Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2107001957425
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 NAMES
The domain names at issue are <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2021; the Forum received payment on July 29, 2021.
On July 30, 2021, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. 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 August 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@transamericaanuity.com, postmaster@transamericanuunities.com, postmaster@transamericannuiteis.com. Also on August 2, 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 24, 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
Complainant is a holding company that engages in the sale of life insurance, investment planning, and retirement services. Complainant has rights in the TRANSAMERICA trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 718,358, registered July 1, 1961). Respondent’s domain names <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> are confusingly similar to Complainant’s TRANSAMERICA trademark since they each incorporate the trademark in its entirety, with the addition of the intentionally misspelled descriptive terms “anuity,” “anuunities,” and “annuiteis” as well as the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> domain names because Respondent is not commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent exploits the goodwill associated with Complainant’s TRANSAMERICA trademark for its own commercial gain.
Respondent registered and uses the domain names <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> in bad faith. Respondent disrupts Complainant’s business for commercial gain by hosting hyperlinks to sites that compete with Complainant. Additionally, Respondent’s had actual or constructive knowledge of Complainant’s rights in the TRANSAMERICA trademark when the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 disputed domain names <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> were all registered on July 16, 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”).
The Complainant claims rights in the TRANSAMERICA trademark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per 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 evidence of its registration with the USPTO (e.g., Reg. No. 718,358, registered July 1, 1961). Therefore, the Panel finds that Complainant has rights in the TRANSAMERICA trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> domain names are confusingly similar to Complainant’s TRANSAMERICA trademark since they each incorporate the trademark in its entirety, with the addition of the intentionally misspelled descriptive terms “anuity,” “anuunities,” and “annuiteis” as well as the “.com” gTLD. Minor changes to a trademark such as the addition of generic terms and a gTLD are generally insufficient to negate confusing similarity between a domain name and the mark it incorporates under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.). The Panel finds that the disputed domain names incorporate the trademark TRANSAMERICA in full, followed by descriptive words that, although misspelled, are clearly connected to the Complainant’s services. Therefore, the Panel finds that the disputed domain names <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> are all at least confusingly similar to Complainant’s trademark under 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”).
The Complainant claims that Respondent does not have rights or legitimate interests in the <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> domain names because Respondent is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name 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.). The WHOIS information of record lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico” and no other information suggests that Complainant is commonly known by the domain names or the trademark. Therefore, the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead exploits the goodwill associated with Complainant’s TRANSAMERICA trademark for its own commercial gain. Use of a disputed domain name to host commercial hyperlinks for a respondent’s financial benefit is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides screenshots of Respondent’s websites, which display parked links to financial services, including Complainant’s direct competitors. Thus, the Panel finds that this use 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).
The Complainant contends that Respondent registered and uses the <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> domain names in bad faith because Respondent disrupts Complainant’s business for commercial gain by hosting hyperlinks to sites that compete with Complainant. Use of a disputed domain name to display competing hyperlinks may evidence bad faith disruption under Policy ¶ 4(b)(iii) and attraction for commercial gain under Policy ¶ 4(b)(iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). As previously noted, Complainant provides screenshots of Respondent’s websites, which display parked links to insurance-related websites in competition with Complainant. The Panel therefore agrees with the Complainant’s conclusion, and finds bad faith registration and use under Policy ¶ 4(b)(iii) and/or (iv).
Complainant also argues that Respondent had actual or constructive knowledge of Complainant’s rights in the TRANSAMERICA trademark when the <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> domain names were registered. While constructive knowledge is insufficient to show bad faith, actual knowledge of a complainant’s rights in a trademark demonstrates bad faith per Policy ¶ 4(a)(iii) and may be shown through the use a respondent makes of the mark. See 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.”); see also 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.”). Complainant argues that Respondent should be presumed to have knowledge of Complainant’s trademarks and reputation since the disputed domain name fully incorporates Complainant’s TRANSAMERICA trademark. The Panel agrees with the Complainants conclusion, especially as the Respondent has registered three domain names at the same day, all including the Complainant’s trademark, followed by misspelled versions of words/terms that describe the business of the Complainant. The Panel therefore clearly finds bad faith per 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 <transamericaanuity.com>, <transamericanuunities.com>, and <transamericannuiteis.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 30, 2021
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