Transamerica Corporation v. Zhichao Yang
Claim Number: FA2012001923347
Complainant is Transamerica Corporation ("Complainant"), represented by Gail Podolsky of Carlton Fields, P.A., United States. Respondent is Zhichao Yang ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tranasamerica.com> and <transameerica.com>, registered with NameSilo, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2020; the Forum received payment on December 1, 2020.
On December 1, 2020, NameSilo, LLC confirmed by email to the Forum that the <tranasamerica.com> and <transameerica.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@tranasamerica.com, postmaster@transameerica.com. Also on December 2, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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 December 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a holding company for a group of companies engaged in the sale of life insurance, investment planning, and retirement services. Complainant's largest subsidiary had more than $1 trillion of insurance in force at the end of 2016. Complainant has used the TRANSAMERICA mark since 1929, and states that its companies spend millions of dollars every year to advertise and promote the mark. Complainant owns numerous U.S. trademark registrations for TRANSAMERICA, both standing alone and in combination with other terms.
The disputed domain names were registered through a privacy registration service in July 2018. Each domain name is being used for a web page consisting of links to third-party websites related to insurance, investments, and related services. Complainant states that Respondent is not commonly known by the TRANSAMERICA mark and has not been authorized to use the mark.
Complainant contends on the above grounds that each of the disputed domain names <tranasamerica.com> and <transameerica.com> is confusingly similar to Complainant's TRANSAMERICA mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names <tranasamerica.com> and <transameerica.com> corresponds to Complainant's TRANSAMERICA mark, but for the introduction of a single typographical error (specifically, the insertion of a letter "A" or "E") and the addition of the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Transamerica Corp. v. Zhichao Yang, FA 1866186 (Forum Nov. 6, 2019) (finding <trensamerica.com>, <trasnsamerica.com>, <transeamerica.com> and <trransamerica.com> confusingly similar to TRANSAMERICA); Transamerica Corp. v. Zhichao Yang, FA 1806260 (Forum Oct. 15, 2018) (finding <transamericaa.com> confusingly similar to TRANSAMERICA). The Panel considers the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
Each of the disputed domain names incorporates Complainant's registered mark without authorization, and each has been used for the sole apparent purpose of displaying pay-per-click links to competing services. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Transamerica Corp. v. Zhichao Yang, FA 1866186, supra (finding lack of rights or interests in similar circumstances); Transamerica Corp. v. Zhichao Yang, FA 1806260, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered domain names corresponding to typographical variations on Complainant's mark, and is using them to display links to competing services, presumably for Respondent's commercial gain, in obvious instances of typosquatting. Respondent's actions are indicative of bad faith registration and use under the provisions of the Policy cited above. See, e.g., Transamerica Corp. v. Zhichao Yang, FA 1866186, supra (finding lack of rights or interests in similar circumstances); Transamerica Corp. v. Zhichao Yang, FA 1806260, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tranasamerica.com> and <transameerica.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 30, 2020
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