Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico / Zhichao Yang
Claim Number: FA2008001910083
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico / Zhichao Yang (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <securiandadvisor.com> and <securiansevice.com> (‘the Domain Names’) registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2020; the Forum received payment on August 26, 2020.
On August 27, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd.; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <securiandadvisor.com> and <securiansevice.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd.; GoDaddy.com, LLC and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd.; GoDaddy.com, LLC has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd.; GoDaddy.com, 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 September 2, 2020, the Forum served the Complaint and all Annexes, including a Chinese Language Written Notice of the Complaint, setting a deadline of September 22, 2020 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@securiandadvisor.com, postmaster@securiansevice.com. Also on September 2, 2020, the Chinese Language 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 September 28, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the owner of the Mark SECURIAN, registered, inter alia, for insurance services in the USA with first use recorded as 2001.
The Domain Names registered in 2020 are confusingly similar to the Complainant’s trade mark. In the case of <securiandadvisor.com> adding the letter ‘d’ and generic term advisor and <securiansevice.com> adding a misspelling of the generic word service and in both cases adding the gTLD .com.
The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorized by the Complainant.
The Domain Names have been used for competing pay per click links. The Respondent has been involved in a pattern of bad faith activity in registering Domain Names including the Complainant’s mark including another UDRP case. The Domain Names are typosquatting registrations, designed to disrupt the business of the Complainant and confusing Internet users for commercial gain. The <securiansevice.com> domain name has been offered for sale generally.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the Mark SECURIAN, registered, inter alia, for insurance services in the USA with first use recorded as 2001.
The Domain Names registered in 2020 have been used for pay per click links. The <securiansevice.com> domain name has been offered for sale generally. The Respondent has been involved in a pattern of activity of registering domain names containing the Complainant’s mark.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant argues that the Domain Names utilize a typographical error of an added word, both use the same name server, both resolve to an identical website, both were registered within four days of each other and Respondent’s actions in a previous case are similar to this case demonstrating that the Domain Names are controlled by a single Respondent. The Respondent has not replied to refute this. The panel finds that the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases.
PRELIMINARY ISSUE: LANGUAGE OF THE COMPLAINT
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The Complainant's SECURIAN mark is registered, inter alia, in the USA with first use for insurance services recorded as 2001.
The <securiandadvisor.com> domain name adds only the single letter ‘d’, the generic term ‘advisor’ and the gTLD “.com” to the Complainant’s mark while the <securiansevice.com> domain name adds only the misspelling of the word service ‘sevice’ and the gTLD “.com” to the Complainant’s mark.
Panels have found that adding one letter to a registered mark in a domain name does not prevent confusing similarity between that domain name and that mark. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding that twitcch.tv is confusingly similar to the TWITCH TV trade mark because the domain name consisted of a common misspelling of the mark by merely adding the letter ‘c’). According adding the single letter ‘d’ does not prevent confusing similarity between a domain name and the Complainant’s mark.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic terms ‘advisor’ or a misspelling of the generic term service ‘sevice’ to the Complainant's mark does not prevent confusing similarity between the Domain Names from the Complainant's trade mark pursuant to the Policy.
The gTLD “.com” does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s SECURIAN registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Respondent has used the Domain Names for links offering competing services not connected with the Complainant. It does not make it clear that there is no commercial connection with the Complainant. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
The <securiansevice.com> domain name has been offered for sale generally for a sum in excess of registration costs which without justification suggests a lack of rights or legitimate interests. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
The fact that the Respondent has been involved in another UDRP case where is registered a domain name including the Complainant’s mark and was the subject of another adverse decision under the Policy suggests a lack of rights or legitimate interests.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
The Respondent has not answered this Complaint or explained why they should be allowed to register domain names including the Complainant’s mark. The Complainant’s mark has a reputation for insurance services and is distinctive and the existence of another UDRP case involving the Respondent and the Complainant’s mark shows the Respondent had actual knowledge of the Complainant, its marks, business and services.
Use for competing pay per click links indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and also indicates actual knowledge of the Complainant and its business. See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature third-party hyperlinks constituted bad faith).
The Respondent has offered one of the Domain Names for sale generally. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”).
The Panel also notes the adverse decision against the Respondent in another case involving the Complainant’s mark indicating a pattern of activity. See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA1405001558045 (Forum July 10, 2014) (finding that the respondent’s registration of multiple domain names in the instant proceeding and prior adverse UDRP history was evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii)).
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under ¶ 4(b)(i)-(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <securiandadvisor.com> and <securiansevice.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: September 28, 2020
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