Security Group, Inc. d/b/a Security Finance v. Zhi Chao Yang
Claim Number: FA2105001945105
Complainant is Security Group, Inc. d/b/a Security Finance (“Complainant”), represented by Jason A. Pittman of Dority & Manning, P.A., South Carolina, USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <secutity-finance.com>, registered with Chengdu West Dimension Digital Technology Co., 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2021; the Forum received payment on May 14, 2021. The Complaint was received in English.
On June 8, 2021, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <secutity-finance.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 June 15, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 6, 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@secutity-finance.com. Also on June 15, 2021, the Chinese language 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 July 15, 2021, Complainant’s Additional Submission was received. Complainant states that this submission was served upon Respondent via email simultaneously.
On July 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant contends that Respondent is capable of understanding English because Respondent maintains the disputed domain name and all content thereon in English. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
i) Complainant and its operating subsidiaries have provided financial services to customers for more than 60 years. Complainant has rights in the SECURITY FINANCE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,011,189, registered March 17, 2020). The disputed domain name is confusingly similar to Complainant’s SECURITY FINANCE mark as it contains a misspelled version of Complainant’s mark while adding the top-level domain “.com.”
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the SECURITY FINANCE mark. Additionally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses it in connection with competitive hyperlinks. Additionally, Respondent engaged in typosquatting.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name in connection with competitive hyperlinks. Respondent also had constructive and actual knowledge of Complainant’s rights in the SECURITY FINANCE mark prior to registering the disputed domain name, evidenced by Complainant’s trademark registrations and Respondent’s use of competitive hyperlinks. Finally, Respondent engaged in typosquatting and failed to respond to Complainant’s cease and desist letter.
B. Respondent
Respondent did not submit a response in this proceeding.
C. Complainant’s Additional Submission
i) There is no coincidence in the fact that the disputed domain was created on May 15, 2020, a very short time after Complainant’s U.S. Trademark Registration issued on March 17, 2020. Registration of a domain name representing an intentional misspelling of Complainant’s SECURITY FINANCE trademark, despite knowledge of Complainant’s rights, is evidence of bad faith registration.
ii) Respondent never replied to Complainant’s cease and desist letter.
iii) Respondent has engaged in a pattern of bad faith as evidenced by his involvement in prior adverse UDRP decisions.
1. The disputed domain name was registered on May 15, 2020.
2. Complainant has established rights in the SECURITY FINANCE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,011,189, registered March 17, 2020).
3. Respondent has engaged in a pattern of bad faith.
4. The disputed domain resolves to a website with commercial links, some of which are related to the Complainant’s potential competitors.
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 SECURITY FINANCE mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 6,011,189, registered March 17, 2020). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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.”). Therefore, the Panel finds Complainant has demonstrated rights in the SECURITY FINANCE mark per Policy ¶ 4(a)(i).
Complainant argues the disputed domain name is confusingly similar to Complainant’s SECURITY FINANCE mark as it contains a misspelled version of Complainant’s mark. Respondent merely substitutes the letter “T” for an “R” while adding the top-level domain “.com.” Adding gTLD to a misspelled mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per 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 contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the SECURITY FINANCE mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is 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 complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “Zhi Chao Yang,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the SECURITY FINANCE mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it in connection with competitive hyperlinks. Using a disputed domain name in connection with competitive hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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.”). Complainant provides a screenshot showing the disputed domain name resolves to a website that purports to offer content and links which reference financial services and these links are intended to mislead parties to believe the website is associated with SECURITY FINANCE and/or its financial services. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues that Respondent further lacks rights or legitimate interests in the disputed domain name as Respondent engaged in typosquatting. The purposeful misspelling of a mark, or typosquatting, can demonstrate a respondent lacks rights or legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Here, Complainant argues Respondent engaged in typosquatting by replacing the letter “R” with the letter “T” to form the word “secutity” rather than security. Therefore, the Panel finds Respondent further lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
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 name.
Complainant contends Respondent registered and uses the disputed domain name in bad faith as Respondent uses it in connection with competitive hyperlinks. The disputed domain resolves to a website with commercial links, some of which are related to the Complainant’s potential competitors. Using a disputed domain name in connection with competitive hyperlinks can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (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 American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 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)(iv)”). The Panel recalls Complainant provides a screenshot showing the disputed domain name resolves to a website featuring competitive hyperlinks. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (4)(b)(iv).
Complainant contends Respondent registered and uses the disputed domain name in bad faith as Respondent engaged in typosquatting. Under Policy ¶ 4(a)(iii), typosquatting can demonstrate bad faith registration and use. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith); see also Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). The Panel notes that Complainant argues Respondent engaged in typosquatting by misspelling Complainant’s mark (replacing the letter “R” for the letter “T”). The Panel finds Respondent’s engagement in typosquatting constitutes bad faith registration and use of the disputed domain name per Policy ¶ 4(a)(iii).
Complainant argues that Respondent has been involved in more than 100 UDRP proceedings before the Forum where bad faith was found. The Panel agrees and finds that the pattern of bad faith registration and use supports that Respondent registered the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <secutity-finance.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 19, 2021
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