Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2006001898856
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securianadvisors.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2020; the Forum received payment on June 3, 2020.
On June 4, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <securianadvisors.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@securianadvisors.com. Also on June 4, 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 June 29, 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the SECURIAN in connection with retirement, insurance, and investment products. Complainant has rights in the SECURIAN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,637,008, registered Oct. 15, 2002).
2. Respondent’s <securianadvisors.com>[i] domain name is identical or confusingly similar to Complainant’s mark as the domain name fully incorporates the SECURIAN mark and adds the generic term "advisors" and the ".com" generic top-level domain ("gTLD").
3. Respondent lacks rights or legitimate interests in the <securianadvisors.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
4. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent diverts Internet traffic away from Complainant to Respondent's webpage which is used to display advertising links.
5. Furthermore, Respondent offers to sell the domain name.
6. Respondent registered and uses the <securianadvisors.com> domain name in bad faith. Respondent makes a general offer to sell the domain name via an online marketplace.
7. Respondent engages in a pattern of registering domain names with the SECURIAN mark. Respondent uses the domain name to divert Internet traffic to Respondent's website containing commercial links.
8. Respondent registered the domain name with actual knowledge of Complainant's rights in the SECURIAN mark
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SECURIAN mark. Respondent’s domain name is confusingly similar to Complainant’s SECURIAN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <securianadvisors.com> domain name and that Respondent registered and uses the domain name 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 through its registration of the mark with the USPTO (e.g. Reg. No. 2,637,008, registered Oct. 15, 2002). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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.”). Accordingly, the Complainant has established rights in the SECURIAN mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <securianadvisors.com> domain name is identical or confusingly similar to Complainant’s mark as the domain name fully incorporates the SECURIAN mark and adds the generic term "advisors" and the ".com" generic top-level domain ("gTLD"). The addition of a generic term and a gTLD generally fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain). The Panel holds that the <securianadvisors.com> domain name is confusingly similar to the SECURIAN mark under 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 <securianadvisors.com> domain name. 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 (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 Respondent lacks rights or legitimate interests in the <securianadvisors.com> domain name as Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the SECURIAN mark. WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a 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)”). The WHOIS information for the <securianadvisors.com> domain name lists the registrant as “Carolina Rodrigues/Fundacion Comercio Electronico,” and there is no other evidence to suggest that Respondent was authorized to use the SECURIAN mark. Therefore, Respondent is not commonly known by the <securianadvisors.com> domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent fails to use the <securianadvisors.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent diverts Internet traffic away from Complainant to Respondent's webpage which is used to display advertising links. Use of a domain name incorporating the mark of another to divert internet users to a website displaying advertising links may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use). Complainant provides screenshots of the resolving webpage of the <securianadvisors.com> domain name which displays a parked webpage with pay-per-click links. The Panel therefore finds that Respondent is not using the <securianadvisors.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent registered and uses the <securianadvisors.com> domain name in bad faith as Respondent engages in a pattern of registering domain names with the SECURIAN mark. The registration of multiple infringing domain names by the same respondent can show bad faith registration and use per Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). Complainant points to the domain names <securianadvisor.com> and <securianclaims.com>, also registered by Respondent, as proof of a pattern of bad faith registrations. Thus, the Panel holds that Respondent registered and uses the <securianadvisors.com> domain name in bad faith per Policy ¶ 4(b)(ii).
Complainant also argues Respondent registered and uses the <securianadvisors.com> domain name in bad faith Respondent uses the domain name to divert Internet traffic to Respondent's website containing commercial links. Use of a domain name incorporating the mark of another to divert Internet users to a website containing hyperlinks can demonstrate bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Complainant provides screenshots of the resolving webpage of the <securianadvisors.com> domain name which displays a parked webpage with pay-per-click links. The Panel finds Respondent registered and uses the <securianadvisors.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant contends Respondent registered and uses the <securianadvisors.com> domain name in bad faith Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the SECURIAN mark. Actual knowledge of a complainant's rights in a mark at the time of registration of a domain name can show bad faith registration. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Complainant argues that Respondent's multiple infringing domain names demonstrate this actual knowledge. The Panel agrees and holds that Respondent had actual knowledge of the SECURIAN mark at the time of registration of the <securianadvisors.com> domain name, thus constituting bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <securianadvisors.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 5, 2020
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