Securian Financial Group, Inc. v. Zhichao Yang
Claim Number: FA2004001893148
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., United States. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securoan.com>, registered with NameSilo, LLC.
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 April 22, 2020; the Forum received payment on April 22, 2020.
On April 22, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <securoan.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 April 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@securoan.com. Also on April 23, 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 May 18, 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 provides financial security to customers through insurance, investment, and retirement products. Complainant has rights in the SECURIAN trademark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). Respondent’s <securoan.com> domain name is confusingly similar to Complainant’s trademark because it is a common misspelling created by replacing the letter “i” with an “o,” and adding a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <securoan.com> domain name. Respondent is not licensed or authorized to use Complainant’s SECURIAN trademark and is not commonly known by the disputed domain name. 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 divert internet traffic by hosting third-party advertising links.
Respondent registered and uses the <securoan.com> domain name in bad faith. Respondent is disrupting Complainant’s business and attempting to attract Internet users to its competing website for commercial gain. Additionally, Respondent’s domain name registration constitutes typosquatting. Further, Respondent had actual knowledge of Complainant’s rights in the SECURIAN trademark when the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,637,006 SECURIAN FINANCIAL SERVICES (word), registered October 15, 2002 for services in class 36;
No. 2,637,008 (word), registered October 15, 2002 for services in class 36;
No. 2,637,004 SECURIAN (fig), registered October 15, 2002 for services in class 36; and
No. 4,831,953 SECURIAN (word), registered October 13, 2015 for services in class 35.
The disputed domain name was registered on October 1, 2019.
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”).
Complainant has rights in the SECURIAN trademark based upon the registration with the USPTO. Registration of a trademark with the USPTO is a valid showing of rights in a trademark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration of the SECURIAN trademark with the USPTO (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). Thus, the Panel find that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <securoan.com> domain name is confusingly similar to Complainant’s trademark because it is a common misspelling created by replacing the letter “i” with an “o,” and adding a gTLD. Misspelling a trademark by adding, removing, or transposing letters and adding a gTLD may not negate confusing similarity between a mark and a disputed domain name per Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). The Examiner notes that the letters "i" and "o" cannot in themselves be visually confused with each other, however, the fact that they are placed side by side on a traditional keyboard makes it rather common and likely that a traditional surfer can make a mistake and pushing the wrong button.
Thus, the Panel agree with the Complainant and find that the disputed domain name is confusingly similar to the Complainant’s SECURIAN 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 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.”); see also 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).
Complainant argues that Respondent does not have rights or legitimate interests in the <securoan.com> domain name since Respondent is not licensed or authorized to use Complainant’s SECURIAN trademark and is not commonly known by the disputed domain name. 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 H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a trademark constitutes further showing that a respondent lacks rights in a trademark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “Zhichao Yang” as the registrant and no information suggest that Complainant has licensed or authorized Respondent to use the SECURIAN trademark. Thus, the Panel find that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use since Respondent simply uses the disputed domain name to divert internet traffic by hosting third-party advertising links. Use of a disputed domain name to host hyperlinks is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See 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 provides a screenshots of the resolving webpage containing commercial advertising links to competitive products and services. Therefore, the Panel find that Respondent is not using the disputed 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 argues that Respondent registered and uses the <securoan.com> domain name in bad faith because Respondent uses hyperlinks to competing websites to disrupt Complainant’s business and attract Internet users to its website for commercial gain. Use of a disputed domain name to display pay-per-click hyperlinks relating to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also 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). As previously mentioned, Complainant provides screenshots of the links on the resolving webpage and claims that those links directly compete with Complainant and its business. Therefore, the Panel find bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also argues that Respondent’s domain name registration constitutes typosquatting. Typosquatting may act as independent evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant argues that Respondent’s misspelling of the SECURIAN trademark for use in the <securoan.com> domain name constitutes typosquatting. As noted above, the misspelling in this case seems to have been deliberately created by the Respondent to use the fact that the two letters "i" and "o" are neighbors on the keyboard, using the obvious risk of misspelling when searching for the Complainant’s trademark. Therefore, the Panel find that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the SECURIAN trademark when the disputed domain name was registered. Actual knowledge can be found by the entirety of circumstances surrounding domain name registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Complainant first notes that the SECURIAN trademark is a term that only relates to Complainant’s goods and services. Additionally, Complainant notes that Respondent has displayed a pattern of registering typo versions of domain names relating to the SECURIAN mark. Complainant provides WHOIS reports for two other domain names relating to Complainant’s mark. Based on these facts, he Panel agrees that actual knowledge is evident, and the Panel find bad faith registration and use under 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 <securoan.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 21, 2020
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