Securian Financial Group, Inc. v. PremiumDomains ForSale / Tropic Management Systems Ltd.
Claim Number: FA2301002027380
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota. Respondent is PremiumDomains ForSale / Tropic Management Systems Ltd. (“Respondent”), <<PARTYLOCATION>>.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lifebenefitys.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on January 12, 2023; Forum received payment on January 12, 2023.
On January 13, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <lifebenefitys.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 January 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2023 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@lifebenefitys.com. Also on January 18, 2023, 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 February 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant is a Minnesota-based financial and insurance company.
Complainant claims common law rights in the LIFEBENEFITS mark. The at-issue domain name <lifebenefitys.com> is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s mark with only the addition of the letter “y” and the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the at-issue domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized Respondent to use the LIFEBENEFITS mark in any way. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain to offer the domain name for-sale to the public. Furthermore, Complainant uses the at-issue domain name to generate revenue by redirecting the domain name to third-parties.
Respondent registered and uses the at-issue domain name in bad faith. Respondent has had prior adverse UDRP decisions as a respondent. Respondent uses <lifebenefitys.com> to offer it for-sale to the public. Furthermore, Respondent uses the domain name to create a likelihood of confusion. Respondent had actual knowledge of Complainant’s rights in the LIFEBENEFITS mark prior to registration of the at-issue domain name. Additionally, Respondent is engaging in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the LIFEBENEFITS mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the LIFEBENEFITS trademark.
Respondent uses the domain name to redirect traffic to third-parties and to offer the domain name for-sale.
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”).
The at-issue domain name is confusingly similar to a mark in which Complainant has rights.
There is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). In the instant case, Complainant proffers evidence of LIFEBENEFITS having acquired secondary meaning through public and continuous use of the mark as a source identifier for Complainant’s services and further via evidence of Complainant’s extensive promotion of the LIFEBENEFITS mark. Notably, Respondent having failed to respond to the Complaint offers no evidence challenging Complainant’s contentions regarding Complainant’s rights in the LIFEBENEFITS mark. As discussed below, Respondent’s registration and use of the LIFEBENEFITS mark seems to be precisely so that Respondent may deceive third parties into believing that they are dealing with Complainant when they are not. Thus, Respondent recognizes that Complainant has right in the LIFEBENEFITS mark. In light of the foregoing, the Panel concludes that Complainant has acquired sufficient rights in the LIFEBENEFITS mark for the purposes of Policy ¶ 4(a)(i). 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.”).
Respondent’s <lifebenefitys.com> domain name is confusingly similar to Complainant’s LIFEBENEFITS mark. The domain name contains Complainant’s entire trademark with the character “y” inserted therein and with all followed by the “.com” top-level domain name. The differences between the at-issue <lifebenefitys.com> domain name and Complainant’s LIFEBENEFITS mark are insufficient to distinguish the domain name from Complainant’s mark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) that Respondent’s <lifebenefitys.com> domain name is confusingly similar to LIFEBENEFITS. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for <lifebenefitys.com> indicates that ““PremiumDomains ForSale / Tropic Management Systems Ltd.” is the at-issue domain name’s registrant and there is nothing in the record before the Panel that tends to prove that Respondent is known by the <lifebenefitys.com> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the confusingly similar <lifebenefitys.com> domain name to direct internet users to third parties, presumably for profit. The domain name is redirected to an array of websites; a different website each time it is accessed. Respondent’s use of <lifebenefitys.com> in this manner is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Respondent has further used the at-issue domain name to offer it for-sale via a third party reseller for a sum-certain in excess of Respondent’s reasonable domain name related costs. Offering the domain name for-sale additionally indicates Respondent’s lack of rights or legitimate interests in the <lifebenefitys.com> domain name. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that a respondent’s conduct purporting to sell a contested domain name suggested it had no legitimate use for the domain).
As discussed below regarding bad faith, Respondent engages in typosquatting. Respondent’s typosquatting is yet further evidence showing Respondent’s lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii),. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name.
Respondent’s <lifebenefitys.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Complainant shows that Respondent has suffered multiple adverse UDRP decisions as a respondent in previous UDRP disputes. Respondent’s prior cybersquatting demonstrates a pattern of bad faith domain name registration and is evidence of Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Next, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into another’s trademark or related mark and incorporates the misspelled mark into a domain name. Here, in forming the at-issue domain name Respondent inserts a “y” into Complainant’s mark. Respondent hopes that upon reading the domain name the reader will be fooled into overlooking the misspelling and falsely believe the domain name is sponsored by LIFEBENEFITS and/or will mistakenly type a “y” in an attempt to enter Complainant’s trademark as part of an internet search or target. It is telling that the letter “y” is adjacent to “t” on the standard Dvorak keyboard layout thereby making it ripe for striking by the slip of a finger when one is trying to type Complainant’s mark. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Additionally, <lifebenefitys.com> is used to support an advertising platform. Browsing to <lifebenefitys.com> ultimately delivers internet users to an array of changing third-party websites some of which appear to promote malware by inviting user input. By attracting internet users to third party websites by associating the sites’ gateway domain name with Complainant’s mark, Respondent’s further shows its bad faith under Policy ¶ 4(b)(iv) and otherwise. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv));See Nom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been registered, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the LIFEBENEFITS mark at the time it registered <lifebenefitys.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s LIFEBENEFITS trademark and from Respondent’s overt trivial misspelling of the Complainant’s trademark in forming the at-issue domain name. Respondent’s registration and use of <lifebenefitys.com> with knowledge of Complainant’s rights in LIFEBENEFITS further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”); see also, 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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lifebenefitys.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 10, 2023
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