Transamerica Corporation v. Justin Gonzalez / Trans America
Claim Number: FA1804001780545
Complainant is Transamerica Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Justin Gonzalez / Trans America (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thetransamerica.com>, registered with 1&1 Internet SE.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2018; the Forum received payment on April 5, 2018.
On April 6, 2018, 1&1 Internet SE confirmed by e-mail to the Forum that the <thetransamerica.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 April 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@thetransamerica.com. Also on April 9, 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 May 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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, Transamerica Corporation, is a holding company for a group of subsidiaries engaged in the sale of life insurance, investment planning, and retirement services. Complainant owns numerous registrations for its TRANSAMERICA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 718,358 registered Jul. 11, 1961). Respondent’s <thetransamerica.com> domain name is confusingly similar to Complainant’s mark as the domain name adds the term “the” and the “.com” generic top-level domain (“gTLD”) to the fully-incorporated TRANSAMERICA mark.
Respondent has no rights or legitimate interests in the <thetransamerica.com> domain name. Further Respondent is not commonly known by the domain name and Complainant has never authorized Respondent to use Complainant’s mark. Respondent does not use the domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent’s resolving website displays links to financial services offerings in direct competition with those offered by Complainant.
Respondent registered and uses the disputed domain name in bad faith, as Respondent is presumably commercially benefiting from the misleading domain name by receiving click-through fees from the links on the resolving website. Respondent’s use of a privacy service is further evidence of bad faith. Lastly, Respondent had actual knowledge of Complainant’s mark and rights prior to registering the <thetransamerica.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 owns numerous registrations for its TRANSAMERICA mark with the USPTO (e.g., Reg. No. 718,358 registered Jul. 11, 1961). Respondent’s <thetransamerica.com> domain name is confusingly similar to Complainant’s mark.
Respondent, Justin Gonzalez / Trans America, registered <thetransamerica.com> on March 2, 2018.
Respondent has no rights or legitimate interests in the <thetransamerica.com> domain name. Respondent’s resolving website displays links to financial services offerings in direct competition with those offered by Complainant.
Respondent registered and uses the disputed domain name 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 (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.”).
Complainant has rights to its TRANSAMERICA mark under Policy ¶ 4(a)(i) through numerous registrations with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <thetransamerica.com> domain name is confusingly similar to its mark, as the domain name adds the term “the” and incorporates the entire TRANSAMERICA mark.
Respondent has no rights or legitimate interests in the <thetransamerica.com> domain name. Respondent is not commonly known by the domain name. A respondent can be found to not be commonly known by a domain name based on the WHOIS information of record, or lack of authorization from the complainant to use its mark. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Google Inc. v. S S / Google International, FA 1625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Here, Complainant did not authorize Respondent to use its mark, and the WHOIS information of record lists the registrant as “Justin Gonzalez / Trans America.”
Respondent does not use the <thetransamerica.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a website which diverts consumers to competitive offerings. Such use of a disputed domain name is not in accord with Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA 1629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). Here, Respondent’s domain name resolves to a website that contains links to financial services offerings in direct competition with those offered by Complainant.
Respondent registered and used the <thetransamerica.com> domain name in bad faith under Policy ¶ 4(b)(iv) as the domain name is used to confuse Internet users for commercial gain. See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA 1598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”).
Respondent had knowledge of Complainant’s rights to its TRANSAMERICA mark prior to registering the <thetransamerica.com> domain name. Therefore, Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thetransamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 14, 2018
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