Securian Financial Group, Inc. v. Zhichao Yang / Yang Zhi Chao / Zhichao
Claim Number: FA2108001960750
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Zhichao Yang / Yang Zhi Chao / Zhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lifebbenefits.com>, <lfiebenefits.com>, <lifebenefuts.com>, <lifebenefitss.com>, <liifebenefits.com>, <lifeebenefits.com>, <lifeebnefits.com>, <wwwlifebenifits.com>, <lifebeenefits.com>, <llfebenefits.com> and <llifebenefits.com> (collectively “Domain Names”), registered with DNSPod, Inc.; Dynadot, LLC and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2021; the Forum received payment on August 23, 2021.
On August 23, 2021, August 24, 2021 and August 26, 2021, respectively DNSPod, Inc., Dynadot, LLC and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <lifebbenefits.com>, <lfiebenefits.com>, <lifebenefuts.com>, <lifebenefitss.com>, <liifebenefits.com>, <lifeebenefits.com>, <lifeebnefits.com>, <wwwlifebenifits.com>, <lifebeenefits.com>, <llfebenefits.com> and <llifebenefits.com> domain names are registered with the respective registrars and that Respondent is the current registrant of the names. Each of the registrars has verified that Respondent is bound by their respective 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 August 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@lifebbenefits.com, postmaster@lfiebenefits.com, postmaster@lifebenefuts.com, postmaster@lifebenefitss.com, postmaster@liifebenefits.com, postmaster@lifeebenefits.com, postmaster@lifeebnefits.com, postmaster@wwwlifebenifits.com, postmaster@lifebeenefits.com, postmaster@llfebenefits.com, postmaster@llifebenefits.com. Also on August 30, 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 September 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Complainant contends that the registrants for the Domain Names are related because: 1) the Domain Names are all similar misspellings of Complainant’s LIFEBENIFITS mark 2) The registrant details for the Domain Names all contain some reference to the name “Xhi Chao” 3) The Domain Names have used the same servers at some point 4) Many of the Domain Names were registered on the same day, and 5) the Domain Names redirect what are very similar websites. In essence each of the Domain Names leads to a website offering pay-per-click links to third party websites that offer services (insurance) that directly compete with Complainant. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that three unconnected entities would register very similar domain names and point them to essentially identical websites.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” in this Decision.
The language of the Registration Agreement for the Domain Names <wwwlifebenifits.com> and <llifebenefits.com> is in English. The language of the Registration Agreement for the remaining Domain Names in this case is Chinese. The Complaint has been provided in English and Complainant has implicitly requested that the language of the proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Korean language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. Two of the Domain Names have been registered using an English-language registration agreement. Each of the Respondent’s Websites is entirely in English. Furthermore, the Domain Names themselves consists of English words/abbreviations (correctly or incorrectly spelled) in Latin script. The Panel also notes the absence of any response by Respondent indicating a preference that the proceeding continue in Chinese. After considering the circumstances of the present case, the Panel decides that the proceeding should be continued in the English language.
A. Complainant
Complainant is a large bank and financial services provider, including insurance. Complainant has common law rights in the LIFEBENEFITS mark. Respondent’s <lifebbenefits.com>, <lfiebenefits.com>, <lifebenefuts.com>, <lifebenefitss.com>, <liifebenefits.com>, <lifeebenefits.com>, <lifeebnefits.com>, <wwwlifebenifits.com>, <lifebeenefits.com>, <llfebenefits.com> and <llifebenefits.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate slightly misspelled versions of the mark along with a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <lifebbenefits.com>, <lfiebenefits.com>, <lifebenefuts.com>, <lifebenefitss.com>, <liifebenefits.com>, <lifeebenefits.com>, <lifeebnefits.com>, <wwwlifebenifits.com>, <lifebeenefits.com>, <llfebenefits.com> and <llifebenefits.com> domain names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized or licensed Respondent to use the LIFEBENEFITS mark. Respondent does not use the Domain Names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead hosts parked pay-per-click links at each of the Domain Names.
Respondent registered and uses the <lifebbenefits.com>, <lfiebenefits.com>, <lifebenefuts.com>, <lifebenefitss.com>, <liifebenefits.com>, <lifeebenefits.com>, <lifeebnefits.com>, <wwwlifebenifits.com>, <lifebeenefits.com>, <llfebenefits.com> and <llifebenefits.com> domain names in bad faith. Respondent registered and uses the Domain Names to disrupt Complainant’s business for commercial gain by hosting competing pay-per-click links on the Domain Names’ resolving websites. Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the LIFEBENEFITS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LIFEBENEFITS mark. Each of the Domain Names is confusingly similar to Complainant’s LIFEBENEFITS mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used 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 does not have any registered trade mark rights in the LIFEBENEFITS mark. It is therefore necessary to consider whether Complainant holds common law rights in the LIFEBENEFITS mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant has since 1999 offered insurance and other financial services under the LIFEBENEFITS mark. The Complainant has invested considerable time and effort in promoting the LIFEBENEFITS mark through its website at www.lifebenifits.com which has been operational since 1999 and through the use of direct marketing materials featuring the LIFEBENEFITS mark.
The Panel is satisfied that Complainant has shown extensive and longstanding use of the LIFEBENEFITS mark, and Respondent has not come forward to challenge Complainant's claims. Complainant’s evidence as to length and manner of use that Complainant’s use of the LIFEBENEFITS mark is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the LIFEBENEFITS mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that each of the Domain Names is confusingly similar to the LIFEBENEFITS mark since each domain name consists of a minor misspelling of the LIFEBENEFITS mark and adds the “.com” gTLD. Minor misspellings and appended gTLDs are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name is confusingly similar to the BANK OF AMERICA mark because it contains the entire mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’); see also Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE 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 Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the LIFEBENEFITS mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Zhichao Yang / Yang Zhi Chao / Zhichao” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names resolve to websites featuring pay-per-click links to third party websites, some of which purport to offer competing insurance services to Complainant. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also 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, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between March 2020 and August 2021, Respondent had actual knowledge of Complainant’s LIFEBENEFITS mark. Each of the Domain Names resolves to a website that contains pay-per-click links that purport to offer insurance services, being the business that Complainant trades in. Furthermore, it is improbable that a party would register 11 domain names that are obvious misspellings of Complainant’s LIFEBENEFITS mark in the absence of any awareness of this mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s LIFEBENEFITS Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites containing advertisements and links to third party websites for commercial gain. Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”).
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 <lifebbenefits.com>, <lfiebenefits.com>, <lifebenefuts.com>, <lifebenefitss.com>, <liifebenefits.com>, <lifeebenefits.com>, <lifeebnefits.com>, <wwwlifebenifits.com>, <lifebeenefits.com>, <llfebenefits.com> and <llifebenefits.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 28, 2021
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