Transamerica Corporation v. yangzhichao
Claim Number: FA1709001748176
Complainant is Transamerica Corporation ("Complainant"), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is yangzhichao ("Respondent"), People's Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericanemployeebenefits.com>, registered with 22net, Inc.
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 September 8, 2017; the Forum received payment on September 8, 2017.
On September 13, 2017, 22net, Inc. confirmed by email to the Forum that the <transamericanemployeebenefits.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the names. 22net, Inc. has verified that Respondent is bound by the 22net, 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 September 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2017 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@transamericanemployeebenefits.com. Also on September 18, 2017, 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 October 13, 2017, 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 name 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.
The disputed domain name was registered through a privacy registration service in December 2014. It resolves to a website that displays Complainant's TRANSAMERICA mark and contains a list of links to competitors of Complainant. Complainant states that Respondent is not commonly known by the TRANSAMERICA mark and has not been authorized to use the mark.
On these grounds, Complainant contends that the disputed domain name is confusingly similar to Complainant's TRANSAMERICA mark; that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is 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 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 (ForumJuly 31, 2000) (holding that the 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.").
The Panel notes that the Registration Agreement is written in Chinese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, noting that the content of Respondent's website is in English, as is the privacy policy that it links to. In addition, the domain name itself is comprised of words in the English language.
The Panel further notes that Respondent is no stranger to proceedings under the Policy, most or all of which have been conducted in English. Remarkably, these include at least four that appear to involve the very same Complainant as does this proceeding. See Transamerica Corp. v. Yangzhichao, FA 1748075 (Forum Oct. 11, 2017) (ordering transfer of <transamericaemployeebenifits.com>); Transamerica Corp. v. Zhichao Yang, FA 1748097 (Forum Oct. 5, 2017) (ordering transfer of <transamericanannuities.com>); Transamerica Corp. v. Zhichao Yang, FA 1743458 (Forum Aug. 31, 2017) (ordering transfer of <transamericaannuites.com>); Transamerica Corp. v. Yangzhichao, FA 1674974 (Forum June 14, 2016) (ordering transfer of <transamericaanuities.com>).
Under the circumstances, the Panel sees no reason to require Complainant to bear the burden and expense of arranging for a Chinese translation that is likely unnecessary to afford proper notice to Respondent, and that in any event Respondent is virtually certain to ignore. The Panel determines that English shall be the language of this proceeding.
The disputed domain name incorporates Complainant's TRANSAMERICA mark, adding the letter "n," the phrase "employee benefits," and the ".com" top-level domain. These modifications do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Transamerica Corp. v. yangzhichao, FA 1748075, supra (finding <transamericaemployeebenifits.com> confusingly similar to TRANSAMERICA); Transamerica Corp. v. Zhichao Yang, FA 1748097, supra (finding <transamericanannuities.com> confusingly similar to TRANSAMERICA). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's mark without authorization, and its only apparent use has been for a website comprised of pay-per-click links to competitors of Complainant. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., Transamerica Corp. v. yangzhichao, FA 1748075, supra (finding lack of rights or legitimate interests in identical circumstances); Transamerica Corp. v. Zhichao Yang, FA 1748097, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, 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 name.
Finally, Complainant must show that the disputed domain names were registered and have been 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's registration of a domain name that incorporates Complainant's well-known mark, together with the use of the domain name to generate revenues from pay-per-click advertisements, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., Transamerica Corp. v. yangzhichao, FA 1748075, supra (finding bad faith registration and use under identical circumstances); Transamerica Corp. v. Zhichao Yang, FA 1748097, 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 <transamericanemployeebenefits.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 20, 2017
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