Securian Financial Group, Inc. v. Domain Administrator / DVLPMNT MARKETING, INC.
Claim Number: FA1712001762293
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Domain Administrator / DVLPMNT MARKETING, INC. (“Respondent”), St. Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securianretirementservices.com>, registered with DNC Holdings, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2017; the Forum received payment on December 11, 2017.
On December 12, 2017, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <securianretirementservices.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 December 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 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@securianretirementservices.com. Also on December 13, 2017, 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 January 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 is a financial investment corporation that offers retirement, insurance, and investment products and services. Complainant has rights in the SECURIAN mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). See Compl. Ex. 1B. Respondent’s <securianretirementservices.com> domain name is confusingly similar to the SECURIAN mark because the disputed domain name adds generic terms “retirement,” “services,” and a “.com” generic top level domain (“gTLD”) to Complainant’s wholly incorporated mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized or licensed to use the SECURIAN mark and upon information and belief is not commonly known by the disputed domain name. Respondent is not using its domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent’s <securianretirementservices.com> domain name redirects users via pay-per-click advertising links to Complainant’s competitors. Additionally, Respondent’s <securianretirementservices.com> domain name is listed for sale on Uniregistry’s online domain marketplace.
Respondent registered and used the <securianretirementservices.com> domain name in bad faith. Respondent has listed the disputed domain name for sale. Respondent’s domain name contains pay-per-click hyperlinks that compete with Complainant and Complainant’s business. Respondent intentionally attracts users to its website to the SECURIAN mark, further evidence of bad faith. Respondent had actual knowledge of Complainant’s mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <securianretirementservices.com>domain name.
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 claims rights in the SECURIAN mark based upon its registration with the USPTO. USPTO registration of a mark can be sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). In this case, Complainant has supplied copies of its USPTO trademark registrations for the SECURIAN mark (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the SECURIAN mark per Policy ¶ 4(a)(i).
Next,
Complainant asserts Respondent’s <securianretirementservices.com>
domain name is confusingly
similar to Complainant’s SECURIAN mark. Complainant argues Respondent’s
additions of generic terms and a gTLD to the mark does not change the fact that
the disputed domain name conveys the same commercial impression as
Complainant’s SECURIAN mark. Generally, adding generic terms and a gTLD to a
mark are insufficient changes to defeat a test for confusing similarity
pursuant to Policy ¶ 4(a)(i). See 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.). The
Panel finds that Respondent’s <securianretirementservices.com>
domain name is confusingly
similar to Complainant’s SECURIAN mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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); see also 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.”).
Complainant alleges Respondent has no rights or legitimate interests in the <securianretirementservices.com> domain name. Complainant argues Respondent is not permitted or licensed to use the SECURIAN mark and is not commonly known by the disputed domain name. Typically, when a respondent is not authorized to use a complainant’s trademark, the respondent can be found to lack rights or legitimate interests in the at-issue domain name from an analysis of the WHOIS information of record per Policy ¶ 4(c)(ii). 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 WHOIS information for the <securianretirementservices.com> domain name identifies the registrant as “Domain Administrator.” Therefore, the Panel finds that Respondent is not commonly known by the <securianretirementservices.com> domain name per Policy ¶ 4(c)(ii).
Next, Complainant asserts Respondent lacks rights or legitimate interests in the <securianretirementservices.com> domain name because it does not use the domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues Respondent’s disputed domain name tricks consumers into clicking on pay-per-click advertisement links that redirect users to Complainant’s competitors. Generally, using a disputed domain name to redirect users via pay-per-click advertising links to competitors is not a use which amounts to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant asserts Respondent’s <securianretirementservices.com> domain name contains a list of hyperlinks and advertisements that purport to offer retirement services and financial advice. The Panel finds that Respondent failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Furthermore, Complainant contends Respondent attempts to sell the <securianretirementservices.com> domain name on an online domain market and this demonstrates Respondent’s lack of rights or legitimate interests. General offers to sell an at-issue domain name may indicate a respondent’s lack of rights or legitimate interests in the domain name. 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). Complainant argues Respondent listed the disputed domain name on Uniregistry’s online market. The Panel agrees with Complainant and finds Respondent’s attempts to sell the <securianretirementservices.com> domain name demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant asserts Respondent registered and used the <securianretirementservices.com> domain name in bad faith by attempting to sell the disputed domain name. General offers by a respondent to sell a disputed domain name may support a finding of bad faith registration and use. Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant asserts Respondent listed the disputed domain name on Uniregistry’s online market and users may submit their personal information in order to be contacted about purchasing the domain name. Therefore, the Panel finds that Respondent’s attempt to sell the disputed domain name constitutes bad faith registration and use per Policy ¶ 4(b)(i).
Next, Complainant asserts Respondent uses the <securianretirementservices.com> domain name to disrupt Complainant’s business by diverting Internet users otherwise seeking Complainant to Respondent’s own resolving website which displays advertisements for Complainant’s competitors. Use of a disputed domain name by a respondent to resolve to a page hosting links to competitors of a complainant represents bad faith registration and use per Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Complainant asserts Respondent’s disputed domain name contains a list of hyperlinks and advertisements that purport to offer retirement services and insurance plans. The Panel agrees with Complainant and finds Respondent disrupts Complainant’s business—bad faith per Policy ¶ 4(b)(iii).
Next, Complainant asserts Respondent uses the <securianretirementservices.com> domain name to intentionally attract for commercial gain Internet users to Respondent’s resolving website for commercial gain via the creation of a likelihood of confusion with Complainant and Complainant’s SECURIAN mark through pay-per-click advertisements to Complainant’s competitors. Use of a disputed domain name to divert Internet users for a respondent’s commercial gain does not evince a holding that said respondent registered and used the at-issue domain name in good faith per Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Complainant asserts that Respondent’s <securianretirementservices.com> domain name contains a list of hyperlinks and advertisements that purport to offer services that compete with Complainant. The Panel agrees with Complainant and finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had actual knowledge of Complainant's rights in the SECURIAN mark when it registered and subsequently used the <securianretirementservices.com> domain name. Generally, a finding of actual knowledge is sufficient to show bad faith registration and use per Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Complainant argues that Respondent's website purports to offer exactly the same insurance and retirement services Complainant offers and this indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s SECURIAN mark when it registered and used the disputed domain name—bad faith per Policy ¶ 4(a)(iii)
Complainant has proved this element.
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 <securianretirementservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 12, 2018
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