DECISION

 

Transamerica Corporation v. Domain Privacy / Domain Name Privacy Inc.

Claim Number: FA2504002152169

 

PARTIES

Complainant is Transamerica Corporation ("Complainant"), represented by Gail Podolsky of Podolsky Law LLC, Georgia, USA. Respondent is Domain Privacy / Domain Name Privacy Inc. ("Respondent"), Cyprus.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <advisortransamerica.com>, registered with Tucows Domains 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 April 24, 2025; Forum received payment on April 24, 2025.

 

On April 24, 2025, Tucows Domains Inc. confirmed by e-mail to Forum that the <advisortransamerica.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 April 29, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2025 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@advisortransamerica.com. Also on April 29, 2025, 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 May 20, 2025, 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 name 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" as a trade name and service mark since 1929. Complainant's subsidiaries have advertised and promoted "Transamerica" as a name and service mark for many years in national consumer publications. The TRANSAMERICA name is promoted by Complainant's subsidiaries across multiple websites. Complainant has rights in the TRANSAMERICA mark, inter alia, through its registration of the mark with the USPTO (e.g., Reg. No. 1,129,244, registered January 15, 1980). The disputed domain name is confusingly similar to Complainant's TRANSAMERICA mark, as it merely adds the generic term "advisor" and the ".com" gTLD.

 

(ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name and has not been authorized to use Complainant's mark. Respondent's use is not for any bona fide offering of goods or services. Instead, the disputed domain name redirects users to download software that appears to contain malware. Complainant's customers and other Internet users may reasonably, but mistakenly, believe that they are required to download such software in order to access Complainant's official website, and that Respondent's website is sponsored by or affiliated with Complainant.

 

(iii) Respondent registered and uses the disputed domain name in bad faith. The domain name redirects users to download software that appears to contain malware. Respondent's use of a WHOIS privacy service constitutes additional evidence of bad faith. Respondent's registration of the <advisortransamerica.com> domain name, in spite of actual or constructive knowledge of Complainant's rights in the TRANSAMERICA mark, amounts to bad faith registration and use.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on June 29, 2024.

 

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

 

3. The disputed domain name redirects users to download software that appears to contain malware.

 

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 further contends that the disputed domain name, <advisortransamerica.com>, is confusingly similar to its TRANSAMERICA mark because it incorporates the mark in its entirety, differing only by the addition of the generic term "advisor" and the ".com" gTLD. The addition of a generic term and a gTLD does not eliminate confusing similarity under Policy ¶ 4(a)(i). Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant's TRANSAMERICA mark under 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 Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark. Additionally, Respondent is not affiliated with Complainant. Relevant information, such as WHOIS data, can be used as evidence to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the unmasked WHOIS information lists "Domain Privacy / Domain Name Privacy Inc." as the registrant, and there is no evidence in the record suggesting that Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, as the disputed domain name redirects users to download software that appears to contain malware. Complainant's customers and other Internet users may reasonably, but mistakenly, believe that they are required to download such software in order to access Complainant's official website, and that Respondent's website is sponsored by or affiliated with Complainant.

 

When a disputed domain name is used for malicious purposes, such as distributing malware, it does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) ("Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).").

 

Complainant provides a screenshot of the disputed domain name's resolving website, inducing Internet users to install suspicious malware labeled "Mix VPN" under the heading "Mix VPN," with the accompanying phrases "Protect your online privacy with one click," "Complete Anonymity (Hide your IP address and protect your data)," "High Speed (Fast and stable connection)," "Borderless Access (unlock any content from anywhere in the world)," and "Install Mix VPN." Based on this evidence, the Panel finds that Respondent uses the disputed domain name to direct Internet users to a website attempting to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). Therefore, the Panel concludes that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under 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 establish 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, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the disputed domain name in bad faith, as the domain is employed to distribute malware. Where a domain name is used for malicious purposes such as malware distribution, panels have consistently found bad faith under Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) ("The Panel here finds that Respondent [installation of malware] further supports the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)."). As previously noted, Complainant provides evidence supporting these claims, including the use of the disputed domain name to induce Internet users to install suspicious malware. The Panel agrees and finds that Respondent's conduct disrupts Complainant's business and constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).

 

Next, Complainant contends that Respondent had constructive or actual knowledge of Complainant's rights in the TRANSAMERICA mark prior to registering the disputed domain name, based on Respondent's use of Complainant's mark. Under Policy ¶ 4(a)(iii), actual knowledge may be established through a totality of circumstances surrounding the registration of the disputed domain name. 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 notes that 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" as a trade name and service mark since 1929. These subsidiaries have also promoted the TRANSAMERICA name in national consumer publications for many years. Given the notoriety of Complainant's TRANSAMERICA mark and the manner in which the disputed domain name is used, the Panel infers that Respondent had actual knowledge of Complainant's rights in the mark. This supports a finding of bad faith registration under Policy ¶ 4(a)(iii).

 

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 <advisortransamerica.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: May 20, 2025