Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1906001850350
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securetransamerica.com>, registered with GoDaddy.com, LLC.
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 the Forum electronically on June 28, 2019; the Forum received payment on June 28, 2019.
On July 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <securetransamerica.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 July 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 2019 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@securetransamerica.com. Also on July 3, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 is a holding company for a group of subsidiaries engaged in the sale of 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. 718,358, registered July 11, 1961). Respondent’s <securetransamerica.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark as it incorporates the mark in its entirety and merely adds the term “secure” and the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <securetransamerica.com> domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is offering services in direct competition with those offered by Complainant.
Finally, Respondent’s <securetransamerica.com> domain name was registered and is being used in bad faith, as the Respondent is attempting to attract Internet users for commercial gain. Respondent also had actual knowledge of Complainant’s rights in the TRANSAMERICA mark prior to registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a holding company for a group of subsidiaries engaged in the sale of 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. 718,358, registered July 11, 1961). Respondent’s <securetransamerica.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark.
Respondents has no rights or legitimate interests in the <securetransamerica.com> domain name. Respondent is offering services in direct competition with those offered by Complainant.
Respondent registered and uses the <securetransamerica.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) through registration of the mark with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <securetransamerica.com> domain name is confusingly similar to Complainant’s TRANSAMERICA mark as it incorporates the mark in its entirety and merely adds the term “secure” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the <securetransamerica.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. The WHOIS information for the <securetransamerica.com> domain name identifies the Registrant as “Carolina Rodrigues/Fundacion Comercio Electronico.” Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (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).
Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii). Respondent is offering services in direct competition with those offered by Complainant. Here, Complainant provides a screenshot of the <securetransamerica.com> domain name’s resolving webpage, showing links to various services such as “Retirement” and “Transamerica Insurance” which are services offered by Complainant. Use of a disputed domain name to host links for goods or services in competition with complainant is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. 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).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent registered and uses the <securetransamerica.com> domain name in bad faith under Policy ¶ 4(b)(iv). Respondent is attempting to attract Internet users for commercial gain by offering links that compete with Complainant. Use of a disputed domain name to host links for goods or services in competition with complainant for the purpose of finical gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Respondent had actual knowledge of Complainant’s TRANSAMERICA mark at the time of registering the <securetransamerica.com> domain name. Therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
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 <securetransamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 8, 2019
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