Transamerica Corporation v. RMD
Claim Number: FA1710001755975
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is RMD (“Respondent”), Illinois.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <retireontrak.com>, registered with Network Solutions, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 27, 2017; the Forum received payment on October 27, 2017.
On Oct 30, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <retireontrak.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 October 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@retireontrak.com. Also on October 31, 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 November 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Transamerica Corporation, is a holding company for a group of subsidiaries engaged in the sale of life insurance, investment planning, and retirement services. Complainant’s companies have been using the ONTRACK mark since 1999 to market goods and services. Complainant has rights in multiple related marks by virtue of registration of the marks with the United States Patent and Trademark Office (“USPTO”), including the RETIRE ONTRACK mark (Reg. No. 4,506,920, registered Apr. 1, 2014). See Compl. Ex. 1. Complainant has spent significant funds every year to advertise and promote ONTRACK as a name and service mark, and the mark is advertised at multiple websites. See Compl. Ex. 2. Respondent’s <retireontrak.com> domain name is confusingly similar to Complainant’s RETIRE ONTRACK mark, as the domain name consists entirely of the mark—less the space—merely omitting the letter “C” in order to create an intentional misspelling and appending the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <retireontrak.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the RETIRE ONTRACK mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name resolves to a webpage displaying links to retirement services in direct competition with Complainant. See Compl. Ex. 5. Respondent’s typosquatting behavior is further evidence of its lack for rights and legitimate interests.
Respondent registered and is using the <retireontrak.com> domain name in bad faith. Respondent’s use of the domain name to host a website displaying competing links, from which Respondent presumably benefits commercially, is demonstrative of its bad faith. Also, Respondent’s registration of a domain name which is a typosquatted version of Complainant’s mark is independent evidence of its bad faith. Further, Respondent is presumed to have had knowledge of Complainant and its rights in the RETIRE ONTRACK mark at the time it registered and used the <retireontrak.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the sale of life insurance, investment planning, and retirement services.
2. Complainant has established its trademark rights in the RETIRE ONTRACK mark by its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,506,920, registered Apr. 1, 2014). Complainant has also established that it has common law trademark rights in RETIRE ONTRACK going back to 1999.
3. Respondent registered the <retireontrak.com> domain name on November 3, 2005.
4. Respondent has caused the domain name to resolve to a webpage displaying links to retirement services in direct competition with Complainant and has engaged in typosquatting.
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 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the RETIRE ONTRACK mark based upon registration of the mark with the USPTO (Reg. No. 4,506,920, registered Apr. 1, 2014). See Compl. Ex. 1. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the RETIRE ONTRACK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant does not explicitly argue it has common law rights in the mark, but does claim it has used the RETIRE ONTRACK mark as a trade and service mark since 1999. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant states that it has continuously used the RETIRE ONTRACK mark since the year 1999 to promote its services, including but not limited to its use at multiple websites of Complainant’s. See Compl. Ex. 2. Traditionally, a secondary meaning is also established by evidence of a complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to the complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant submits that it has spent significant funds each year to advertise and promote the mark. As Complainant has certified the contents of the Complaint the Panel will accept Complainant’s contentions and the Panel concludes that Complainant has established common law rights going back 1999 to by showing the RETIRE ONTRACK mark has taken on a secondary meaning in association with Complainant’s business.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RETIRE ONTRACK mark. Complainant argues Respondent’s <retireontrak.com> domain name is confusingly similar to the RETIRE ONTRACK mark, as the name consists entirely of the mark—less the space—merely omitting the letter “C” in order to create an intentional misspelling, and appending the “.com” gTLD. Such changes do not distinguish a domain name from a mark in a Policy ¶ 4(a)(i) analysis. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”). The Panel therefore finds the disputed domain name to be confusingly similar to the RETIRE ONTRACK mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s RETIRE ONTRACK mark and has used it in its entirety in the domain name, making only a slight change in the spelling;
(b) Respondent registered the <retireontrak.com> domain name on November 3, 2005;
(c) Respondent has caused the domain name to resolve to a webpage displaying links to retirement services in direct competition with Complainant and has engaged in typosquatting;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant submits that Respondent has no rights or legitimate interests in the <retireontrak.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the RETIRE ONTRACK mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. 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). The WHOIS information of record identifies Respondent as “RMD.” Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <retireontrak.com> domain name;
(f)Complainant further argues Respondent’s lack of rights or legitimate interests in the <retireontrak.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Complainant contends the domain name hosts a website which displays links to retirement services in direct competition with Complainant’s business. See Compl. Ex. 5. Such use is not demonstrative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The Panel agrees and finds Respondent lacks rights and legitimate interests in the <retireontrak.com> domain name per Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant also contends that Respondent is typosquatting on the RETIRE ONTRACK mark, which is evidence of its lack of rights and legitimate interests. Typosquatting behavior can demonstrate a respondent’s lack of rights or legitimate interests in a domain name. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Complainant argues that Respondent’s registration of a domain name that consists entirely of the RETIRE ONTRACK mark and only omits the space and the letter “C.” The Panel agrees that this behavior constitutes typosquatting and is evidence that Respondent lacks rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out 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 against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent’s use of the <retireontrak.com> domain name to display links to competitors of Complainant is evidence Respondent registered and used the name in bad faith. Use of a domain name to host a page of links to a complainant’s competitors can be evidence of bad faith registration and use of the domain name per Policy ¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel recalls Complainant’s contention that the domain name resolves to a webpage which is a list of links to Complainant’s competitors in the insurance and retirement planning market. See Compl. Ex. 5. The Panel therefore finds Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent’s typosquatting behavior is evidence it registered the <retireontrak.com> domain name in bad faith. Registration of a typosquatted domain name can be independent evidence of bad faith per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). The Panel recalls Complainant’s argument that the <retireontrak.com> domain name is a typosquatted version of the RETIRE ONTRACK mark and determines that this is evidence of bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent must have had constructive and/or actual notice of Complainant's rights in the RETIRE ONTRACK mark prior to registration of the <retireontrak.com> domain name, because the domain name contains the mark in its entirety—less one letter. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the RETIRE ONTRACK mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <retireontrak.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 23, 2017
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