Securian Financial Group, Inc. v. JH Kang
Claim Number: FA2012001926692
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is JH Kang (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securianservice.co>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 30, 2020; the Forum received payment on December 30, 2020.
On December 30, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <securianservice.co> 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 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2021 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@securianservice.co. Also on January 4, 2021, 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 January 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant provides financial security to customers through insurance, investment, and retirement products. Complainant has rights in the SECURIAN trademark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). Respondent’s <securianservice.co> domain name is identical and confusingly similar to Complainant’s SECURIAN trademark because the addition of the “.co” top-level domain “TLD” is immaterial.
Respondent does not have rights or legitimate interests in the <securianservice.co> domain name. Respondent is not licensed to use Complainant’s SECURIAN trademark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host third-party advertising links. Additionally, Respondent offers to sell the disputed domain name.
Respondent registered and uses the <securianservice.co> domain name in bad faith. Respondent offers the domain name for sale in excess of registration costs. Further, Respondent displays commercial advertisements at the disputed domain. Finally, Respondent had actual knowledge of Complainant’s rights in the SECURIAN trademark when the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,637,006 SECURIAN FINANCIAL SERVICES (word), registered October 15, 2002 for services in class 36;
No. 2,637,008 SECURIAN (word), registered October 15, 2002 for services in class 36;
No. 2,637,004 SECURIAN (fig), registered October 15, 2002 for services in class 36; and
No. 4,831,953 SECURIAN (word), registered October 13, 2015 for services in class 35.
The disputed domain name <securianservice.co> was registered on November 30, 2020.
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 the registration with the USPTO (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). See Compl. Ex. 1B. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of its registration of the SECURIAN trademark with the USPTO, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <securianservice.co> domain name is identical and confusingly similar to Complainant’s SECURIAN trademark because the addition of the “.co” top-level domain “TLD” is immaterial to confusing similarity.
The Panel also note that the disputed domain name <securianservice.co> adds the term “service” to the trademark. Per Policy ¶ 4(a)(i), the addition of a generic or descriptive term and a TLD is insufficient to negate confusing similarity between a domain name and a mark. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). Complainant additionally notes that the disputed domain name differs from Complainant’s own <securianservice.com> domain name by only a single letter.
Thus, the Panel agrees with Complainant and find 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 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 does not have rights or legitimate interests in the <securianservice.co> domain name because Respondent is not licensed to use Complainant’s SECURIAN trademark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a trademark constitutes further showing that a respondent lacks rights in a mark. See 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 WHOIS information of record lists “JH Kang” as the registrant and no information suggest that Complainant has licensed or authorized Respondent to use the SECURIAN trademark. Thus, the Panel find that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
The Complainant also argues that Respondent does not use the <securianservice.co> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, but instead third-party advertising links. Use of a disputed domain name to host hyperlinks is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the resolving webpage containing commercial advertising links to competitive products and services. Therefore, the Panel find that Respondent is not using the disputed domain name for 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 further argues that Respondent’s offer to sell the <securianservice.co> domain name shows that Respondent lacks rights and legitimate interests. Offering to sell a disputed domain name may further suggest that a respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot of the domain name listed for sale on a domain marketplace for $799 USD. Thus, the Panel agrees that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <securianservice.co> domain name in bad faith because Respondent offers the domain name for sale in excess of registration costs. An offer to sell a disputed domain name for more that the costs associated with registration suggests bad faith pursuant to Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i). ”). As previously noted, Complainant provides a screenshot of the domain name listed for sale on a domain marketplace for $799 USD. The Panel therefore finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(b)(i).
The Complainant also argues that Respondent registered and uses the <securianservice.co> domain name in bad faith since Respondent displays commercial advertisements at the connecting web site. Use of a disputed domain name to display pay-per-click hyperlinks relating to competing goods or services 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 block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“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 mark of another.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). As previously mentioned, Complainant provides screenshots of the links on the resolving webpage and claims that those links directly compete with Complainant and its business. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the SECURIAN trademark when the <securianservice.co> domain name was registered. Actual knowledge may be evidence of bad faith under Policy ¶ 4(a)(iii) and can be found from the entirety of circumstances surrounding domain name registration and use. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”) see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Complainant argues that Respondent’s registration of a domain name that differs from Complainant’s own domain name by a single letter, in addition to Respondent’s use of the domain to display competing links, shows actual knowledge. The Panel agrees that actual knowledge is evident, and finds bad faith registration and use 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 <securianservice.co> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 4, 2021
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