Transamerica Corporation v. Zhichao Yang
Claim Number: FA1706001734402
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <premieretransamerica.com> (‘the Domain Name’) registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2017; the Forum received payment on June 2, 2017.
On June 05, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <premieretransamerica.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 June 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2017 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@premieretransamerica.com. Also on June 6, 2017, 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 June 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarized as follows:
Complainant owns the registered trade mark TRANSAMERICA in the USA for investment and insurance services and owns, inter alia, the domain name transamerica.com.
The Domain Name is confusingly similar to Complainant’s TRANSAMERICA mark as it incorporates that mark in its entirety and it is the dominant element of the Domain Name.
The Domain Name, registered in 2015, is attached to a page that displays TRANSAMERICA prominently at the top and takes the Internet user to links to Complainant’s competitors implying a connection with Complainant.
Complainant never authorized Respondent to register or use the TRANSAMERICA mark. Respondent has never been commonly known by the Domain Name. Use of a confusingly similar domain name to divert Internet users to a web site containing the links of competitors is not a bona fide offering of goods and services. There is no legitimate non commercial or fair use of the Domain Name. Respondent lacks rights or legitimate interests in the Domain Name.
Respondent registered and is using the Domain Name in bad faith for the purposes of intentionally diverting for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s TRANSAMERICA mark as to the source, sponsorship affiliation and endorsement of the services offered through links on Respondent’s web site.
The use of a privacy service is additional evidence of bad faith under the Policy.
Respondent did not respond to Complainant’s cease and desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the registered trade mark TRANSAMERICA in the USA for investment and insurance services (registered first in time in 1961 with first use recorded as 1929) and owns, inter alia transamerica.com.
The Domain Name registered in 2015 has been used for links to Complainant’s competitors.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical and/or Confusingly Similar
The Domain Name consists of Complainant's TRANSAMERICA registered mark (with first use recorded as 1929),the generic word ‘premiere’ and the gTLD .com.
The addition of generic words fails to sufficiently distinguish domain names from registered marks. See Arthur Guinness Son & Co. (Dublin) Ltd v Healy/BOSTH, D2001-0026 (WIPO Mar 23, 2001)(finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).
gTLDs do not serve to distinguish a domain name from a mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Respondent does not appear to be commonly known by the Domain Name, and is not making a legitimate non commercial or fair use of these name. The site appears to be set up for commercial benefit to compete with Complainant using the latter's intellectual property rights to make a profit by pointing to third party links unconnected with Complainant. See ALPITOUR SpA v Albloushi FA 888651 (Forum. Feb 26, 2007) (rejecting Respondent's contentions of rights and legitimate interests because Respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy. ) There is no permission from Complainant to Respondent to use Complainant’s mark.
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent's use of the site connected to the Domain Name is commercial and he is using it to profit from linking to third party web sites in a confusing manner. The use of the Domain Name to point to Complainant and other competitors of Complainant shows that Respondent is aware of Complainant and its business, The Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Dovetail Ventures LLC v Klayton Thorpe, FA 1506001625786 (Forum Aug 2, 2015)(holding that Respondent had acted in bad faith under Policy 4(b)(iv) where it used the disputed domain name to host a variety of hyperlinks unrelated to Complainant’s business through which Respondent presumably gained).
Further it has been held that such use is disruptive under Policy 4 (b)(iii) of the Policy. See Adriana Inc v Moniker Privacy services, FA 1503001610020 (Forum May 1, 2015)(Using pay per click links redirecting users to competing web sites to disrupt and compete with a Complainant’s business is evidence of bad faith registration and use under Policy 4 (b)(iii)).
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <premieretransamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 5, 2017
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