Transamerica Corporation v. Zhichao
Claim Number: FA2107001954691
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Zhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwtransamericaemployeebenefits.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2021; the Forum received payment on July 12, 2021.
On July 14, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <wwwtransamericaemployeebenefits.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 July 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2021 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@wwwtransamericaemployeebenefits.com. Also on July 15, 2021, 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 August 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a holding a company for a group of life insurance subsidiaries. Complainant owns multiple trademark registrations, all of which incorporate the term “Transamerica.” Complainant has rights in the multiple TRANSAMERICA trademarks through its registration of the trademark with the United States Patent and Trademark Office (USPTO) (e.g. Reg. No. 1,635,682, registered on February 19, 1991). Respondent’s domain name <wwwtransamericaemployeebenefits.com> is identical or confusingly similar to Complainant’s trademarks as it contains the TRANSAMERICA trademark in its entirety and merely adds the terms “www,” “employee,” and “benefits,” as well as the “.com” generic top-level domain (“gTLD”). Additionally, Respondent is engaging in “typosquatting,” which takes advantage of Internet users’ typographical errors and creates confusion.
Respondent lacks rights or legitimate interests in the <wwwtransamericaemployeebenefits.com> domain name. Complainant did not authorize or license to Respondent any rights in the TRANSAMERICA trademark, nor is Respondent commonly known by the name “WWW Transamerica Employee Benefits”. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent’s domain name links to Complainant’s competitors.
Respondent registered and uses the <wwwtransamericaemployeebenefits.com> domain name in bad faith. Respondent intentionally attempted to divert Internet users for commercial gain and intended to create an association with Complainant and its services. The Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the TRANSAMERICA trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 718,358 TRANSAMERICA (word), registered July 11, 1961;
No. 831,626 TRANSAMERICA (word), registered July 4, 1967;
No. 978,808 TRANSAMERICA (word), registered February 12, 1974;
No. 1,129,244 TRANSAMERICA (word), registered January 15, 1980 for goods in class 16;
No. 1,202,289 TRANSAMERICA (word), registered July 20, 1982 for services in class 36;
No. 1,635,681 TRANSAMERICA (fig), registered February 19, 1991 for services in classes 35, 36, 37, 39 and 41;
No. 1,635,682 TRANSAMERICA (word), registered February 19, 1991 for services in classes 35, 36, 37, 39 and 41;
No. 2,224,207 TRANSAMERICA TRIBUTE (word), registered February 16, 1999 for services in class 36;
No. 2,228,202 TRANSAMERICA CLASSIC (word), registered March 2, 1999 for services in class 36;
No. 2,246,732 TRANSAMERICA BOUNTY (word), registered May 18, 1999 for services in class 36;
No. 2,284,121 TRANSAMERICA PLAN MAXIMIZER (word), registered October 5, 1999 for services in class 36;
No. 2,458,663 TRANSAMERICA ELITE (word), registered June 5, 2001 for services in class 36;
No. 2,486,240 TRANSAMERICA SECURE REWARDS (word), registered September 4, 2001 for services in class 36;
No. 2,609,854 TRANSAMERICA PLAN PLUS (word), registered August 20, 2002 for services in class 36;
No. 3,058,524 TRANSAMERICA CENTER FOR RETIREMENT STUDIES (word), registered February 14, 2006 for services in classes 35 and 41;
No. 3,430,218 TRANSAMERICA SECURE (word), registered May 20, 2008 for services in class 36;
No. 3,665,517 TRANSAMERICA I-SERIES (word), registered August 11, 2009 for services in class 36;
No. 4,031,172 TRANSAMERICA MOBILE ENROLLER (word), registered September 27, 2011 for services in class 36;
No. 4,169,169 TRANSAMERICA TRANSFORM TOMORROW (word), registered July 3, 2012 for services in class 36;
No. 4,392,736 TRANSAMERICA TOTAL PLAN MANAGEMENT (word), registered August 27, 2013 for services in class 36;
No. 4,511,738 TRANSAMERICA WEALTH MANAGEMENT STRATEGIES (word), registered April 8, 2014 for services in class 36;
No. 4,511,809 TRANSAMERICA (word), registered April 8, 2014 for services in class 36;
No. 4,511,811 TRANSAMERICA (fig), registered April 8, 2014 for services in class 36;
No. 4,549,033 THE TRANSAMERICA DIFFERENCE (word), registered June 10, 2014 for services in class 36;
No. 4,601,889 TRANSAMERICA JOURNEY (word), registered September 9, 2014 for services in class 36;
No. 4,634,309 TRANSAMERICA INSTITUTE (word), registered November 4, 2014 for services in classes 35 and 41;
No. 4,660,133 TRANSAMERICA RETIREMENT SOLUTIONS (word), registered December 23, 2014 for services in class 35;
No. 4,660,134 TRANSAMERICA RETIREMENT SOLUTIONS (word), registered December 23, 2014 for services in class 36;
No. 4,725,082 TRANSAMERICA CENTER FOR HEALTH STUDIES (word), registered April 21, 2015 for services in classes 35 and 41;
No. 4,761,806 TRANSAMERICA FINACIAL FOUNDATION IUL (word), registered June 23, 2015 for services in class 36;
No. 4,795,843 TRANSAMERICA SECURE RETIREMENT INDEX (word), registered August 18, 2015 for services in class 36;
No. 4,813,213 TRANSAMERICA (fig), registered September 15, 2015 for goods in class 16;
No. 4,818,494 TRANSAMERICA INCOME PLUS (word), registered September 22, 2015 for services in class 36;
No. 4,819,598 TRANSAMERICA FREEDOM ASSET ADVISOR (word), registered September 22, 2015 for services in class 36;
No. 4,835,216 TRANSAMERICA GLOBAL LINK SOLUTIONS (word), registered October 20, 2015 for services in classes 35, 36 and 41;
No. 4,835,217 TRANSAMERICA GLOBAL LINK SOLUTIONS (fig), registered October 20, 2015 for services in classes 35, 36 and 41;
No. 4,841,706 TRANSAMERICA RETIREMENT PLAN EXCHANGE (word), registered October 27, 2015 for services in classes 35, 36 and 41;
