Transamerica Corporation v. jack li
Claim Number: FA2107001954758
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is jack li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transameriica.com>, registered with DropCatch.com 1070 LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2021; the Forum received payment on July 12, 2021.
On July 20, 2021, DropCatch.com 1070 LLC confirmed by e-mail to the Forum that the <transameriica.com> domain name is registered with DropCatch.com 1070 LLC and that Respondent is the current registrant of the name. DropCatch.com 1070 LLC has verified that Respondent is bound by the DropCatch.com 1070 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 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@transameriica.com. Also on July 21, 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 13, 2021, 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, Transamerica Corporation, is a holding company for a group of subsidiaries engaged in the sale of life insurance, investment planning, and retirement services. Complainant maintains registration of its TRANSAMERICA mark through its registration with the United States Patent and Trademark Office (“USPTO”). The disputed domain name, <transameriica.com>, is identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s TRANSAMERICA mark while adding an additional letter “i” and the “.com” generic top-level domain (“gTLD”) to form the domain name.
Respondent does not have any rights or legitimate interests in the <transameriica.com> domain name because Respondent is not commonly known by the disputed domain name. Additionally, Respondent is not using the <transameriica.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent’s website advertises services in competition with Complainant, even directing users to Complainant’s competitors.
Respondent registered and uses the <transameriica.com> in bad faith because Respondent uses the disputed domain name to redirect users to websites of Complainant’s competitors. Additionally, Respondent acted with actual knowledge of Complainant’s rights in the TRANSAMERICA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <transameriica.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 in the TRANSAMERICA mark through its registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of is registration certificates of its TRANSAMERICA mark with the USPTO (e.g. Reg. No. 718,358 – Registered on July 11, 1961). The Panel finds that Complainant has rights in the TRANSAMERICA mark under Policy ¶ 4(a)(i).
Complainant argues that the <transameriica.com> domain name is identical or confusingly similar to Complainant’s TRANSAMERICA mark because it incorporates Complainant’s TRANSAMERICA mark while adding an extra letter and the “.com” gTLD. A domain name may be found to be identical or confusingly similar, under Policy ¶ 4(a)(i), despite the addition of a letter and a gTLD. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). In the <transameriica.com> domain name, Respondent incorporated an additional letter “i." The Panel finds that the <transameriica.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark 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 does not have any rights or legitimate interests in the <transameriica.com> domain name because Respondent is not commonly known by the domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The WHOIS information identifies the registrant as “jack li” and nothing in the record suggests that Respondent is commonly known by the <transameriica.com> domain name. The Panel finds that Respondent is not commonly known by the <transameriica.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the <transameriica.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the domain name to advertise competing life insurance products. Use of a disputed domain name to promote competing products does not constitute a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The resolving website displays links relating to insurance and retirement services that redirect users to websites operated by competitors of Complainant. The Panel finds that Respondent is not using the <transameriica.com> domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Registration and Use in Bad Faith
Complainant argues Respondent registered and uses the <transameriica.com> domain name in bad faith because Respondent uses the domain name to host links featuring competing products. Use of a disputed domain name to host links that advertise competing products may be evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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 screenshots showing the resolving website displays links that advertises products from Complainant’s competitors. This is evidence that Respondent registered and uses the <transameriica.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues Respondent acted with actual knowledge of Complainant’s rights in the TRANSAMERICA mark. Actual knowledge may be found based on the notoriety of complainant’s mark and respondent’s use of that mark and indicates bad faith under Policy ¶ 4(a)(iii). See 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 and in competition with Complainant.”). Complainant asserts that Respondent must have known about Complainant’s TRANSAMERICA mark and reputation because Respondent uses the TRANSAMERICA mark, despite adding one additional letter, and uses the domain name to advertise services that Complainant is known for, and redirects users to competitors of Complainant. The Panel finds that Respondent acted with actual knowledge of Complainant’s rights in the TRANSAMERICA mark, and registered and uses the 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 <transameriica.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
August 24, 2021
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