Securian Financial Group, Inc. v. Li Jiang
Claim Number: FA2211002020005
Complainant is Securian Financial Group, Inc. (“Complainant”), USA, represented by William Schultz of Merchant & Gould, Minnesota, USA. Respondent is Li Jiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <securianretirememtcenter.com>, <securianretiremencenter.com>, <securianretirementcentre.com>, <securianretiremntcenter.com>, registered with Cosmotown, Inc.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on November 11, 2022; Forum received payment on November 11, 2022.
On November 13, 2022, Cosmotown, Inc. confirmed by e-mail to Forum that the <securianretirememtcenter.com>, <securianretiremencenter.com>, <securianretirementcentre.com>, <securianretiremntcenter.com> domain names are registered with Cosmotown, Inc. and that Respondent is the current registrant of the names. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, Inc. 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@securianretirememtcenter.com, postmaster@securianretiremencenter.com, postmaster@securianretirementcentre.com, postmaster@securianretiremntcenter.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 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Securian Financial Group, provides insurance, investment, and retirement services. Complainant has rights in the SECURIAN mark due to multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,637,008, which was registered on October 15, 2002). The disputed domain names are confusingly similar to the SECURIAN mark because they include the entire mark, simply appending generic terms that describe Complainant’s services and generic top-level domains.
ii) Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the names and Complainant has never granted Respondent permission to use the SECURIAN mark. Respondent is trading off Complainant’s goodwill, confusing Internet users as to the source of the resolving sites. Respondent is also diverting traffic in order to display advertising links similar to or competing with Complainant’s services for commercial gain.
iii) Respondent registered and uses the disputed domain names in bad faith by using confusingly similar domain names to trade off Complainant’s goodwill. Respondent displays commercial advertising links in connection with Complainant’s services, diverting Internet traffic for commercial gain. Respondent is also typosquatting with actual knowledge of Complainant’s rights in the SECURIAN mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain names <securianretirememtcenter.com>, <securianretiremencenter.com>, <securianretirementcentre.com>, and <securianretiremntcenter.com> were all registered on October 26, 2022.
2. Complainant has rights in the SECURIAN mark due to multiple trademark registrations with the USPTO (e.g., Reg. No. 2,637,008, which was registered on October 15, 2002).
3. The disputed domain names’ resolving websites display commercial advertising links in connection with Complainant’s services.
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 claims rights in the SECURIAN mark through trademark registration with the USPTO (e.g., Reg. No. 2,637,008, which was registered on October 15, 2002). Registration of a mark with the USPTO is a valid showing of rights in a mark 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.”). Since Complainant provides evidence of registration of the SECURIAN mark with the USPTO, the Panel finds that Complainant has established rights in the SECURIAN mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to its SECURIAN mark, as they all incorporate the mark in its entirety and merely add the generic terms “retirement” and “center” (albeit misspelled) and gTLDs. When a mark is wholly included in a domain name, the addition of generic terms and gTLDs is insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Complainant notes that the generic terms relate to its retirement service, causing greater confusion; Complainant also owns the domain name <securianretirementcenter.com>. Previous panels have taken this argument into consideration when analyzing confusing similarity under Policy ¶ 4(a)(i). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s SECURIAN mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 argues that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and Complainant has never licensed rights to or otherwise given permission for Respondent to use the SECURIAN mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The unmasked WHOIS information for the disputed domain names lists the registrant as “Li Jiang.” There is no other evidence to suggest that Respondent was permitted to use the SECURIAN mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant contends that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use for the disputed domain names, as Respondent is confusing and diverting Internet users thereby taking profits from passing off as Complainant by displaying advertisement links on the resolving sites that compete with Complainant’s services. Previous panels have held that hosting competing hyperlinks and advertisements is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(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.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
In this case, Complainant provides evidence of the content at the resolving sites, which advertise for services such as “401k Retirement Plan” and “401k Benefits”. Therefore, the Panel determines that Respondent lacks any bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent registered and uses the confusingly similar domain names in bad faith by trading off the goodwill associated with the SECURIAN mark, confusing Internet users as to the source or affiliation of the resolving websites. Panels have found that when a respondent uses a domain name to take advantage of a mark’s goodwill, there is bad faith attraction for commercial gain. See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). The Panel agrees and finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant further claims that Respondent’s use of the disputed domain names to host advertising links related to and competing with Complainant’s services is further evidence of bad faith. The Panel is of the view that use of a disputed domain name to display competing advertisements and hyperlinks can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); see also Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). As noted previously, Complainant provides evidence of the content at the resolving sites, which advertise for services such as “401k Retirement Plan” and “401k Benefits”. The Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also argues that Respondent knew of Complainant’s rights in the SECURIAN mark. While Panels have not typically recognized constructive knowledge as evidence of bad faith, the Panel may find that Respondent had actual knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant points to the misspellings in the domain names and competing content on the resolving sites as evidence of knowledge. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain names that Respondent had actual knowledge of Complainant’s rights in its SECURIAN mark at the time of registering the disputed domain names, which supports a finding of bad faith registration under 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 <securianretirememtcenter.com>, <securianretiremencenter.com>, <securianretirementcentre.com>, <securianretiremntcenter.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: December 12, 2022
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