DECISION

 

Transamerica Corporation v. Quan Zhongjun, Juanita Co.

Claim Number: FA2401002079535

 

PARTIES

Complainant is Transamerica Corporation ("Complainant"), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Quan Zhongjun, Juanita Co. ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <yransamerica.com>, <transamwrica.com>, <transamerixa.com>, <trnasamerica.com>, <ttansamerica.com> and <transamrrica.com>, registered with Cosmotown, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 17, 2024; Forum received payment on January 17, 2024.

 

On January 18, 2024, Cosmotown, Inc. confirmed by e-mail to Forum that the <yransamerica.com>, <transamwrica.com>, <transamerixa.com>, <trnasamerica.com>, <ttansamerica.com> and <transamrrica.com> domain names are registered with Cosmotown, Inc. and that Respondent is the current registrant of the names. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, Inc. 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 January 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2024 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@yransamerica.com, postmaster@transamwrica.com, postmaster@transamerixa.com, postmaster@trnasamerica.com, postmaster@ttansamerica.com and postmaster@transamrrica.com. Also on January 18, 2024, 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 February 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is a holding company for a group of subsidiaries engaged in the sale of life insurance, investment planning, and retirement services. Complainant's largest subsidiary, Transamerica Life Insurance Company has been underwriting insurance since 1906. Complainant's subsidiaries and their predecessors have used the name "Transamerica" since 1929 as a trade name and service mark. Complainant's subsidiaries have advertised and promoted "Transamerica" as a name and service mark for many years in national consumer publications. Complainant's "Transamerica" name is advertised by the Complainant's subsidiaries at multiple websites. Complainant has rights in the TRANSAMERICA mark, inter alia, through Complainant's registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,129,244, registered January 15, 1980). The disputed domain names are confusingly similar to Complainant's TRANSAMERICA mark as they merely replace or reverse letters, adding the ".com" gTLD.

 

ii) Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the TRANSAMERICA mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses the disputed domain names to host competitive hyperlinks.

 

iii) Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to divert Internet users to parked pages containing competitive hyperlinks. Respondent's use of the disputed domain names is evidence of bad faith pursuant to [UDRP] Policy ¶ 4(b)(iv) because the domain names presumably commercially benefit from the misleading domain names by receiving 'click-through-fees.' Complainant is engaged in bad faith typosquatting. Furthermore, Respondent had constructive or actual knowledge of Complainant's rights in the TRANSAMERICA mark prior to registering the disputed domain names based on Respondent's use of Complainant's mark. Finally, Respondent registered the disputed domain names using a privacy service.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain names <yransamerica.com> and <transamwrica.com> were registered on April 15, 2023; and the names<transamerixa.com>, <trnasamerica.com>, <ttansamerica.com> and <transamrrica.com> were registered on April 3, 2023.

 

2. Complainant has established rights in the TRANSAMERICA mark through the registration of the mark with the USPTO (e.g., Reg. No. 1,129,244, registered January 15, 1980).

 

3. The disputed domain names' resolving websites redirect Internet users to parked pages with links relating to insurance services, which bring users to Complainant's competitors.

 

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.

 

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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the TRANSAMERICA mark through Complainant's registration of the mark with the USPTO (e.g., Reg. No. 1,129,244, registered January 15, 1980). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). Therefore, the Panel finds Complainant has established rights in the TRANSAMERICA mark per Policy ¶ 4(a)(i).

 

Complainant argues the disputed domain names are confusingly similar to Complainant's TRANSAMERICA mark as they merely replace or reverse letters, adding the ".com" gTLD. The Panel notes that the disputed domain names incorporate the TRANSAMERICA mark in their entirety (with the substitution of the letter "t" with the letter "y" in <yransamerica.com>; the substitution of the letter "w" for the letter "e" in <transamwrica.com>; the substitution of the letter "c" with the letter "x" in <transamerixa.com>; the reversal of the letters "a" and "n" in <trnasamerica.com>; the substitution of the letter "r" for the letter "t" in <ttansamerica.com>; and the substitution of the letter "r" for the letter "e" in <transamrrica.com>). The addition of a gTLD to a misspelled mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant's marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain ("gTLD") '.com.'"). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 contends Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the TRANSAMERICA mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (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). 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 Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"). The unmasked WHOIS information for the disputed domain names lists the registrants as "Quan Zhongjun, Juanita Co.," and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the TRANSAMERICA mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names to host competitive hyperlinks. Using a confusingly similar domain name to host competitive hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) ("Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant.  The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use."). Complainant provides screenshots of Respondent's resolving websites and highlights that the resolving websites redirect users to parked pages with links relating to insurance services, which bring users to Complainant's competitors. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

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 names.

 

Registration and Use in Bad Faith

Complainant contends Respondent registered and uses the disputed domain names in bad faith as Respondent uses the disputed domain names to divert Internet users to parked pages containing competitive hyperlinks. Registering a confusingly similar domain name to divert Internet users to competitive hyperlinks can demonstrate bad faith per 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 Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).  The Panel recalls that Complainant provides screenshots of Respondent's resolving websites, which redirect users to parked pages with links relating to insurance services, which bring users to Complainant's competitors. Complainant argues that Respondent presumably commercially benefits from the misleading domain names by receiving click-through-fees. The Panel agrees and finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

 

Next, Complainant contends that Respondent had constructive or actual knowledge of Complainant's rights in the TRANSAMERICA mark prior to registering the disputed domain names based on Respondent's use of Complainant's mark. Per Policy ¶ 4(a)(iii), actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain names. See Google Inc. v. Ahmed Humood, FA 1591796 (Forum Jan. 7, 2015) ("This Panel makes that inference; Respondent has actual knowledge of Complainant's mark at the time of domain name registration based on the fame of Complainant's GOOGLE mark and Respondent's use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant."). The Panel infers that Respondent had actual knowledge of Complainant's rights in the TRANSAMERICA mark, thereby supporting a finding of bad faith registration under Policy ¶ 4(a)(iii) given the circumstances: the notoriety of Complainant's trademark; the method of Respondent's formulating the disputed domain names by way of typosquatting; and Respondent's resolving the disputed domain names to websites hosting third-party links relating to Complainant's insurance business. 

 

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 <yransamerica.com>, <transamwrica.com>, <transamerixa.com>, <trnasamerica.com>, <ttansamerica.com> and <transamrrica.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: February 11, 2024