Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2211002019519
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 <settlementcontractssecurian.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on November 8, 2022; Forum received payment on November 8, 2022.
On November 9, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <settlementcontractssecurian.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 November 14, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@settlementcontractssecurian.com. Also on November 14, 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 December 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its ownership of the portfolio of registered service marks described below and claims rights in the SECURIAN and SECURIAN FINANCIAL SERVICES marks, which it claims to have used continuously in commerce since at least as early as 2001.
Complainant asserts that it has been engaged in commerce since 1880, and presently has 97.8 billion dollars in assets under management, providing financial services to over 21 million people nationwide through insurance, investment, and retirement products.
Complainant submits that the disputed domain name is confusingly similar to the SECURIAN and SECURIAN FINANCIAL SERVICES marks, and the addition of a generic term, “settlement contracts” is not a distinguishing feature. See Disney Enterprises, Inc. v. Lincoln Bauer, FA1201001423230 (Forum Feb. 21, 2012), (explaining that “the addition of generic words . . . and the top level designation .com in the Domain Name do not serve to distinguish the Domain Names”).
Likewise, Complainant adds that the addition of the generic top-level domain (“gTLD”) extension is not a distinguishing feature within the disputed domain name. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”)
Complainant adds furthermore that because the use of the terms “settlement contracts” relate to Complainant’s offerings of financial services, consumers are likely to be more confused. Therefore, the requirement of confusing similarity is met.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name as it may be presumed that a domain name registrant does not have a legitimate interest in a domain name where, as in the present case, Respondent is not a licensee of Complainant; Complainant’s prior rights in the disputed domain name precede Respondent’s registration; and Respondent is not commonly known by the disputed domain name. See Gallup, Inc. v. Amish Country Store, FA96209 (Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Complainant asserts that Respondent has not received its permission, directly or indirectly, to use the SECURIAN and SECURIAN FINANCIAL SERVICES marks, and further asserts that Complainant has not licensed its SECURIAN and SECURIAN FINANCIAL SERVICES marks to Respondent.
Complainant adds that Respondent does not have common law protection of the disputed domain name because the disputed domain name is not commonly known.
Complainant refers to screen captures of the websites to which the disputed domain name has resolved on two occasions which are exhibited in evidence in an annex to the Complaint.
On each occasion the disputed domain name resolved to parking pages with what appear to be pay-per-click links. Complainant submits that such use of the disputed domain name to attract Internet traffic to a webpage with pay-per-click links to third parties does not create rights or legitimate interests in the disputed domain name. See RAB Lighting, Inc. v. DNS Support - Ultimate Search, FA0411000363908 (Forum Dec. 30, 2004) (holding that opportunistic use of Complainant’s mark to redirect Internet users to a directory website unrelated to Complainant’s business was not legitimate).
A further screen capture exhibited in an annex to the Complaint, shows that the disputed domain name is being offered for sale on a third-party website inviting minimum offers of $899, which Complainant submits is well above any price of registration fees, and Complainant argues that offering the disputed domain name for sale in this manner also shows that Respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Veniece Newton v. Trevon Angulo (Forum, Aug. 3, 2007) (holding that respondent’s use of Google AdSense for Domains to generate revenue by the use of advertising was not a legitimate noncommercial or fair use).
Complainant adds that Respondent’s use of the SECURIAN mark in this manner cannot be classified as noncommercial or fair use because Respondent is using her website for commercial advertising. See DSW Shoe Warehouse, Inc. v. Ultimate Search, FA0501000412381 (Forum March 21, 2005) (holding that use of a domain name to redirect Internet users to a search engine website that provided various links to third parties was not legitimate).
Furthermore, Complainant asserts that Respondent is responsible for the content on websites affiliated with the disputed domain name. See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”).
