Transamerica Corporation v. Zhichao Yang
Claim Number: FA2305002044159
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamerics.com>, registered with GoDaddy Online Services Cayman Islands Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on May 11, 2023; Forum received payment on May 11, 2023.
On May 12, 2023, GoDaddy Online Services Cayman Islands Ltd. confirmed by e-mail to Forum that the <transamerics.com> domain name is registered with GoDaddy Online Services Cayman Islands Ltd. and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. 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 May 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@transamerics.com. Also on May 15, 2023, 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 June 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Transamerica Corporation, offers life insurance, investment planning, and retirement services. Complainant has rights in the TRANSAMERICA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,863,327 registered December 1, 2015). Respondent’s <transamerics.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the TRANSAMERICA mark in a misspelled form, substituting the letter “a” with the letter “s”, along with the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <transamerics.com> domain name. Respondent is not licensed or authorized to use Complainant’s TRANSAMERICA mark and is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to display hyperlinks that compete with Complainant’s business.
Respondent registered and uses the <transamerics.com> domain name in bad faith. Respondent disrupts Complainant’s business by offering competing hyperlinks for financial gain. Also, Respondent creates a likelihood of confusion with Complainant’s business for commercial gain. Respondent registered the disputed domain name using a privacy shield. Respondent had actual or constructive knowledge of Complainant’s rights in the TRANSAMERICA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Transamerica Corporation, offers life insurance, investment planning, and retirement services. Complainant has rights in the TRANSAMERICA mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,863,327 registered December 1, 2015). Respondent’s <transamerics.com> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <transamerics.com> domain name on February 20, 2016.
Respondent does not have rights or legitimate interests in the <transamerics.com> domain name. Respondent uses the disputed domain name to display hyperlinks that compete with Complainant’s business.
Respondent registered and uses the <transamerics.com> domain name in bad faith.
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 has rights in the TRANSAMERICA mark under Policy ¶ 4(a)(i) based upon registration with the USPTO. 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.”).
Respondent’s <transamerics.com> is confusingly similar to Complainant’s TRANSAMERICA mark because the mark is wholly incorporated into the domain name, only substituting a “s” for the letter “a”
Rights or Legitimate Interests
Respondent lacks rights or legitimate interests in the <transamerics.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the TRANSAMERICA mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 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 for the disputed domain name lists the registrant as “Zhichao Yang”. Complainant has not licensed or otherwise authorized Respondent to use Complainant’s TRANSAMERICA mark. Therefore, Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent fails to use the <transamerics.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name resolves to a page displaying links related to the goods and services associated with Complainant and its competitors. See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Here, Complainant provides evidence of the disputed domain name resolving to a page displaying pay-per-click third party links. Therefore, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Complainant argues Respondent disrupts Complainant’s business with the <transamerics.com> domain name by offering competing hyperlinks for financial gain. Respondent use of a domain name to link to competitors of a complainant, presumably generating pay-per-click or referral fees for respondent, is evidence of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). 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).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage showing clickable hyperlinks to hyperlinks for competing retirement plans and investment advisors. Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant asserts Respondent creates a likelihood of confusion with the <transamerics.com> domain name for commercial gain. While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends Respondent registered the <transamerics.com> domain name using a privacy shield, evidencing bad faith. Respondent use of a privacy registration service to conceal Respondent’s identity, though not itself dispositive, is a further indication of bad faith under Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Here, Complainant provides WHOIS information showing registrant information is redacted for privacy. Furthermore, Respondent has engaged in typosquatting which is evidence of bad faith under Policy ¶ 4(a)(iii). See Homer TLC, Inc., FA 1623825 (Forum July 20, 2015) (“Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Therefore, Respondent’s use of a privacy shield likewise is bad faith and registration under Policy ¶ 4(a)(iii).
Complainant argues Respondent had actual knowledge of Complainant’s rights in the TRANSAMERICA mark because of the similarity of the <transamerics.com> domain name. Respondent had actual knowledge of Complainant's mark and rights and therefore registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <transamerics.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 22, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page