DECISION

 

Transamerica Corporation v. Aaru Ma'at

Claim Number: FA2311002072792

 

PARTIES

Complainant is Transamerica Corporation ("Complainant"), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Aaru Ma'at ("Respondent"), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <transamericawfg.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dr. Beatrice Onica Jarka as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 29, 2023; Forum received payment on November 29, 2023.

 

On November 29, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <transamericawfg.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 November 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@transamericawfg.com. Also on November 30, 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.

 

A timely Response was received and determined to be complete on December 13, 2023.

 

On December 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dr. Beatrice Onica Jarka 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Briefly, the Complainant's contends the following:

-       The Complainant is the owner of the trade mark TRANSAMERICA for financial and insurance services with first use for financial services recorded as 1929 and first use for insurance services recorded as 1959.

-       Since June 21, 2000, the Complainant has also owned and used www.worldfinancialgroup.com – WFG for short – to offer its financial services products.

-       The Complainant actively enforces its rights in the "Transamerica" service mark.

-       The Complainant has acquired numerous domain names, including those incorporating variations of the TRANSAMERICA, through enforcement efforts aimed at protecting its marks from cybersquatting and online infringement.

-       On October 5, 2022, Respondent registered the domain name <transamericawfg.com>.

-       As of November 29, 2023, Respondent's website located at <transamericawfg.com> brings the Internet user to a website containing links to Complainant's competitors which offer services in direct competition with those offered by Complainant.

-       The <transamericawfg.com> domain name is identical and confusingly similar to Complainant's TRANSAMERICA and WFG marks as it incorporates both of them in one domain.

-       The addition of the ".com" suffix does not overcome the confusing similarity of the disputed domain name with Complainant's marks.

-       The Respondent's registration of the <transamericawfg.com> disputed domain name serves only to cause confusion, mistake, or deception among consumers attempting to locate Complainant's website.

-       The Complainant never authorized Respondent to register or use the TRANSAMERICA or WFG mark in any manner.

-       The Complainant is unaware of any evidence that Respondent has ever commonly been known by the name "Transamericawfg" (or variations thereof) prior to Respondent's registration of the <transamericawfg.com> domain name.

-       The Respondent's website brings the Internet user to a website containing links to Complainant's competitors which offer services in direct competition with those offered by Complainant.

-       The Respondent is not making a legitimate noncommercial or fair use of the domain name <transamericawfg.com>, therefore, UDRP Policy ¶ 4(c)(iii) does not apply.

-       The Respondent's use of a privacy service is additional evidence of bad faith under the Policy.

 

B. Respondent

In reply to the Complaint the Respondent argues that:

-       The Complainant does not have a trademark, service mark or domain name identical or similar to the exact disputed domain name <transamericawfg.com>. 

-       The Respondent has rights and legitimately owns the domain name <transamericawfg.com>.

-       The Respondent was not using the domain name for a website address. There is no website with the domain name <transamericawfg.com>, but one directed to Godaddy.com where the domain was purchased.

-       there is no way to mislead or divert consumers because transamericawfg.com is not a website.

 

FINDINGS

-       The Complainant is the owner of the trade mark TRANSAMERICA for financial and insurance services with first use for financial services recorded as 1929 and first use for insurance services recorded as 1959.

-       Since June 21, 2000, the Complainant has also owned and used www.worldfinancialgroup.com – WFG for short – to offer its financial services products.

The disputed domain name registered in 2022 fully incorporates without any right and authorisation the TRANSAMERICA or WFG mark.

 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

This Panel finds that the <transamericawfg.com> disputed domain name is identical and confusingly similar to Complainant's TRANSAMERICA and WFG marks as it incorporates both of them in one domain.

 

Furthermore, the addition of the ".com" suffix does not overcome the confusing similarity of the domain name with Complainant's marks, as the addition whether it be ".com," ".net," ".biz," ".info," or ".org" is "insufficient to adequately distinguish the disputed domain name from the Complainant's mark."

 

-       The contention of the Respondent that the Complainant does not have a trademark, service mark or domain name identical or similar to the exact disputed domain name <transamericawfg.com> is to be rejected as the Policy does require exact reproduction of a trademark for finding confusing similarity.

 

Accordingly, the Panel holds that the disputed domain name is each confusingly similar for the purpose of the Policy to the marks in which the Complainant has rights.

 

Rights or Legitimate Interests

The Complainant contends that it never authorized Respondent to register or use the TRANSAMERICA or WFG mark in any manner, contention which was not rebutted by the Respondent in its Response.

 

There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the name "Transamericawfg" (or variations thereof) prior to Respondent's registration of the <transamericawfg.com> domain name.

 

Moreover the contentions of the Respondent as to having rights and legitimate interests base on the simple registration of the disputed domain name cannot be accepted as under the Policy no one could get rights and legitimate interests by registering a domain name which actually infringes the rights and legitimate interests of a third party.  

 

The Respondent's website brings the Internet user to a website containing links to Complainant's competitors which offer services in direct competition with those offered by Complainant.

 

Use of a confusingly similar domain name to divert Internet users to a website containing such links is not a bona fide offering of goods or services pursuant to UDRP Policy ¶ 4(c)(i).

 

Moreover, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name <transamericawfg.com>, therefore, UDRP Policy ¶ 4(c)(iii) does not apply.

 

As a consequence the Panelist finds that the Respondent does not have rights or a legitimate interest in the disputed domain name and that the Complainant has satisfied the second requirement of the Policy.

 

Registration and Use in Bad Faith

The incorporation of the Complainant's trademarks in the disputed domain name without any prior authorization and right represents evidence that the Respondent registered and is using the <transamericawfg.com> domain name in bad faith. 

 

Furthermore, the Respondent's registration of the disputed domain name "in spite of actual or constructive knowledge [of Complainant's rights in the TRANSAMERICA and WFG marks, amounts to bad faith registration and use pursuant to [UDRP] Policy ¶4(a)(iii)."

 

The Panel agrees with the Complainant that the Respondent's registration of the disputed domain name serves only to cause confusion, mistake, or deception among consumers attempting to locate Complainant's website.

 

Instead, this registration and use demonstrates that the Respondent registered and is using the disputed domain name in bad faith, for the purpose of intentionally attempting to divert, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's TRANSAMERICA and WFG marks as to the source, sponsorship, affiliation, and endorsement of the services offered through links on Respondent's website.

 

As such, the Panel holds that the Complainant has made out its case that the disputed domain name was registered and used in bad faith under Policy 4(b)(iii) and (iv) and has satisfied the third requirement of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED

 

Accordingly, it is Ordered that the <transamericawfg.com> domain name be TRANSFERRED from Respondent to Complainant. 

 

 

Dr. Beatrice Onica Jarka Panelist

Dated: December 20, 2023