Complainant next alleges that the disputed domain name has been registered and is being used in bad faith arguing that Respondent had actual knowledge of the SECURIAN and SECURIAN FINANCIAL SERVICES marks prior to the registration of the disputed domain name. The fact that Respondent registered the disputed domain name that is nearly identical to Complainant’s marks and incorporates words related to Complainant’s offerings and then placed advertisements that relate to Securian’s services shows that Respondent knew of Complainant, and its marks prior to registering the disputed domain name.
Complainant argues that there is a legal presumption of bad faith when a respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively. See Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., WIPO Case D2000-1221 (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith).
Complainant adds that Respondent’s offer to sell the disputed domain name also shows the actual knowledge of Securian’s trademark rights shows bad faith pursuant to Policy ¶ 4(b)(ii). See Nintendo of Am., Inc. v. Lizmi, FA394329 (Forum Apr. 24, 2000) (inferring bad faith from Respondent’s attempt to sell domain name).
Complainant argues that there would be no reason to register a domain name that included the SECURIAN name unless the Respondent knew of Complainant and its SECURIAN brand financial services, adding that there is no company other than Complainant that offers services under the SECURIAN and SECURIAN FINANCIAL SERVICES marks and the only conceivable explanation for registration of the disputed domain name is to confuse Complainant’s customers.
Additionally, Complainant contends that Respondent’s offer to sell the disputed domain name for an amount in excess of her out-of-pocket costs infers that Respondent intended to make such an offer at the time she registered the disputed domain name.
Complainant adds that Respondent’s diversion of traffic to third party websites, including those of Complainant’s competitors via the pay-per-click links on the website to which the disputed domain name resolves shows bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).
Complainant adds that in addition to the foregoing, Respondent is a serial cybersquatter and has registered multiple domain names associated with the SECURIAN mark:
· Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1991732 (Forum, May 17, 2022);
· Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1984279 (Forum, March 25, 2022);
· Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1945628 (Forum, June 24, 2021);
· Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico / Zhichao Yang, FA1910083 (Forum, September 28, 2020);
· Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1898856 (Forum, July 5, 2020).
Complainant adds that beyond the cases above, Respondent is a named respondent in 236 decisions before the Forum which is further evidence of the Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of financial services and is the owner of the SECURIAN FINANCIAL SERVICES and SECURIAN trademarks which it uses in connection with retirement, insurance, and investment products. Complainant is the registered owner of the following portfolio of registered service marks:
|
Mark |
Jurisdiction of Registration |
Registration Number |
Date of Registration |
Type |
Classes |
|
SECURIAN FINANCIAL SERVICES |
USA |
2637006 |
October 15, 2002 |
Service mark |
International class 36 |
|
SECURIAN |
USA |
2637008 |
October 15, 2002 |
Service mark |
International class 36 |
|
SECURIAN (and Design) |
USA |
2637004 |
October 15, 2002 |
Service mark |
International class 36 |
|
SECURIAN |
USA |
4831953 |
October 13, 2015 |
Service mark |
International class 35 |
Complainant has an established Internet presence and maintains a website at <www.securian.com>.
The disputed domain name was registered on October 6, 2022. It resolves to a website with what appears to have pay-per-click links to third party websites and is offered for sale on a third party website inviting minimum offers of $899.
There is no information available about Respondent, except for that provided in the Complaint, as amended, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.
Respondent’s identity is concealed on the published WhoIs by the use of a privacy service and the Registrar has confirmed that Respondent is the registrant of the disputed domain name.
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 has provided convincing, uncontested evidence that it has rights in the SECURIAN and SECURIAN FINANCIAL SERVICES service marks, established by its ownership of the portfolio of trademark registrations described above and its long established use of the marks to distinguish its products and services in its insurance and financial services business including on its website at <www.securian.com>
The disputed domain name <settlementcontractssecurian.com> consists of Complainant’s SECURIAN service mark in its entirety, preceded by the descriptive terms "settlement contracts” and followed by the generic Top Level Domain (“gTLD") extension <.com>.
Complainant’s SECURIAN mark is clearly identifiable within the disputed domain name as the dominant and only distinctive element.
