Transamerica Corporation v. Zhichao Yang
Claim Number: FA2112001977980
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Zhichao Yang (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <transamericaannuiies.com>and <transamericaannuitis.com>, registered with Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn).
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 December 21, 2021; the Forum received payment on December 21, 2021.
On December 23, 2021, Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) confirmed by e-mail to the Forum that the <transamericaannuiies.com> and <transamericaannuitis.com> domain names are registered with Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) 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 December 29, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English Language Written Notice of the Complaint, setting a deadline of January 18, 2022 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@transamericaannuiies.com, postmaster@transamericaannuitis.com. Also on December 29, 2021, the Chinese and English Language 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 January 24, 2022, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. However, in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the language of the complaint, even if it is different from the language of the registration agreement, can be accepted.
A. Complainant
The Complainant offers various investment and insurance services. Complainant has rights in the TRANSAMERICA trademark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 718,358, registered Jul. 11, 1961). Respondent’s <transamericaannuiies.com> and <transamericaannuitis.com> domain names are identical or confusingly similar to Complainant’s trademarks as they incorporate the trademark in its entirety and add misspellings of the word “annuities”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <transamericaannuiies.com> and <transamericaannuitis.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its TRANSAMERICA trademark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts parked, pay-per-click links on the disputed domain name’s resolving websites.
Respondent registered and uses the <transamericaannuiies.com> and <transamericaannuitis.com> domain names in bad faith. Respondent disrupts Complainant’s business for commercial gain by hosting parked, pay-per-click links on the disputed domain names’ resolving websites. Respondent registered the disputed domain names with actual 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. 4,392,736 TRANSAMERICA TOTAL PLAN MANAGEMENT (word), registered August 27, 2013 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. 4,634,309 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 <transamericaannuiies.com> and <transamericaannuitis.com> domain names were registered on November 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”).
The Complainant claims rights in the TRANSAMERICA trademark through its registrations with the USPTO (e.g. Reg. 718,358, registered Jul. 11, 1961, etc). Registration with the USPTO is generally considered sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <transamericaannuiies.com> and <transamericaannuitis.com> domain names are identical or confusingly similar to Complainant’s TRANSAMERICA trademark. Under Policy ¶ 4(a)(i), adding words and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the trademark it incorporates. See Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). The Panel agree with the Complainant that the disputed domain names incorporates the trademark TRANSAMERICA in full, followed by descriptive words, that are obvious misspellings of the word “annuities”, connected to the Complainant’s services. Therefore, the Panel find that the disputed domain names are 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 AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Complainant argues that Respondent is not commonly known by the <transamericaannuiies.com> and <transamericaannuitis.com> domain names, nor has Complainant authorized or licensed Respondent to use its TRANSAMERICA trademark in the disputed domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its trademark in the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS Information on record identifies Respondent as “Zhichao Yang”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its TRANSAMERICA trademark in the disputed domain names. The Panel agrees with Complainant’s conclusion, and find that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <transamericaannuiies.com> and <transamericaannuitis.com> domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host parked pay-per-click links is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the disputed domain names’ resolving websites, which feature no content but parked, pay-per-click links. Therefore, the Panel find that Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <transamericaannuiies.com> and <transamericaannuitis.com> domain names in bad faith by hosting parked, pay-per-click links. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host parked, pay-per-click links may be 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 mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). The Panel recall that both disputed domain names resolve to websites with parked, pay-per-click links. Therefore, the Panel find that Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
The Complainant further argues that Respondent registered the <transamericaannuiies.com> and <transamericaannuitis.com> domain names with bad faith actual knowledge of Complainant’s rights in the TRANSAMERICA trademark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known trademark into a domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). As noted above, the disputed domain names incorporate Complainant’s TRANSAMERICA trademark. Therefore, the Panel agrees with Complainant, and find that Respondent registered the disputed domain names in bad faith 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 <transamericaannuiies.com> and <transamericaannuitis.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 26, 2022
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