Transamerica Corporation v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2212002023449
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., US. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), PA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com>, registered with Media Elite Holdings Limited.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on December 9, 2022; Forum received payment on December 9, 2022.
On Dec 14, 2022, Media Elite Holdings Limited confirmed by e-mail to Forum that the <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 15, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2023 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@transamericaky.com, postmaster@transamericapp.com, postmaster@transamericali.com, postmaster@transamericare.com, postmaster@transamericarv.com, postmaster@transamericace.com, postmaster@transaemrica.com. Also on December 15, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2023, 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 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, 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.
A. Complainant
Complainant, Transamerica Corporation, sells 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. No. 1,129,244, registered on Jan. 15, 1980). Respondent’s <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names are identical or confusingly similar to Complainant’s TRANSAMERICA mark as they incorporate the mark in its entirety while either misspelling the mark or adding generic abbreviations at the end of the mark as well as adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its TRANSAMERICA mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead offers competing hyperlinks.
Respondent registered and uses the <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names in bad faith. Respondent offers competing hyperlinks while attracting users for commercial gain and gaining click-through fees. Additionally, Respondent used a privacy service to hide its identity. Furthermore, Respondent registered the domain name with actual and/or constructive 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 transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names.
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 (e.g. Reg. No. 1,129,244, registered on Jan. 15, 1980). Registration of a mark with the USPTO is generally sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). See Zoosk, Inc. v. Brock Linen, FA 1811001818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4a(a)(i).”). Complainant has its mark registered with the USPTO. The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant contends Respondent’s <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names are identical or confusingly similar to Complainant’s mark. Under Policy ¶ 4(a)(i), misspelling a mark or adding generic abbreviations along with the “.com” gTLD is not sufficient in differentiating from the mark. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”); see also Disney Enters., Inc. v. Artmidia Comunicacao Visual Criacao E Arte Ltda., FA 603590 (Forum Jan. 16, 2006) (“The term “disneylandia” is the Portuguese translation of the DISNEYLAND mark, and Complainant holds such a trademark for this term in Brazil. Therefore, the <disneylandia.com> and <disneylandia.net> domain names are confusingly similar to Complainant’s mark.”). The disputed domain names incorporate the mark in its entirety while adding either misspellings or generic abbreviations at the end of the mark, such as “ky”, “pp”, “li”, “re”, “rv”, and “ce”, and a misspelling of the mark by switching the first “a” and “e” in “america”. Additionally, the domain names add the “.com” gTLD. The Panel finds that Respondent’s domain names are identical or confusingly similar to Complainant’s 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 names 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 contends Respondent is not commonly known by the <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names, nor has Complainant authorized or licensed Respondent to use its TRANSAMERICA mark in the disputed domain names. Under Policy ¶ 4(c)(ii), WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).”). Respondent is identified as “Domain Administrator.” The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant asserts Respondent is not using the <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host competing hyperlinks is not a bona fide offering of goods or services, nor any noncommercial or fair use. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use). Complainant provides screenshots of the disputed domain names’ resolving websites, which contain links to Complainant’s competitors. The Panel finds that Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has proved this element.
Registration and Use in Bad Faith
Complainant asserts Respondent registered and uses the <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names in bad faith by hosting competing hyperlinks. Under Policy ¶ 4(b)(iii), hosting competing hyperlinks is evidence of bad faith registration and use. 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.”). Additionally, attracting users for commercial gain and click-through fees is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Respondent’s domain names offer competing hyperlinks for commercial gain. This is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues Respondent registered and uses the <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names in bad faith by using a privacy service to hide its identity. Under Policy ¶ 4(a)(iii), using a privacy service to hide one’s identity is evidence of bad faith registration and use. 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.”). Respondent uses a privacy service to hide its identity. This is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant contends Respondent registered the <transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names with actual and/or constructive knowledge of Complainant’s rights in the TRANSAMERICA mark. Actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The disputed domain names incorporate Complainant’s mark in its entirety .The Panel finds from the use made of the domain names that Respondent had actual knowledge of Complainant’s rights in the TRANSAMERICA mark and registered and uses the disputed domain names 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 transamericaky.com>, <transamericapp.com>, <transamericali.com>, <transamericare.com>, <transamericarv.com>, <transamericace.com>, and <transaemrica.com> domain names be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
January 16, 2023
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