Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2105001945628
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 <secirian.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2021; the Forum received payment on May 19, 2021.
On May 20, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <secirian.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 May 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2021 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@secirian.com. Also on May 20, 2021, 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 14, 2021, 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 over 21 million people nationwide through insurance, investment, and retirement products. Complainant has rights in the SECURIAN trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,637,008, registered October 15, 2002). Respondent’s <secirian.com> domain name is confusingly similar to Complainant’s SECURIAN trademark as it merely replaces the letter “u” with the letter “i," which results in “secirian” versus “securian,” while adding a generic top level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <secirian.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or permitted Respondent to use Complainant’s SECURIAN trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name in connection with competitive pay-per-click advertising. Respondent also offers the disputed domain name for sale.
Respondent registered and uses the <secirian.com> domain name in bad faith. First, Respondent offers the disputed domain name for sale. Respondent also uses the disputed domain name in connection with competitive pay-per-click advertising and intentionally attempts to attract users for commercially gain by creating a likelihood of confusion with the SECURIAN trademark. Furthermore, Respondent had actual knowledge of Complainant’s rights in the SECURIAN trademark prior to registering the disputed domain name, as evidenced by Respondent’s misspelling of Complainant trademark and Respondent’s use of competitive hyperlinks.
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 SECURIAN (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 <secirian.com> was registered on March 1, 2021.
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”).
The Complainant asserts rights in the SECURIAN trademark through Complainant’s registration of the trademark with the USPTO (e.g., Reg. No. 2,637,008, registered October 15, 2002). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds that Complainant has demonstrated rights in the SECURIAN trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <secirian.com> domain name is confusingly similar to Complainant’s SECURIAN trademark as it merely replaces the letter “u” with the letter “i," which results in “secirian” versus “securian,” while adding a gTLD. A misspelled trademark and the addition of a gTLD fail to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”).
In the present case, the Panel has also taken into account the standard keyboard layout. At the typewriter part of the keyboard layout, the letters “U” and “I” are placed side-by-side on the same line. It is thereby an obvious risk of misspelling, resulting in “secirian” instead of “securian” when the normal surfer is trying to reach the Complainant’s web site and/or trademark information online. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark per 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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the <secirian.com> domain name as Respondent is not commonly known by the domain name, nor has Complainant authorized or permitted Respondent to use Complainant’s SECURIAN trademark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is 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 complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico”, and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the SECURIAN trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <secirian.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name in connection with competitive hyperlinks. Using a disputed domain name in connection with competitive hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, Complainant provides a screenshot showing that the Respondent uses the disputed domain name in connection with competitive pay-per-click advertising. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues that Respondent further lacks rights or legitimate interests in the <secirian.com> domain name because Respondent offers the disputed domain name for sale. Offering a disputed domain name for sale is further evidence that a respondent lacks rights or legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Here, Complainant provides a screenshot showing Respondent listed the disputed domain name for sale on the Sedo marketplace for $899, well above any price to repay for the registration fees. Therefore, the Panel finds that Respondent lacks rights and legitimate interests per Policy ¶ 4(a)(ii).
The Complainant contends that Respondent registered and uses the <secirian.com> domain name in bad faith as Respondent offers the disputed domain name for sale. Offering a disputed domain name for sale can demonstrate bad faith per Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Here, as noted above, the Complainant provides a screenshot showing Respondent listed the disputed domain name for sale on the Sedo marketplace for $899. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant also contends that Respondent registered and uses the <secirian.com> domain name in bad faith as Respondent uses it in connection with competitive pay-per-click advertising while intentionally attempting to attract users for commercially gain by creating a likelihood of confusion with the SECURIAN trademark. Using a disputed domain name in connection with competitive hyperlinks can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 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)(iv)”). As already noted, Complainant provides a screenshot showing the disputed domain name is used in competitive pay-per-click advertising. Complainant also argues Respondent intentionally attempted to commercially gain from creating a likelihood of confusion with the SECURIAN trademark because Respondent registered a domain name that is nearly identical to the protected SECURIAN trademark. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent registered the <secirian.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the SECURIAN trademark prior to registration of the disputed domain name based on Respondent’s misspelling of the trademark and Respondent’s use of competitive hyperlinks. Using a disputed domain name in connection with competitive advertisements can demonstrate actual knowledge of a complainant’s rights in a trademark at registration and show bad faith. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation).
Referring to the clear screenshots, provided by the Complainant, showing the disputed domain name is used in competitive pay-per-click advertising, the Panel finds that Respondent registered the disputed domain name in bad faith per 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 <secirian.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 24, 2021
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