Securian Financial Group, Inc. v. Yang Zhi Chao
Claim Number: FA2103001935104
Complainant is Securian Financial Group, Inc. ("Complainant"), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Yang Zhi Chao ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lifebeenfits.com>, <lifebeneefits.com>, <lifbeenefits.com>, <lifebenefist.com>, <lifebeneficts.com>, <lifebenefites.com>, <lifebeneflts.com>, <liefbenefits.com>, <iifebenefits.com>, and <lifebneefits.com>, registered with DNSPod, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2021; the Forum received payment on March 2, 2021.
On March 2, 2021, DNSPod, Inc. confirmed by email to the Forum that the <lifebeenfits.com>, <lifebeneefits.com>, <lifbeenefits.com>, <lifebenefist.com>, <lifebeneficts.com>, <lifebenefites.com>, <lifebeneflts.com>, <liefbenefits.com>, <iifebenefits.com>, and <lifebneefits.com> domain names are registered with DNSPod, Inc. and that Respondent is the current registrant of the names. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, 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 March 4, 2021, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 24, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@lifebeenfits.com, postmaster@lifebeneefits.com, postmaster@lifbeenefits.com, postmaster@lifebenefist.com, postmaster@lifebeneficts.com, postmaster@lifebenefites.com, postmaster@lifebeneflts.com, postmaster@liefbenefits.com, postmaster@iifebenefits.com, postmaster@lifebneefits.com. Also on March 4, 2021, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 March 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant provides insurance, investment, and retirement products and services to more than 15 million people, and has $64 billion of assets under management. Complainant has used LIFEBENEFITS and the domain name <lifebenefits.com> in connection with self-service insurance and financial services since 1999. Complainant asserts that it owns trademark rights in LIFEBENEFITS, LIFEBENEFITSEXTRA, and LIFEBENEFITS.COM arising from extensive use and promotion. Complainant provides various evidence in support of that assertion, including articles published in the trade press that refer to Complainant's LIFEBENEFITS services; examples of Complainant's own marketing materials; archived screenshots of Complainant's LIFEBENEFITS website from 2006, 2009, 2012, 2015, 2015, 2018; and a screenshot of the LIFEBENEFITS website as it currently appears. An article from 2004 states that about 100 employer clients and 800,000 of their employees have access to Complainant's LIFEBENEFITS services.
Respondent registered the disputed domain names <lifebeenfits.com>, <lifebeneefits.com>, <lifbeenefits.com>, <lifebenefist.com>, <lifebeneficts.com>, <lifebenefites.com>, <lifebeneflts.com>, <liefbenefits.com>, <iifebenefits.com>, and <lifebneefits.com> in October 2020. The domain names are being used for websites that consist of pay-per-click links, including in some instances links to competing insurance or financial services. Complainant states that it has not authorized Respondent to use the LIFEBENEFITS mark and that Respondent is not commonly known by the disputed domain names.
Complainant contends on the above grounds that each of the disputed domain names is confusingly similar to its LIFEBENEFITS mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The Panel notes that the Registration Agreement is written in Chinese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. The Written Notice of the Complaint was served upon Respondent in both English and Chinese, and Respondent has made no objection to Complainant's request that the proceeding be conducted in English. For substantially the same reasons as those set forth in many prior decisions involving Respondent, e.g., Morgan Stanley v. Zhichao Yang, FA 1932877 (Forum Mar. 22, 2021); Volvo Trademark Holding Aktiebolag v. 杨智超 (Zhichao Yang), D2020-3507 (WIPO Mar. 16, 2021); Altria Group, Inc. & Altria Group Distribution Co. v. 杨智超 (Yang Zhi Chao), D2020-3395 (WIPO Mar. 15, 2021); LoanDepot.com, LLC v. Zhichao Yang, FA 1924673 (Forum Jan. 12, 2021); Securian Financial Group, Inc. v. 权中俊 / Zhichao Yang, FA 1916039 (Forum Nov. 25, 2020); Chevron Intellectual Property LLC v. Zhichao Yang, FA 1899809 (Forum July 14, 2020); Transamerica Corp. v. yangzhichao, FA 1775991 (Forum Apr. 27, 2018); UnitedHealth Group Inc. v. Zhichao Yang, FA 1635392 (Forum Oct. 22, 2015), the Panel decides that English shall be the language of this proceeding.
Complainant must establish that it has trademark rights in a relevant mark. Here, it appears that Complainant does not own a relevant trademark registration in LIFEBENEFITS, and its claim therefore depends on whether it has adequately proved common law trademark rights.
