Transamerica Corporation v. yangzhichao
Claim Number: FA1803001775991
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is yangzhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericandirect.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 A. Einhron appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2018; the Forum received payment on March 14, 2018.
On March 15, 2018, 22net, Inc. confirmed by e-mail to the Forum that the <transamericandirect.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 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 March 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2018 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@transamericandirect.com. Also on March 22, 2018, 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 April 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 been underwriting insurance since 1906 and has had more than $1,055 billion of insurance in force as of December 31, 2016. 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 <transamericandirect.com> domain name is confusingly similar to Complainant’s mark as it contains the mark in its entirety and adds the term “direct” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <transamericandirect.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the website contains links to financial services offerings in direct competition with those offered by Complainant.
Respondent registered and uses the <transamericandirect.com> domain name in bad faith. Respondent intentionally attempts to divert, for commercial gain, Internet users to Respondent’s website 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 website. Further, Respondent is presumed to have knowledge of Complainant’s registered mark and reputation because Respondent’s domain name <transamericandirect.com> incorporates Complainant’s mark in its entirety.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <transamericandirect.com> domain name on May 1, 2014.
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.”).
Preliminary Issue: Language of Proceeding
The Panel notes that the registration Agreement is written in Chinese. Rule 11(a) provides that the language of this administration 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 that Respondent has been party to many proceedings under the Policy, most or all of which have been conducted in English. See e.g. Transamerica Corp. v. Yangzchichao, FA 1748176 (Forum Oct. 20, 2017).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant claims rights in the TRANSAMERICA mark through its registration of the mark with the USPTO (e.g. Reg. No. 718,358, registered July 11, 1961). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark”). Accordingly, the Panel finds that Complainant has established rights in the TRANSAMERICA mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <transamericandirect.com> domain name is confusingly similar to Complainant’s mark as it contains the mark in its entirety, adds the letter “n” and adds the term “direct” along with the gTLD “.com.” These modifications do not substantially diminish the similarity between the domain name and Complainant’s mark. See Transamerica Corp. v. Zhichao Yang, FA 1748176, supra (finding <transamaericaemployeebenifits.com> confusingly similar to TRANSAMERICA). The Panel therefore finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Complainant contends that Respondent has no rights or legitimate interests in the <transamericandirect.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “yangzhichao / yangzhichao” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TRANSAMERICA mark. Panels may use such assertions as evidence of lack of rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1620789 (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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <transamericandirect.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the disputed domain name to resolve in a website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to commercially benefit from pay-per-click fees. Using a domain name to offer links to services in direct competition with a complainant generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1626253 (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.”). Complainant provides a screenshot of the website associated with the at-issue domain name, which displays links to services such as “insurance Transamerica” and “Trans America.” Accordingly, the Panel finds that Respondent uses the domain name to display hyperlinks related to Complainant’s business, failing to confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <transamericandirect.com> domain name in bad faith by intentionally attempting to divert, for commercial gain, Internet users to Respondent’s website 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 website. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As noted under the previous section, Complainant provides a screenshot of the website associated with the at-issue domain name, which displays links to services such as “insurance Transamerica” and “Trans America.” Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark through the offering of related hyperlinks in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent must have had actual knowledge of Complainant’s TRANSAMERICA mark at the time of registering the infringing domain name because Respondent’s domain name <transamericandirect.com> incorporates Complainant’s mark in its entirety. The Panel agrees with Complainant and finds that Respondent had knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <transamericandirect.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 27, 2018
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