Securian Financial Group, Inc. v. Zhichao Yang
Claim Number: FA2003001890115
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, United States. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <secutian.com> and <securiun.com>, registered with GoDaddy.com, LLC; Uniregistrar Corp.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2020; the Forum received payment on March 27, 2020.
On March 30, 2020, Uniregistrar Corp confirmed by e-mail to the Forum that the <securiun.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name; on March 31, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <secutian.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC and Uniregistrar Corp have verified that Respondent is bound by the GoDaddy.com, LLC and Uniregistrar Corp registration agreements 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 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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@secutian.com, postmaster@securiun.com. Also on April 2, 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 April 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Securian Financial Group, Inc., provides financial security to over 15 million people nationwide through insurance, investment, and retirement products. Complainant has rights in the SECURIAN mark based upon the registration with the United States Patent Office (“USPTO”) (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002).
2. Respondent’s <secutian.com> and <securiun.com> domain names[i] are confusingly similar to Complainant’s mark as each of the domain names is a common misspelling of the SECURIAN marks, whether replacing the letter “r” with a “t” or replacing the letter “a” with a “u.”
3. Respondent does not have rights or legitimate interests in the <secutian.com> and <securiun.com> domain names. Respondent is not licensed or authorized to use Complainant’s SECURIAN mark and is not commonly known by the domain names.
4. Additionally, Respondent is not using the <secutian.com> and <securiun.com> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to host pay-per-click advertisements.
5. Respondent registered and uses the domain names in bad faith. Respondent has engaged in a pattern of bad faith registration. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the resolving websites of the domain names which features click-through advertisements to third party websites that compete with Complainant.
6. Finally, Respondent had actual knowledge or constructive notice of Complainant’s SECURIAN mark prior to registering the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SECURIAN mark. Respondent’s domain names are confusingly similar to Complainant’s SECURIAN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the secutian.com> and <securiun.com> domain names and that Respondent registered and uses the domain names 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 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 mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to 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). Complainant provides copies of its’ USPTO registrations for the SECURIAN mark (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). Therefore, Complainant has rights in the SECURIAN mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <secutian.com> and <securiun.com> domain names are confusingly similar to the SECURIAN mark as the domain names are a misspelling of the mark. Misspelling of a complainant’s mark, either by adding or removing letters, may not sufficiently mitigate any confusing similarity between a domain name and mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). Each of the domain names are a common misspelling of the SECURIAN mark, whether replacing the letter “r” with a “t” or replacing the letter “a” with a “u.” The Panel agrees with Complainant and finds that the <secutian.com> and <securiun.com> domain names are confusingly similar to Complainant’s SECURIAN mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the secutian.com> and <securiun.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <secutian.com> and <securiun.com> domain names as Respondent is not authorized to use Complainant’s SECURIAN mark and is not commonly known by the domain names. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under 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.). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the domain name. 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 identifies the registrant as “Zhichao Yang.” Furthermore, there is no evidence in the record to suggest Respondent was ever authorized to use Complainant’s SECURIAN mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not been commonly known by the secutian.com> and <securiun.com> domain names.
Next, Complainant contends that the Respondent fails to use the <secutian.com> and <securiun.com> domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant alleges that Respondent uses the domain names to resolve to a parked webpage that contains links to third party websites which compete with Complainant’s business. Use of a domain name incorporating the mark of another to host a parked webpage that contains third party links to the competitors of the holder of the mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 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 as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). Complainant provides screenshots of the secutian.com> and <securiun.com> domain names’ resolving websites which show links that are competing with Complainant for traffic and then showing advertisements for profit related to Complainant’s competitors. Therefore, Respondent lacks rights or legitimate interests with respect to the secutian.com> and <securiun.com> domain names pursuant to Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and uses the <secutian.com> and <securiun.com> domain names in bad faith. Specifically, Complainant argues that Respondent has engaged in pattern of bad faith registration and use. Registering multiple domain names incorporating marks of other parties indicates bad faith registration and use per Policy ¶ 4(b)(ii). See Deutsche Telekom AG v. Dana Dudones, FA 1798440 (Forum Sep. 7, 2018) (“Here the same registrant registered the seven disputed domain names over a two-day period [. . .] Thus the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).”). In this proceeding it has been shown that Respondent registered multiple domain names that are misspellings of the SECURIAN mark. Therefore, the Panel holds that Respondent registered and uses the secutian.com> and <securiun.com> domain names in bad faith pursuant Policy ¶ 4(b)(ii).
In addition, Complainant claims Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the secutian.com> and <securiun.com> domain names which features click-through advertisements that redirect users to Complainant’s competitors. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links shows bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Complainant contends that Respondent’s typosquatting of the secutian.com> and <securiun.com> domain names is intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site to Respondent’s websites. On these websites Respondent hosts links to third-party websites that compete directly with Complainant’s business presumably to generate click-through advertisement revenue. Therefore, the Panel agrees that Respondent registered and uses the secutian.com> and <securiun.com> domain names in bad faith pursuant Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant argues Respondent must have had actual knowledge of Complainant’s SECURIAN mark. Actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant claims that due to Respondent’s use of Complainant’s famous SECURIAN mark and the fact that Respondent registered multiple domain names that are misspellings of the SECURIAN mark, Respondent had actual knowledge of Complainant’s SECURIAN mark. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the SECURIAN mark, and thus constitutes bad faith 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 <secutian.com> and <securiun.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 1, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page