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
. . . .
In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3.
The Panel notes that even Complainant's own website and marketing materials use LIFEBENEFITS without any accompanying trademark notice, with the sole exception being the 2021 screenshot of its website, on which "TM" appears adjacent to the putative mark. Cf. Formation Capital, LLC v. VistaPrint Technologies Ltd, FA 1672252 (Forum May 24, 2016) (finding insufficient evidence of common law trademark rights where complainant offered no evidence of consumer or media recognition of its claimed mark as a distinctive identifier and its own website did not even include a claim of trademark rights); see also WMS Group, Inc. v Molly Jenkins / Brandz Agency Inc., FA 1601220 (Forum Feb. 26, 2015) (same). Furthermore, Complainant has used LIFEBENEFITS for more than 20 years but apparently has not applied to register the term as a trademark, though it has applied for and been issued many other federal trademark registrations over that period. Nonetheless, Complainant has shown extensive and longstanding use and widespread public recognition of the claimed mark, and Respondent has not come forward to challenge Complainant's claims. The Panel finds that Complainant has made a sufficient case for common law trademark rights for purposes of paragraph 4(a)(i) of the Policy.
Each of the disputed domain names, <lifebeenfits.com>, <lifebeneefits.com>, <lifbeenefits.com>, <lifebenefist.com>, <lifebeneficts.com>, <lifebenefites.com>, <lifebeneflts.com>, <liefbenefits.com>, <iifebenefits.com>, and <lifebneefits.com>, differs from the LIFEBENEFITS mark only by the introduction of one or more minor typographical errors and the addition of the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Life Extension Foundation, Inc. v. Hulmiho Ukolen / Poste Restante, FA 1628843 (Forum Aug. 21, 2015) (finding <lifeextention.com> confusingly similar to LIFE EXTENSION). The Panel considers the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names correspond to typographical variations of Complainant's registered mark without authorization, and their sole apparent use has been to display pay-per-click links to other websites, including competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Life Extension Foundation, Inc. v. Hulmiho Ukolen / Poste Restante, supra (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered several domain names comprising typographical variations on Complainant’s mark and is using them to display pay-per-click links, including links to competitors of Complainant. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Life Extension Foundation, Inc. v. Hulmiho Ukolen / Poste Restante, supra (finding bad faith in similar circumstances). The Panel also notes that Respondent has been found to have registered and used domain names in bad faith in many previous proceedings under the Policy, including several cases also involving Complainant. See, e.g., Caterpillar Inc. v. Zhichao Yang, FA 1882877 (Forum Mar. 14, 2020) (noting Respondent's pattern of bad faith registrations); ADP, LLC v. Zhichao Yang, FA 1744546 (Forum Sept. 12, 2017) (noting that Respondent has been considered a "serial cybersquatter"); Securian Financial Group, Inc. v. 权中俊 / Zhichao Yang, FA 1916039, supra (ordering transfer of <securiann.com>, <sevurian.com>, <sexurian.com>, <securinretirementcenter.com>, <securianreitrementcenter.com>, and <securanretirementcenter.com>); Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico / Zhichao Yang, FA 1910083 (Forum Sept. 28, 2020) (ordering transfer of <securiandadvisor.com> and <securiansevice.com>); Securian Financial Group, Inc. v. Zhichao Yang, FA 1893148 (Forum May 21, 2020) (ordering transfer of <securoan.com>); Securian Financial Group, Inc. v. Zhichao Yang, FA 1891625 (Forum May 13, 2020) (ordering transfer of <secueian.com>); Securian Financial Group, Inc. v. Zhichao Yang, FA 1890115 (Forum May 1, 2020) (ordering transfer of <secutian.com> and <securiun.com>); Securian Financial Group, Inc. v. Zhichao Yang, FA 1762306 (Forum Jan. 8, 2018) (ordering transfer of <securianretiermentcenter.com>).
The trademark rights in this case are somewhat tenuous, and the mark is composed of descriptive terms that are not inherently distinctive. Under the circumstances of this case, however, and taking Respondent's prior history into account, the Panel nonetheless infers that Respondent intentionally targeted Complainant and its LIFEBENEFITS mark. The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lifebeenfits.com>, <lifebeneefits.com>, <lifbeenefits.com>, <lifebenefist.com>, <lifebeneficts.com>, <lifebenefites.com>, <lifebeneflts.com>, <liefbenefits.com>, <iifebenefits.com>, and <lifebneefits.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 31, 2021
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