusingly similar domain name is intended to divert Internet traffic away from Complainant’s site to Respondent’s website. The Panel remembers as well that Complainant claims that Respondent redirects users to third-party websites that are unrelated to Complainant’s business to generate click-through advertisement revenue. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage to support its allegations. See Compl. Ex. 6. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent must have had actual and constructive knowledge of Complainant’s TRANSAMERICA RETIREMENT SOLUTIONS mark. The Panel is reminded that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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 argues that due to the fame of the TRANSAMERICA RETIREMENT SOLUTIONS mark and Respondent’s inclusion of Complainant’s TRANSAMERICA RETIREMENT SOLUTIONS mark in the disputed domain name, Respondent must have had actual knowledge. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the TRANSAMERICA RETIREMENT SOLUTIONS mark, given the identical nature of the disputed domain name and its use; and thus supports findings that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name containing in its entirety Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN 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 <transamericaretirementsolution.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 28, 2019
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