Securian Financial Group, Inc. v. Steven Johnson
Claim Number: FA1810001811141
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Steven Johnson (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <securian.us> and <securiantrust.us>, registered with Tucows Domains 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on October 10, 2018; the Forum received payment on October 10, 2018.
On October 11, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <securian.us> and <securiantrust.us> domain names (the “Domain Names”) are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 5, 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@securian.us, postmaster@securiantrust.us. Also on October 15, 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 November 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 usTLD 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 usTLD Policy, usTLD 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
Complainant offers retirement, insurance, and investment products and services in connection with the SECURIAN mark. It has rights in the SECURIAN mark on account of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). Respondent’s Domain Names are confusingly similar to Complainant’s SECURIAN mark as they incorporate the mark in its entirety, add a “.us” country code top-level domain (“ccTLD”), and one of them adds the generic or descriptive term “trust.”
Respondent has no rights or legitimate interests in the Domain Names. Complainant has not authorized or permitted him to use its SECURIAN mark, and he is not commonly known by the Domain Names. Additionally, Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the web sites resolving from the Domain Names are pay-per-click sites that divert Complainant’s web traffic to search directories containing links to Complainant’s competitors.
Respondent registered and uses the Domain Names in bad faith. He had actual knowledge of Complainant’s rights in the SECURIAN mark prior to registering his Domain Names. Further, by using these identical or confusingly similar Domain Names as he is, he attempts for commercial gain to attract Internet users to his web sites by creating confusion as to the source, sponsorship, affiliation or endorsement of those sites, and disrupts the business of Complainant.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that Complainant must prove each of the following three elements to establish its case for an order cancelling or transferring the domain name:
(1) The domain name is identical or confusingly similar to a trademark or service mark in which the 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the matters at issue in this proceeding.
Complainant registered its SECURIAN mark with the USPTO (Reg. No. 2,637,008) on October 15, 2002. See, Complaint Exhibit 1B. Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s Domain Names incorporate Complainant’s mark in its entirety. The <securian.us> Domain Name merely adds a “.us” ccTLD and the <securiantrust.us> Domain Name adds the generic or descriptive term “trust” and a “.us” ccTLD to the SECURIAN mark. These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Kurk Wasserman Consulting, L.L.C. v. ming li, FA 1782613 (Forum May 29, 2018) (“Respondent’s <lilashserum.us> domain name is confusingly similar to the LILASH mark as Respondent merely adds the descriptive term “serum” and the “.us” ccTLD to the mark.”), Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis), CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”).
For the reasons discussed above, the Panel finds that the Domain Names are identical or confusingly similar to the SECURIAN mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) Respondent (as an individual, business or other organization) have been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iv) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) he is not commonly known by the Domain Names, (ii) he does not have permission from Complainant to use the SECURIAN mark, and (iii) he is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to offer and sell goods which compete directly with goods and services sold by the Complainant, as Respondent is doing, cannot constitute a bona fide offering of goods and services. These allegations are supported by competent evidence.
According to the WHOIS reports attached to the Complaint as Exhibits 6 and 8, the registrant is “Steven Johnson.” This name bears no resemblance to either Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that it has never licensed or authorized Respondent to use its SECURIAN mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
There is nothing in the available evidence to indicate that Respondent owns or has a beneficial interest in a trademark or service mark a mark identical to either Domain Name which would serve to satisfy Policy ¶ 4(c)(i). In Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002), the panel held that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i).
Complaint Exhibits 9 and 10 are screenshots of the web sites resolving from the Domain Names. These sites display only pay-per-click links, some of which send users to the websites of Complainant’s competitors. See, Complaint Exhibits 11 and 12. Use of a domain name to link to a complainant’s competitors does not qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 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 where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) Circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
Respondent’s use of the Domain Names as demonstrated by the evidence discussed above in connection with the rights or legitimate interests analysis also demonstrates his bad faith. It is clear from that evidence that Respondent is using the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with Complainant's SECURIAN mark as to the source, sponsorship, affiliation, or endorsement of Complainant. Respondent is obtaining commercial gain from its use of the Domain Names and the resolving web sites. When a visitor to the web site clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the web site owners get from being linked to its web site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, supra, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-through fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Id. The respondent’s website offered pay-per-click links to hunting equipment and related items. Id. The Panel found that such listing of links was provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from the Domain Names results from pay-per-click links and by itself constitutes commercial gain. Furthermore, and similar to the facts in AllianceBernstein and Brownells, Respondent’s use of the Domain Names and his web sites results in a commercial gain for others by forwarding visitors to third parties. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for himself and the various website owners who are forwarded from the links at the Domain Names. There is no other rational explanation for Respondent having registered and maintained the Domain Names and resolving them to pay-per-click sites with commercial links. Respondent’s use of the Domain Names is commercial because the various companies forwarded from the websites benefit from the subsequent interest and purchases of those who visit the sites. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Using a Domain Name that trades upon the goodwill of a complainant for commercial gain is manifest evidence of bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Finally, Complainant has a significant presence in the retirement, insurance and investment products industry. It is also significant that Complainant and Respondent reside in the same metropolitan area, Minneapolis, Minnesota. From this and from the close similarity between Complainant’s mark and Respondent’s Domain Names, it is obvious that Respondent had actual knowledge of Complainant’s SECURIAN mark on October 28 and 29, 2005, when he registered the Domain Names. See, Complaint Exhibits 6 and 8 for registration dates. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <securian.us> and <securiantrust.us> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
November 12, 2018
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