Securian Financial Group, Inc. v. Host Master / Transure Enterprise Ltd
Claim Number: FA2210002015596
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securiantelecom.com>, registered with Above.com Pty Ltd..
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 Forum electronically on October 11, 2022; Forum received payment on October 11, 2022.
On October 18, 2022, Above.com Pty Ltd. confirmed by e-mail to Forum that the <securiantelecom.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 October 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@securiantelecom.com. Also on October 19, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 offers retirement, insurance, and investment products and services.
Complainant asserts rights in the SECURIAN trademark based upon registration
with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg.
no. 2,637,008, registered October 15, 2022). Respondent’s domain name <securiantelecom.com> is confusingly similar to Complainant’s SECURIAN
trademark because it incorporates the trademark
in its entirety and adds the generic term “TELECOM” and the generic top-level
domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <securiantelecom.com> domain name. Respondent is not licensed or authorized to use Complainant’s SECURIAN trademark and is not commonly known by the disputed domain name.
Respondent also does not use the disputed domain name
for any bona fide offering of goods or services or legitimate
noncommercial or fair use. Rather,
Respondent offers advertising links to divert Internet users to Respondent’s website.
Respondent
registered and uses the <securiantelecom.com> domain name
in bad faith. Respondent
registered and uses the disputed domain name in bad faith by offering it for
sale.
Respondent disrupts Complainant’s business. Respondent registered and uses the disputed domain
name as an attraction for commercial gain.
Respondent had actual knowledge of Complainant’s rights in the SECURIAN trademark
prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 2,637,006 SECURIAN FINANCIAL SERVICES (word), registered on October 15, 2002 for services in Intl Class 36;
- No. 2,637,008 SECURIAN (word), registered on October 15, 2002 for services in Intl Class 36;
- No. 2,637,004 SECURIAN (fig), registered on October 15, 2002 for services in Intl Class 36; and
- No. 4,831,953 SECURIAN (word), registered on October 13, 2015 for services in Intl Class 35.
The disputed domain name <securiantelecom.com> was registered on September 29, 2022.
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 rights in the SECURIAN trademark based upon registration with the USPTO (e.g., Reg. no. 2,637,008, registered October 15, 2022). Registration of a trademark with the USPTO is considered a valid showing of rights under 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.”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS trademark sufficiently demonstrate its rights in the trademark under Policy ¶ 4(a)(i)). Since Complainant has provided evidence of registration of the SECURIAN trademark with the USPTO, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that the <securiantelecom.com> domain name is confusingly similar to Complainant’s SECURIAN trademark because it incorporates the trademark in its entirety and adds the generic term “TELECOM” and the gTLD “.com”. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s SECURIAN trademark under 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 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent does not have rights or legitimate interests in the <securiantelecom.com> domain name because Respondent is not licensed or authorized to use Complainant’s SECURIAN trademark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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)). 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 Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Host Master / Transure Enterprise Ltd.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends that Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent offers advertising links to divert Internet users to Respondent’s website. Respondent’s use of a confusingly similar domain name to advertise services which compete with the Complainant’s business does indeed not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Zillow, Inc. v. Domain Admin / Whois Privacy Corp., FA 1784943 (Forum June 7, 2018) (“the <trulia.co> domain name resolves to a variety of pages, including real-estate-related advertising and to the website of a direct competitor of the Complainant in the online real estate field. Therefore, the Panel agrees with Complainant and finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Here, Complainant provides screenshots of Respondent’s resolving webpage showing clickable hyperlinks for competing services of Complainant. The Panel agrees with Complainant’s conclusion, and find that Respondent does not provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant asserts that Respondent registered and uses the disputed domain name in bad faith by offering it for sale. A general offer to sell a domain name can be evidence that the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i). See Airbnb, Inc. v. 张昕 / 何青玉, FA 1786279 (Forum June 18, 2018) (“Complainant provides a screenshot of the disputed domain name’s resolving webpage, where Respondent offers to sell the domain name for €9,999 [. . .] The Panel therefore finds that Respondent registered and is using the <airbnb.pro> domain name in bad faith per Policy ¶ 4(b)(i).”). Here, Complainant provides screenshots of the disputed domain name’s Google search results, showing an offering for sale. As such, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant argues that Respondent registered and uses the disputed domain name to disrupt its business by offering competing hyperlinks. Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the trademark of another. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 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)(iii)”). As noted above, the Complainant has provided screenshots of Respondent’s resolving webpage showing clickable hyperlinks for competing services of Complainant. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant further asserts that Respondent registered and uses the disputed domain name as an attraction for commercial gain by creating a likelihood of confusion. While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). As noted, Complainant provides screenshots of Respondent’s resolving webpage, showing use of its trademark and offerings of similar services. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant contends that Respondent had actual knowledge of its rights in the SECURIAN trademark prior to registration of the disputed domain name because of Respondent’s use of the trademark and offerings of competing hyperlinks. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's trademark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"). As noted, Complainant has provided screenshots of Respondent’s resolving webpage showing clickable hyperlinks for competing services of Complainant. Thus, the Panel finds that Respondent registered and uses 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 <securiantelecom.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 28, 2022
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