Transamerica Corporation v. lin yanxiao
Claim Number: FA2110001967457
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is lin yanxiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tlictransamerica.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2021; the Forum received payment on October 4, 2021.
On October 5, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <tlictransamerica.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 October 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@tlictransamerica.com. Also on October 6, 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 November 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, Transamerica Corporation, operates a holding company with subsidiaries engaged in the sale of life insurance, investment planning, and retirement services. Complainant has rights in the TRANSAMERICA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 718,358, registered July 11, 1961). The disputed domain name is confusingly similar to Complainant’s TRANSAMERICA mark, merely adding the letters “TLIC” before the mark and adding the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the TRANSAMERICA mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but instead to direct users to a parked website with links to Complainant’s competitors.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to resolve to a parked website with links to Complainant’s competitors, which demonstrates bad faith disruption of Complainant’s business and likely leads to commercial gain for Respondent. Complainant sent Respondent a cease-and-desist letter regarding the disputed domain name, to which Respondent failed to respond. Respondent’s use of a privacy service demonstrates bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TRANSAMERICA mark.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on August 3, 2021.
2. Complainant has established rights in the TRANSAMERICA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 718,358, registered July 11, 1961).
3. The disputed domain name resolves to a parked website with hyperlinks to Complainant’s competitors.
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 mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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 evidence of its registration with the USPTO (e.g., Reg. 718,358, registered July 11, 1961). Therefore, the Panel finds Complainant has established rights in the TRANSAMERICA mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <tlictransamerica.com> is identical or confusingly similar to Complainant’s TRANSAMERICA mark, merely adding the letters “TLIC” and the “.com” gTLD. Previous panels have held that such changes may not sufficiently distinguish a domain name and a mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s TRANSAMERICA mark under Policy ¶ 4(a)(i).
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”).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the TRANSAMERICA mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information identifies “lin yanxiao” as the registrant of the disputed domain name. Additionally, nothing in the record rebuts Complainant’s contention that it did not authorized Respondent’s use of the TRANSAMERICA mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but rather to host a parked website providing links to Complainant’s competitors. Previous panels have held that such use of the disputed domain name does not constitute either a bona fide offer or as a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving website as evidence that Respondent uses the disputed domain name is used illegitimately. Thus, the Panel finds Respondent fails to use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because the disputed domain name resolves to a parked website with hyperlinks to Complainant’s competitors. Such use of an infringing domain name may demonstrate bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also 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)”). As previously noted, Complainant provides screenshots of the resolving website of the disputed domain name as evidence of Respondent’s bad faith. The Panel therefore finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TRASAMERICA mark. Per Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to establish bad faith, and may be demonstrated by the notoriety of a mark and the use Respondent makes of the disputed domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel infers due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TRASAMERICA mark, and thus it finds bad faith registration under 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 <tlictransamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 8, 2021
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