Transamerica Corporation v. yangzhichao
Claim Number: FA1605001674974
Complainant is Transamerica Corporation (“Complainant”), represented by Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, Washington D.C., USA. Respondent is yangzhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transamericaanuities.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2016; the Forum received payment on May 13, 2016.
On May 15, 2016, 22NET, INC. confirmed by e-mail to the Forum that the <transamericaanuities.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 May 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2016 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@transamericaanuities.com. Also on May 16, 2016, 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 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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.
Complainant:
Complainant has rights in the TRANSAMERICA mark based on its registration of the mark with trademark agencies throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,511,811, filed November 21, 2012, registered April 8, 2014). Respondent’s <transamericaanuities.com> domain is confusingly similar to the TRANSAMERICA mark as it incorporates the TRANSAMERICA mark entirely and merely adds a misspelling of the term “annuities.”
Respondent has no rights or legitimate interests in the domain. Respondent has not been commonly known by the domain name nor has Respondent been affiliated with or authorized by Complainant to use the TRANSAMERICA name. Respondent’s use of the domain to host hyperlinks to third-party products and services that are in direct competition with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s typosquatting behavior and its use of the domain to host competing pay-per-click advertisements demonstrates bad faith. Further, the international fame associated with the TRANSAMERICA mark leads to the conclusion that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration.
Respondent:
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <transamericaanuities.com> domain name.
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.”).
LANGUAGE OF THE PROCEEDING
Complainant requests that this administrative proceeding be English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the English language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). The Panel has also considered the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive uncontested evidence has been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding will be in English.
Complainant contends that its rights in the TRANSAMERICA mark stem from the registration of the mark with trademark agencies throughout the world, including the USPTO (e.g., Reg. No. 4,511,811, filed November 21, 2012, registered April 8, 2014). Panels consistently hold that the registration of a mark with the USPTO is sufficient to establish a registrant’s rights in a mark back to the application’s filing date, even when Respondent lives or operates in a different country. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel therefore finds that Complainant’s registration with the USPTO is sufficient to establish its rights in the TRANSAMERICA mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <transamericaanuities.com> domain is confusingly similar to the TRANSAMERICA mark. Respondent’s domain differs from the mark through the addition of the generic top-level domain “.com,” and the term “anuities,” a misspelling of the generic term “annuities.” Panels routinely find that the presence of the gTLD “.com” is not relevant under a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Panels have also held that the addition of a generic term does not serve to adequately distinguish a respondent’s domain from a complainant’s mark. 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 the complainant combined with a generic word or term). The Panel therefore finds that Respondent’s domain is confusingly similar to the TRANSAMERICA mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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.”).
Complainant argues that Respondent has not been commonly known by the domain name nor has Respondent been affiliated with or authorized by Complainant to use the TRANSAMERICA name. The WHOIS information associated with the domain identifies the Respondent as “yangzhichao,” which does not appear to resemble the disputed domain. Panels have held that a respondent is not commonly known by a disputed domain based on WHOIS information and other available evidence. 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 Panel therefore concludes that Respondent is not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the domain to display pay-per-click hyperlinks to products and services that are in direct competition with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website with various links with titles such as “How to Sell Annuities,” “Annuity Advisor,” and “Annuity Company.” The link titled “Annuity Company” leads to related links to websites including <www.Fidelity.com>, which is the website of a direct competitor of Complainant. Panels have held that a respondent’s use of a domain to display links to competing products and/or services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s use of the domain constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent’s use of the disputed domain to host competing hyperlinks is evidence of bad faith under Policy ¶ 4(b)(iv). Complainant asserts that Respondent’s domain resolves to a website that displays links related to annuities that, when clicked, display links to Complainant’s competitors. Panels have found bad faith on the part of a respondent where the disputed domain hosted links to competitors of a complainant. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Therefore, the Panel finds that Respondent’s <transamericaanuities.com> domain is being used in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent has engaged in the tactic of typosquatting. Respondent’s domain does not contain a misspelling of Complainant’s TRANSAMERICA mark; rather, the domain appends a misspelled version of the generic term “annuities” to the mark. Panels have historically defined typosquatting as a respondent’s misspelling of a complainant’s mark in a domain. See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). The Panel finds that Respondent’s misspelling of the term “annuities” is not a misspelling of Complainant’s mark and therefore does not constitute typosquatting.
Complainant asserts that in light of the international fame and notoriety associated with Complainant's TRANSAMERICA mark, it is inconceivable that Respondent could have registered the <transamericaanuities.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved this element.
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 <transamericaanuities.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 14, 2016
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