Securian Financial Group, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2207002003673
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <contractbenefitssecurian.com>, registered with Media Elite Holdings Limited.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2022; the Forum received payment on July 11, 2022.
On July 12, 2022, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <contractbenefitssecurian.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 July 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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@contractbenefitssecurian.com. Also on July 13, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant, Securian Financial Group, Inc., uses its SECURIAN mark in connection with retirement, insurance, and investment products. Complainant claims rights in the SECURIAN mark through its registration with the USPTO (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). Respondent’s <contractbenefitssecurian.com> domain name is identical or confusingly similar to Complainant’s mark because it incorporates the mark in its entirety and adds the generic terms “contract” and “benefits, as well as the generic top-level domain (“gTLD”) “.com”.
Respondent lacks rights and legitimate interests in the <contractbenefitssecurian.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its SECURIAN mark. Respondent does not use the domain name in connection with any bona fide offering of goods or services, or a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name’s resolving page to seek pay per click revenue. Additionally, Respondent does not make active use of the disputed domain name.
Respondent registered and uses the <contractbenefitssecurian.com> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by displaying hyperlinks to Complainant’s competitors. Moreover, Respondent uses the confusingly similar disputed domain name to attract users to a website that displays hyperlinks for commercial gain. Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SECURIAN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Securian Financial Group, Inc., uses its SECURIAN marks in connection with retirement, insurance, and investment products. Complainant claims rights in the SECURIAN mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). Respondent’s <contractbenefitssecurian.com> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <contractbenefitssecurian.com> domain name on April 14, 2022.
Respondent lacks rights and legitimate interests in the <contractbenefitssecurian.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its SECURIAN mark in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, or a legitimate non-commercial or fair use. Rather, Rather, Respondent uses the disputed domain name’s resolving page to seek pay per click revenue. Additionally, Respondent does not make active use of the disputed domain name.
Respondent registered and uses the <contractbenefitssecurian.com> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by displaying hyperlinks to Complainant’s competitors. Moreover, Respondent uses the confusingly similar nature of the disputed domain name to attract users to a website that displays hyperlinks for commercial gain. Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SECURIAN mark.
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, Securian Financial Group, Inc., uses its SECURIAN marks in connection with retirement, insurance, and investment products. Securian has served clients since 1880 and has over sixty-four billion dollars in assets under management. Complainant has rights in the SECURIAN mark through its registration with the USPTO (e.g., Reg. No. 2,637,008, registered Oct. 15, 2002). Additionally, Complainant has common law rights in the SECURIAN mark. Respondent’s <contractbenefitssecurian.com> domain name is confusingly similar to Complainant’s mark, because it incorporates the mark in its entirety and adds the generic terms “contract” and “benefits, as well as the generic top-level domain (“gTLD”) “.com”.
Respondent lacks rights or legitimate interests in the <contractbenefitssecurian.com> domain name because Respondent is not commonly known by the disputed domain name, Complainant’s prior rights in the mark precede Respondents registration, and Complainant has not authorized or licensed to Respondent any rights in the SECURIAN mark. Information that reveals that a registrant’s name is materially different from the disputed domain name may be used to determine that a respondent is not commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Further, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by 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)”). The WHOIS information and other information on the record lists the registrant for the disputed domain name as “Domain Administrator.” See WHOIS information; see also Registrar Verification Email. Additionally, there is no other evidence to suggest that Respondent was authorized to use the SECURIAN mark. Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent does not use the <contractbenefitssecurian.com> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii). A respondent’s use of a disputed domain name’s resolving website to host hyperlinks to third party-sites to generate pay-per-click revenue generally does not qualify as either a bona fide offering of goods and services, or a 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). Respondent uses the landing page for the <contractbenefitssecurian.com> domain name to seek pay-per-click revenue from links to third-party sites.
Furthermore, failure to make an active use of a domain name generally does not qualify as either a bona fide offer, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services.”). Complainant attached screenshots of the resolving website for the <contractbenefitssecurian.com> domain name, which does not resolve to an active website.
Respondent uses the <contractbenefitssecurian.com> to disrupt Complainant’s business with competing hyperlinks for commercial benefit in bad faith pursuant to Policy ¶¶ 4(b)(iii) and 4(b)(iv). Use of a disputed domain name to divert Internet users to a complainant’s competitors constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
Respondent uses Complainant’s SECURIAN mark in the <contractbenefitssecurian.com> domain name in bad faith, financially benefitting from the confusing similarity between the domain name and Complainant’s mark. A respondent’s use of a domain name that is obviously connected to a complainant’s well-known mark, and redirects users to pay-per-click hyperlinks, shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees. Respondent’s registered domain name incorporates the entirety of Complainant’s SECURIAN mark to deceive users with a false impression of affiliation with Complainant, and potentially financially benefits from the confusion by hosting pay-per-click hyperlinks. Respondent registered the domain to trade on Complainant’s goodwill associated with the SECURIAN mark by creating a likelihood of confusion as to the source of the website.
Also, Respondent registered the <contractbenefitssecurian.com> domain name with actual knowledge of Complainant’s mark, thereby registering and using the domain in bad faith under Policy ¶ 4(a)(iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <contractbenefitssecurian.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 19, 2022
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