Securian Financial Group, Inc. v. Zhichao Yang
Claim Number: FA2111001974470
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securianrretirementcenter.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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 November 23, 2021; the Forum received payment on November 23, 2021. The Complaint was received in English.
On November 24, 2021, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <securianrretirementcenter.com> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 December 1, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of December 21, 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@securianrretirementcenter.com. Also on December 1, 2021, the Chinese and English 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 December 23, 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Complainant requests that the language of this administrative proceeding shall proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. UDRP Rule 10 (b) states that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The UDRP Rule 10 (c) states that the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel has taken into consideration that the Respondent did not file a response, and thereby also failed to argue that the language of proceeding should be in Chinese language. Although this is not enough alone to treat English as the language of proceeding, it is one indicator that Respondent accepts English.
Here, it shall also be duly noted that the Forum has, on December 23, 2021, communicated in Chinese with the Respondent, informing of the appointment of the Panelist, due date for the Administrative Hearing, and how the parities shall communicate with the Forum – still resulting in no actions or communications from the Respondent. This is a further indication that Respondent has chosen to not make any Response at all, independent of the language of the proceeding.
The Panel further notes that the disputed domain name is includes the US-based Complainant’s trademark and parts of the company name, adding descriptive words, that has no meaning in the Chinese language, and further that the disputed domain name is linked to web sites with message only in English, indicating that the disputed domain name was registered with a more international (English spoken) audience in mind, with knowledge of Complainant’s trademark.
The Panel has weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party, together with the other referred facts and indications in the case. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
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
The Complainant provides retirement and insurance products. Complainant has rights in the SECURIAN trademark based on registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2637008, registered Oct. 15, 2002). Respondent’s domain name <securianrretirementcenter.com> is confusingly similar to Complainant’s SECURIAN trademark as it merely adds the misspelled term “rretirement,” the term “center,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <securianrretirementcenter.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not permitted Respondent to use the SECURIAN trademark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to divert users to a parked page with competing advertisements and hyperlinks.
Respondent registered and uses the <securianrretirementcenter.com> domain name in bad faith. Respondent uses the disputed domain name to divert users seeking Complainant to its own parked page featuring commercial hyperlinks. Additionally, the disputed domain name constitutes typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the SECURIAN trademark based on the disputed domain name’s reference to services that Complainant offers and the competing hyperlinks on the resolving webpage for the domain.
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 <securianrretirementcenter.com> was registered on November 10, 2021.
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 Complainant asserts rights in the SECURIAN trademark based on registration of the trademark with the USPTO (e.g., Reg. No. 2637008, registered Oct. 15, 2002). Registration of a trademark with the USPTO is a valid showing of rights in a trademark. See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO). Since Complainant provides evidence of 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 <securianrretirementcenter.com> domain name is confusingly similar to Complainant’s SECURIAN trademark as it merely adds the misspelled term “rretirement,” the term “center,” and the “.com” gTLD. The addition of terms, misspelled or otherwise, and a gTLD to a trademark may be insufficient to differentiate the disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). In this case, the Panel notes that the added descriptive terms, misspelled or not, are related to the service provided by the Complainant, thereby in fact – if at all considered – rather increase the similarity and reference to the Complainant’s trademark. Thus, the Panel find that the disputed domain name is confusingly similar to the 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 <securianrretirementcenter.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not permitted Respondent to use the SECURIAN trademark. 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 PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a trademark constitutes a further showing that a 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.”). Here, the WHOIS information lists “Zhichao Yang” as the registrant and Complainant asserts it has not authorized Respondent to use the SECURIAN trademark in any way. Thus, the Panel find that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to divert users to a parked page with competing advertisements and hyperlinks. Using a disputed domain name to divert users away from a complainant’s website and to a respondent’s website where it hosts pay-per-click hyperlinks does indeed not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See 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)). Here, Complainant provides screenshots showing the disputed domain name resolves to a parked page with hyperlinks to competing retirement planning and financial services. Thus, the Panel agree with Complainant and find that Respondent is not using the 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).
The Complainant argues that Respondent registered and uses the <securianrretirementcenter.com> domain name in bad faith because Respondent uses the disputed domain name to divert users seeking Complainant to its own parked page featuring commercial hyperlinks. Using a disputed domain name to redirect users to pay-per-click hyperlinks may 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 Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). As noted above, Complainant provides screenshots showing the disputed domain name resolves to a parked page featuring pay-per-click hyperlinks to various financial services. Therefore, the Panel find bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant argues that the disputed domain name constitutes typosquatting. Under Policy ¶ 4(a)(iii), typosquatting is itself evidence of bad faith. See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, Complainant contends the additional letter “R” in “rretirement center” constitutes typosquatting as the domain name <securianrretirementcenter.com> is a slight variation of Complainant’s own <securianretirementcenter.com> domain name. The Panel agrees with the Complainant, and find bad faith.
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the SECURIAN trademark based on the disputed domain name’s reference to services Complainant offers and the competing hyperlinks on the resolving webpage for the domain. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by use the respondent makes of the domain name. See Expensify, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1942074 (Forum June 1, 2021) (finding Respondent had actual knowledge based on the inclusion of a typosquatted version of Complainant’s mark in the disputed domain name). The Panel agrees with the Complainant, finding that Respondent had actual knowledge of Complainant’s rights in the SECURIAN trademark, which is further evidence of 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 <securianrretirementcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 30, 2021
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