Sammons Financial Group, Inc. v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd
Claim Number: FA2009001912290
Complainant is Sammons Financial Group, Inc. (“Complainant”), represented by Sean Garrison of Bacal & Garrison Law Group, Arizona, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <midlandnationalinsurance.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2020; the Forum received payment on September 14, 2020.
On September 16, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <midlandnationalinsurance.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@midlandnationalinsurance.com. Also on September 17, 2020, 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 October 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant offers life insurance and annuity underwriting services through its wholly owned subsidiary Midland National Life Insurance Company.
Complainant has rights in the MIDLAND NATIONAL trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,818,658, registered on March 2, 2004). Respondent’s <midlandnationalinsurance.com> domain name is confusingly similar to Complainant’s trademark because it simply adds the generic term “insurance” to Complainant’s MIDLAND NATIONAL trademark.
Respondent does not have rights or legitimate interests in the <midlandnationalinsurance.com> domain name. Complainant has not authorized Respondent to use the MIDLAND NATIONAL trademark in any way. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host pay-per-click hyperlinks to services that directly compete with Complainant and offers the domain for sale at a price exceeding registration and maintenance costs.
Respondent registered and uses the <midlandnationalinsurance.com> domain name in bad faith. Respondent offers the domain name for sale for a substantial profit. Additionally, Respondent uses the disputed domain name to disrupt Complainant’s business and attract users for commercial gain by hosting click through links to competing services. Furthermore, Respondent had actual knowledge of Complainant’s rights in the MIDLAND NATIONAL trademark as shown by Respondent’s familiarity with Complainant’s field of business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registration:
No. 2,818,658 MIDLAND NATIONAL (word), registered March 2, 2004 for services in class 36.
The disputed domain name was registered on October 16, 2017.
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”).
The Complainant asserts rights in the MIDLAND NATIONAL trademark based on registration with the USPTO , namely Reg. No. 2,818,658, registered on March 2, 2004). Registration of a trademark with the USPTO is a valid showing of rights in a trademark per Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Since Complainant provides evidence of registration of the MIDLAND NATIONAL trademark with the USPTO, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <midlandnationalinsurance.com> domain name is confusingly similar to Complainant’s trademark because it simply adds the generic term “insurance” to Complainant’s MIDLAND NATIONAL trademark. It may be noted that the domain name also appends the “.com” generic top-level domain to the mark. The addition of a generic or descriptive term and a gTLD to a mark does not negate confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Complainant notes that the term “insurance” refers to services that Complainant offers. Thus, the Panel find that the disputed domain name is confusingly similar to the MIDLAND NATIONAL trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <midlandnationalinsurance.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the MIDLAND NATIONAL trademark in any way.
When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”).
Additionally, lack of authorization to use a trademark constitutes further showing that a respondent lacks rights in a trademark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information lists “Domain Admin/Domain Privacy Guard Sociedad Anonima Ltd” as the registrant and no information suggests that Complainant has authorized Respondent to use the MIDLAND NATIONAL trademark in any way.
Thus, the Panel find that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use; rather, Respondent uses the disputed domain name to host pay-per-click hyperlinks to competing services. The use of a disputed domain name to host competing hyperlinks does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Complainant provides screenshots showing the resolving webpage of the disputed domain name, which features hyperlinks to insurance services that directly compete with Complainant. Thus, the Panel agree with Complainant and find that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also argues that Respondent lacks rights and legitimate interests in the <midlandnationalinsurance.com> domain name because Respondent offers the domain for sale at a price exceeding registration and maintenance costs. Offering to sell a domain name for more than out-of-pocket costs may suggest that a Respondent does not have rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Complainant provides evidence that Respondent offers the domain name for sale at a price of $3,339.00. Thus, the Panel again agree with Complainant and find that Respondent does not have rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii).
The Complainant argues that Respondent registered and uses the <midlandnationalinsurance.com> domain name in bad faith because Respondent offers the domain for sale at an excessive price. Under Policy ¶ 4(b)(i), a general offer to sell a domain name, especially when it is offered for an excess of out-of-pocket costs, may indicate bad faith. 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).”); see also Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). As noted above, Complainant provides evidence showing that Respondent offers the domain names for sale at a price of $3,339.00. Therefore, the Panel find bad faith pursuant to Policy ¶ 4(b)(i).
Additionally, Complainant argues that Respondent registered the <midlandnationalinsurance.com> domain name in bad faith because Respondent uses the disputed domain name to disrupt Complainant’s business and attract users for commercial gain by hosting click through links to competing services. Under Policy ¶¶ 4(b)(iii) and (iv), the use of a disputed domain name to host pay-per-click links to third-party websites that offer competing services is evidence of bad faith registration and use. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). From the screenshots, provided by the Complainant, of the resolving webpage of the disputed domain, it is clear that there are click through links to competing insurance services from which Respondent presumably receives some commercial gain. Therefore, the Panel find bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Furthermore, Complainant contends that Respondent had actual knowledge of Complainants rights in the MIDLAND NATIONAL trademark. Per Policy ¶ 4(a)(iii), actual knowledge may be found based on the name used for the disputed domain and the use made of it. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). As stated above, Complainant notes that the added term “insurance” directly refers to the services associated with Complainant’s MIDLAND NATIONAL trademark and thus indicates that Respondent must have had actual knowledge of Complainant’s rights in the mark. The Panel agrees and find that this added descriptive term strongly indicates that Respondent had actual knowledge of Complainant’s rights in the MIDLAND NATIONAL trademark and thus registered and uses the disputed domain name in bad faith pursuant to 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 <midlandnationalinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 21, 2020
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