No. 4,863,327 TRANSAMERICA (word), registered December 1, 2015 for services in class 41;
No. 4,877,887 TRANSAMERICA RETIREMENT SOLUTIONS (word), registered December 29, 2015 for goods in class 16;
No. 4,909,084 TRANSAMERICA (word), registered March 1, 2016 for goods in class 16;
No. 5,009,328 TRANSAMERICA FastTrack Retirement Plan (word), registered July 26, 2016 for services in class 36;
No. 5,095,977 TRANSAMERICA TRAVEL PROTECTION (word), registered December 6, 2016 for services in class 36; and
No. 5,115,467 TRANSAMERICA PROVIDER SELECT (word), registered January 3, 2017 for services in class 36.
The <wwwtransamericaemployeebenefits.com> domain name was registered on March 15, 2021.
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 asserts rights in the TRANSAMERICA trademark through its registration of the trademark, as well as multiple variations of the trademark, with the USPTO. (e.g. Reg. No. 1,635,682, registered on February 19, 1991). Registration of a trademark with the USPTO is generally sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <wwwtransamericaemployeebenefits.com> domain name is identical or confusingly similar to Complainant’s TRANSAMERICA trademark as it contains the TRANSAMERICA trademark in its entirety and merely adds the terms “www,” “employee,” “benefits” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per a Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 18, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).”); see also Microsoft Corporation v. Thong Tran Tranh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Furthermore, the addition of “www” at the beginning of the domain name is usually not sufficient to distinguish the domain name under Policy ¶ 4(a)(i). See Citizens Financial Group, Inc. v. Paul Taylor, FA 1714579 (Forum Mar. 14, 2017) (“Similarly, addition of the letters “www” to the beginning of a mark in order to from a domain name does not distinguish the domain name for the purposes of a Policy ¶ 4(a)(i) analysis for confusing similarity.”); see also Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016) (concluding that the addition of “www” takes advantage of a common typing error, and does not distinguish the domain name from the mark or overcome a finding of confusingly similar). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <wwwtransamericaemployeebenefits.com> domain name because Respondent is not authorized to use the TRANSAMERICA trademark and is not commonly known by the disputed domain name. Past Panels have found that WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate invested in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, the Panel has concluded that there is no basis to find that Respondent is commonly known by the disputed domain name when a privacy service has been used by the registrant. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”); see also Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). Here, the WHOIS information for the disputed domain name lists the registrant has been redacted for privacy, while the registrar verified that Respondent’s name is “Zhichao”. Therefore, the Panel finds that the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the website redirects users to links with services offered by Complainant’s competitors. The Panel has found that merely redirecting users to a website offering competing services does not constitute a bona fide offering of goods or services nor a legitimate commercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Complainant provides a screenshot of the disputed domain name’s resolving website, which features no content but parked pay-per-click links for insurance services. The Panel therefore finds that Respondent does not use the dispute domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Complainant argues that Respondent disrupts Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name’s resolving website to host parked, competing pay-per-click links is generally considered evidence of bad faith disruption for commercial gain. See Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s trademark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features parked pay-per-click links for insurance services. Therefore, the Panel agrees, and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends that Respondent’s use of a privacy service when registering the disputed domain name indicates bad faith. The Panel has previously found that using a privacy registration service may contribute to an independent finding of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”); see also Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). The Panel recalls that Respondent’s identity was initially hidden behind a WHOIS Privacy Service. Therefore, the Panel considers the fact that Respondent used a privacy shield to make a finding of bad faith.
Complainant further argues that Respondent had constructive and/or actual knowledge when registering the disputed domain name, which constitutes bad faith. Complainant asserts that because Respondent incorporates Complainant’s trademark and domain in its entirety, Respondent had actual knowledge of Complainant’s rights. Knowledge of rights to a trademark may be shown through the trademark being fully incorporated in the disputed domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Here, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the trademark because Respondent incorporated the TRANSAMERICA trademark in its entirety, and merely added descriptive terms “www,” “employee,” and “benefits,” as well as the “.com” gTLD. The Panel agrees and finds that Respondent’s use of the domain name indicates actual knowledge of Complainant’s rights and constitutes bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwtransamericaemployeebenefits.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 23, 2021
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