Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2204001991732
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 <lifefenefits.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 April 11, 2022; the Forum received payment on April 11, 2022.
On April 11, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lifefenefits.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 April 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2022 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@lifefenefits.com. Also on April 12, 2022, 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 May 9, 2022, 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, Securian Financial Group, Inc., operates a full-service financial company providing insurance, investment, and retirement products. Complainant asserts common law rights in the LIFEBENEFITS mark through long-term continuous use and ownership of an identical domain name.
2. Respondent’s <lifefenefits.com>[i] domain name is identical or confusingly similar to Complainant’s LIFEBENEFITS mark, merely changing the letter “B” within the mark to the letter “F” and adding the “.com” generic top-level domain (“gTLD”) to form a domain name.
3. Respondent lacks rights and legitimate interests in the <lifefenefits.com> domain name as it is not commonly known by the domain name and is neither an authorized user or licensee of the LIFEBENEFITS mark.
4. Additionally, Respondent does not use the domain name for either a bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent attempts to offer the domain name for sale.
5. Additionally, Respondent uses the domain name to host third-party brand sites which likely generate revenue for Respondent.
6. Respondent registered and uses the <lifefenefits.com> domain name in bad faith. First, Respondent has offered to sell the domain name.
7. Complainant contends that Respondent is a serial cybersquatter, and that the domain name constitutes another example of Respondent’s pattern of bad faith registrations.
8. Respondent has used the domain name to host monetized hyperlinks to various third-party websites, demonstrating bad faith attraction to commercial gain. Moreover, Complainant contends that Respondent has engaged in typosquatting to increase traffic to the domain and distribute malware to unsuspecting Internet users.
9. Finally, Complainant contends that Respondent registered the <lifefenefits.com> domain name with actual knowledge of Complainant’s rights in the LIFEBENEFITS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the LIFEBENEFITS mark. Respondent’s domain name is confusingly similar to Complainant’s LIFEBENEFITS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lifefenefits.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 asserts common law rights in the LIFEBENEFITS mark. Registration of a mark with a national trademark authority is not required for protection under Policy ¶ 4(a)(i). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Common law rights can be found when a Complainant shows secondary meaning for their mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant provides evidence of its longstanding use of the LIFEBENEFITS mark, along with ownership of an identical domain name, and media recognition. As the undisputed record supports Complainant’s assertion of secondary meaning for the LIFEBENEFITS mark, the Panel holds that Complainant has common law rights in the LIFEBENEFITS mark within the meaning of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <lifefenefits.com> domain name is identical or confusingly similar to Complainant’s LIFEBENEFITS mark, merely changing the “B” within the mark to a second “F” and adding the “.com” gTLD. Merely changing one letter within a mark and adding a gTLD are insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter . . . is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”). Thus, the <lifefenefits.com> domain name is confusingly similar to Complainant’s LIFEBENEFITS mark within the meaning of 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 <lifefenefits.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.) The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <lifefenefits.com> domain name as it is not commonly known by the domain name and is neither an authorized user or licensee of the LIFEBENEFITS mark. When response is lacking, past Panels have looked to relevant WHOIS information to determine whether a Respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use another’s trademark in a domain name may evidence that a respondent is not commonly known by a domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the relevant WHOIS information identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as the domain name registrant, and nothing within the record suggests Complainant has authorized Respondent’s use of the LIFEBENEFITS mark. Therefore, the Panel holds that Respondent is not commonly known by the <lifefenefits.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent uses the <lifefenefits.com> domain name to host hyperlinks to various third-party brand websites to generate click-through revenue. Using a domain name incorporating the mark of another for this purpose does not qualify as either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the resolving website which shows hyperlinks that direct users to various other third-party websites. Thus, Respondent lacks rights and legitimate interests in the <lifefenefits.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has provided evidence that Respondent is a serial cybersquatter who has demonstrated a pattern of bad faith registrations in past UDRP decisions. Pursuant to Policy ¶ 4(b)(ii), a pattern of bad faith registrations may be demonstrated by past adverse UDRP decisions. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant provides a screenshot from the Forum’s website which lists Respondent in 214 previous cases. The Panel agrees that Respondent has been engaged in a pattern of bad faith registrations, thus engaging in bad faith under Policy ¶ 4(b)(ii).
Finally, Complainant argues that Respondent registered the <lifefenefits.com> domain name with actual knowledge of Complainant’s rights in the LIFEBENEFITS mark. Per Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s rights in a mark is sufficient to demonstrate bad faith and can be shown by the notoriety of a complainant’s mark and a respondent’s use of the domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant provides evidence of the secondary nature of the LIFEBENEFITS mark, and Respondent’s use of the <lifefenefits.com> domain name to collect click-through revenue from hyperlinks to unrelated third-parties. Thus, the Panel finds bad faith 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 <lifefenefits.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 17, 2022
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