Securian Financial Group, Inc. v. Chadwick Self / Himself
Claim Number: FA1810001813061
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Chadwick Self / Himself (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minnesotalifeinsurancecompany.com>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 22, 2018; the Forum received payment on October 22, 2018.
On October 23, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <minnesotalifeinsurancecompany.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@minnesotalifeinsurancecompany.com. Also on October 24, 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 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Securian Financial Group, Inc., is the parent organization of the Minnesota Life Insurance Company and provides financial services to over 13 million people nationwide through insurance, investment, and retirement products under the MINNESOTA LIFE mark. Complainant asserts rights in the MINNESOTA LIFE mark based upon its 2001 registration of the mark with the United States Patent and Trademark Office (“USPTO”), although the mark was in use as early as the year 1880. Respondent’s <minnesotalifeinsurancecompany.com> domain name, created on May 2, 2018, is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name plus the term “Insurance Company.”
Respondent lacks rights and legitimate interests in the <minnesotalifeinsurancecompany.com> domain name because Respondent is not commonly known by the domain name and is not authorized to use the MINNESOTA LIFE mark. Furthermore, as the disputed domain name resolves to a website with almost no content beyond a “Check back later” message, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent registered the disputed domain name for the purpose of selling it through a registry domain name marketplace.
Respondent registered and uses the <minnesotalifeinsurancecompany.com> domain name in bad faith because Respondent attempts to sell the disputed domain name through a registry marketplace. Furthermore, Respondent disrupts Complainant’s business and fails to actively use the webpage associate with the disputed domain name. Finally, Respondent knew of Complainant’s rights in the mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 asserts rights in the MINNESOTA LIFE trademark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Complainant provides a copy its USPTO registration (e.g., Reg. No. 2,462,139 registered Jun. 19, 2001). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <minnesotalifeinsurancecompany.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name plus an additional generic and/or descriptive term. The addition of a generic and/or descriptive term to a mark may not be sufficient to distinguish a domain name from that mark for the purposes of Policy ¶ 4(a)(i). See King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH mark.”). Here, Respondent includes the entire MINNESOTA LIFE mark in the disputed domain name along with the term “Insurance Company”, resulting in a domain that copies the entirety of the corporate name of Complainant’s predecessor, Minnesota Life Insurance Company.
Accordingly, in conducting a threshold Policy ¶ 4(a)(i) analysis the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s trademark.
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. 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 lacks rights and legitimate interests in the <minnesotalifeinsurancecompany.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the mark in any way. Where a response is lacking, WHOIS information may be used to identify respondent per Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (“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.”). Additionally, lack of authorization from complainant to use a mark may be further evidence that respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides the relevant WHOIS information which identifies the registrant of the disputed domain name as “Chadwick Self / Himself” and no information of the record indicates that Respondent is known otherwise or is authorized to use Complainant’s MINNESOTA LIFE mark. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant alleges that Respondent fails to use the <minnesotalifeinsurancecompany.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent offers to sell the disputed domain name on a registry marketplace webpage. Use of a domain name to sell it, where it is confusingly similar to a complainant’s trademark, may not be considered a bona fide offering of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides a screenshot of the registry marketplace page showing that Respondent is offering the disputed domain name for sale. Accordingly, in conducting a Policy ¶¶ 4(c)(i) or (iii) analysis the Panel concludes that Respondent uses the disputed domain name for the purposes of selling it.
Furthermore, Complainant contends that Respondent fails to actively use the disputed domain name. A respondent’s non-use of the disputed domain name may be evidence that respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a noncommercial or fair use per Policy ¶ 4(a)(ii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Complainant provides screenshots of the webpage associated with the disputed domain name which shows a message that states “<minnesotalifeinsurancecompany.com> is a totally awesome idea still being worked on. Check back later.” Consequently, the Panel finds that Respondent fails to actively use the <minnesotalifeinsurancecompany.com> domain name and that it has no rights or legitimate interests in the name under Policy ¶ 4(a)(ii).
Finally, although Complainant’s USPTO registration disclaims rights to the word “Life” apart from the full trademark and claims acquired distinctiveness for the word “Minnesota”, there is no evidence in this record that the disputed domain name uses the words of the trademark in a descriptive or generic manner. The domain name’s inclusion of the full corporate title of Complainant’s predecessor company reinforces this finding.
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the MINNESOTA LIFE mark prior to registering the disputed domain name. A respondent who had knowledge of complainant’s rights in the mark prior to registering the disputed domain name may be acting in bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant submits multiple news and journal articles regarding the success and notoriety of its business and the disputed domain copies the full corporate name of Complainant’s predecessor company. Consequently, in conducting a Policy ¶ 4(a)(iii) analysis the Panel finds that Respondent had actual knowledge of Complainant’s rights in the trademark prior to registering the disputed domain name.
Complainant argues that Respondent registered and uses the <minnesotalifeinsurancecompany.com> domain name in bad faith because Respondent offers to sell the disputed domain name on a registry marketplace webpage. Use of a domain name to sell it, where the name is confusingly similar to a complainant’s trademark, may be evidence of bad faith under Policy ¶ 4(b)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent’s only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)). As previously stated, Complainant provides screenshots of a registry webpage which shows that Respondent is offering the disputed domain name for sale. Although no price is stated, it may be presumed that such general offer of a domain which so closely copies the Complainant’s trademark and corporate name seeks a price that is in excess of Registrant’s out-of-pocket costs related to the domain name (i.e., that the Respondent is seeking to realize a financial profit from the sale of the name). Accordingly, the Panel concludes that Respondent’s offer to sell the disputed domain name constitutes bad faith under Policy ¶ 4(b)(i).
Next, Complainant contends that Respondent disrupts Complainant’s ability to use the disputed domain name. Use of a domain name to disrupt the business of a competitor may be evidence of bad faith under Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant argues that Respondent’s behavior prevents it from using the disputed domain name in connection with Complainant’s business. However, the language of Policy ¶ 4(b)(iii) requires addressing the question of whether the Complainant Is the Respondent’s competitor. As bad faith has been firmly found on other grounds, the Panel feels it is unnecessary to analyze this particular issue in the present case.
Finally, Complainant alleges that Respondent fails to actively use the disputed domain name. Inactively holding a domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) Complainant provides a screenshot of the webpage that resolves from the disputed domain name and this shows a message stating “<minnesotalifeinsurancecompany.com> is a totally awesome idea still being worked on. Check back later.” Accordingly, the Panel agrees that Respondent inactively holds the disputed domain name under Policy ¶ 4(a)(iii) and that such inactivity supports a finding of bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <minnesotalifeinsurancecompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 19, 2018
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