Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2009001910889
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericaretirmentsolutions.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 1, 2020; the Forum received payment on September 1, 2020.
On September 2, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <transamericaretirmentsolutions.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 September 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2020 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@transamericaretirmentsolutions.com. Also on September 3, 2020, 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 September 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 engages in the sale of life insurance, investment planning and retirement services. Complainant has rights in the TRANSAMERICA and TRANSAMERICA RETIREMENT SOLUTIONS marks through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. TRANSAMERICA Reg. 718,358, registered Jul. 11, 1961; TRANSAMERICA RETIREMENT SOLUTIONS Reg. 4,660,133; registered Dec. 23, 2014). Respondent’s <transamericaretirmentsolutions.com> domain name is identical or confusingly similar to Complainant’s marks as it incorporate the marks in their entirety and slightly misspells the word “retirement” while adding the “.com” gTLD.
Respondent lacks rights and legitimate interests in the <transamericaretirmentsolutions.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use its marks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent hosts pay-per-click links that compete with Complainant’s business.
Respondent registered and uses the <transamericaretirmentsolutions.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business for commercial gain by attempting to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent hosts pay-per-click links that compete with Complainant’s services. Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the marks. Respondent’s use of a privacy service further contributes to a finding of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <transamericaretirmentsolutions.com> domain name.
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 claims rights the TRANSAMERICA and TRANSAMERICA RETIREMENT SOLUTIONS marks through its registration with the USPTO. (e.g. TRANSAMERICA Reg. 718,358, registered Jul. 11, 1961; TRANSAMERICA RETIREMENT SOLUTIONS Reg. 4,660,133; registered Dec. 23, 2014). Registration with the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <transamericaretirmentsolutions.com> domain name is confusingly similar to Complainant’s TRANSAMERICA and TRANSAMERICA RETIREMENT SOLUTIONS marks as it incorporates the marks in their entirety, while slightly misspelling the mark and adding the “.com” gTLD to the end. Slightly misspelling a mark and adding the “.com” gTLD may be insufficient in differentating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”). The disputed domain name incorporates the marks in their entirety while slightly misspelling the word “retirement” by removing the second “e” and adds the “.com” gTLD to the end of the disputed domain name. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 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, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <transamericaretirmentsolutions.com> domain name, nor has Complainant authorized or licensed Respondent to use its TRANSAMERICA and TRANSAMERICA RETIREMENT SOLUTIONS marks in the disputed domain name. Relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(i) See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”). The WHOIS information of record identifies Respondent as “Carolina Rodrigues,” and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use its marks in the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <transamericaretirmentsolutions.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users to the disputed domain name’s resolving website, where Respondent hosts pay-per-click links that compete with Complainant’s business. Using a disputed domain name to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent hosts related and competing pay-per-click links is generally not considered a bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the disputed domain name’s resolving website, which features pay-per-click links that Complainant argues compete with its business. The Panel finds that 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 per Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <transamericaretirmentsolutions.com> domain name in bad faith by disrupting Complainant’s business for commercial gain. Attempting to divert internet users seeking Complainant’s services to a disputed domain name’s resolving website where Respondent hosts pay-per-click links that compete with Complainant’s business is generally considered bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Complainant has provided a screenshot of the disputed domain name’s resolving website, which features pay-per-click links that Complainant argues compete with Complainant’s business. This is evidence that Respondent disrupts Complainant’s business for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <transamericaretirmentsolutions.com> domain name in bad faith as it had actual or constructive knowledge of Complainant’s rights in the TRANSAMERICA and TRANSAMERICA RETIREMENT SOLUTIONS marks at the time of registration. Under Policy ¶ 4(a)(iii), constructive knowledge is generally not enough to demonstrate bad faith, but actual knowledge may be enough, and may be demonstrated by a Respondent registering an identical or confusingly similar domain name. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”) The disputed domain name is confusingly similar to Complainant’s marks. The Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the marks under Policy ¶ 4(a)(iii).
Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrants actual date of registration”). The Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding. The Panel finds that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <transamericaretirmentsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
September 30, 2020
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