In the context of the disputed domain name, the element "settlement contracts” is a combination of two words producing a descriptive term used in the financial services industry and has no distinguishing significance.
The gTLD <.com> extension would be considered a necessary technical requirement for a domain name registration. Neither element therefore prevents a finding that the disputed domain name is confusingly similar to Complainant’s mark.
This Panel finds therefore that the disputed domain name is confusingly similar to the SECURIAN mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not a licensee of Complainant;
· Complainant’s prior rights in the domain name precede Respondent’s registration;
· Respondent is not commonly known by the domain name;
· Respondent has not received permission, directly or indirectly, to use the SECURIAN and SECURIAN FINANCIAL SERVICES marks;
· Complainant has not licensed its SECURIAN and SECURIAN FINANCIAL SERVICES marks to Respondent;
· Respondent does not have common law protection of the disputed domain name because the disputed domain name is not commonly known;
· screen captures of the website to which the disputed domain name resolved on two occasions which are exhibited in evidence in an annex to the Complaint, show at on each occasion the disputed domain name resolved to parking pages with what appear to be pay-per-click links and such use of the disputed domain name to attract Internet traffic to a webpage with pay-per-click links to third parties does not create rights or legitimate interests in the disputed domain name;
· a further screen capture exhibited in an annex to the Complaint, shows that the disputed domain name is being offered for sale on a third party website inviting minimum offers of $899 which Complainant submits is well above any price of registration fees and offering the disputed domain name for sale in this manner also shows that Respondent lacks rights or legitimate interests in the domain name;
· Respondent’s use of the mark in this manner cannot be classified as noncommercial or fair use because Respondent is using the site for commercial advertising; and
· Respondent is responsible for the content on websites affiliated with the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered on October 6, 2022, and Complainant has adduced clear and convincing, uncontested evidence that it has established rights in the SECURIAN service mark rights which predate the registration.
SECURIAN is a distinctive mark and the evidence shows that Complainant has a strong and substantial reputation in the use of the mark, which has been enhanced by its use by Complainant on its website at <www.securian.com>.
It is improbable that the disputed domain name was chosen and registered without any knowledge of the Complainant, its name, SECURIAN mark, its rights in the mark and its website at <www.securian.com>.
This Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith, with prior knowledge of Complainant and its Complainant’s SECURIAN mark and with the intention of taking predatory advantage of the Complainant’s reputation and goodwill.
The uncontested evidence also shows that the Respondent is not using the disputed domain name for any business of substance. The screen captures adduced in evidence by Complainant show that the disputed domain name on two occasions resolved to basic parking pages with what were, on the balance of probabilities, pay-per-click links to third-party websites some of which refer to financial services categories, but this may depend on the algorithm and the computer used to generate the parking pages.
Presumably Complainant’s allegation that Respondent “placed advertisements that relate to [Complainant’s] services” refers to these links to financial services. It would have greatly supported Complainant’s case if there was evidence adduced which actually showed the destination of the links.
Such unauthorized use of the confusingly similar domain name as a website address for any pay-per-click links, or even to an inactive website maintained by Respondent, is on the balance of probabilities intended to attract, confuse, mislead and misdirect unsuspecting Internet users seeking the Complainant’s services online by taking advantage of the Complainant’s reputation and goodwill in the SECURIAN mark.
This Panel finds that, on the balance of probabilities, by using in bad faith the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or the links on Respondent’s web site or location.
Additionally, this Panel finds that Respondent’s purported offer of the disputed domain name for sale to the public on a third party website, inviting minimum offers of $899 allows a finding that the disputed domain name was registered and is being used in bad faith.
Furthermore, Complainant has shown that Respondent has engaged in a pattern of registration of multiple domain names associated with Complainant, which in itself also proves registration and use of the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <settlementcontractssecurian.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________________
James Bridgeman SC
Panelist
Dated: December 14, 2022
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