Securian Financial Group, Inc. v. Zhichao Yang
Claim Number: FA1712001762306
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 <securianretiermentcenter.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2017; the Forum received payment on December 11, 2017.
On December 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <securianretiermentcenter.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 December 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2018 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@securianretiermentcenter.com. Also on December 13, 2017, 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 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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., has served clients since 1880 and has $64 billion of assets under management. Complainant provides financial security to over 15 million people nationwide through insurance, investment, and retirement products. Complainant uses its SECURIAN mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,637,006, registered Oct. 15, 2002). Respondent’s <securianretiermentcenter.com> domain name is confusingly similar to Complainant’s mark because it merely appends the generic terms “retierment” (spelled incorrectly) and “center” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the <securianretiermentcenter.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain name, as the WHOIS information of record lists “Zhichao Yang” as the registrant. Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <securianretiermentcenter.com> domain name to divert Internet users to Respondent’s website, which features commercial advertising links to competitive products and services.
Respondent registered and is using the <securianretiermentcenter.com> domain name in bad faith. Respondent uses the domain name to intentionally attract Internet users for commercial gain by causing confusion as to the source of the website. Respondent also had knowledge of Complainant’s rights in the SECURIAN mark at the time it registered and used the domain name. Further, the domain name is a typosquatted version of Complainant’s <securianretirementcenter.com> registered domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <securianretiermentcenter.com>domain name.
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.
Since Respondent did not 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant registered its SECURIAN mark with the USPTO (e.g., Reg. No. 2,637,006, registered Oct. 15, 2002. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the SECURIAN mark per Policy ¶ 4(a)(i).
Complainant next claims Respondent’s <securianretiermentcenter.com> domain name is confusingly similar to Complainant’s SECURIAN mark because it merely appends the generic terms “retierment” (spelled incorrectly) and “center” and the gTLD “.com” to the fully incorporated mark. The addition of a misspelled generic term and gTLD do not negate confusing similarity. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <securianretiermentcenter.com> domain name is confusingly similar to Complainant’s SECURIAN mark.
Complainant has proved this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its SECURIAN mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <securianretiermentcenter.com> lists ““Zhichao Yang” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <securianretiermentcenter.com> domain name.
Complainant contends that Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <securianretiermentcenter.com> domain name to divert internet users to Respondent’s website, which features commercial advertising links to competitive products and services. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not 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)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 contends that screenshots of the website resolving from the <securianretiermentcenter.com> domain name indicate that the site features links for services that directly compete with Complainant’s financial services business such as “401K Retirement Plan,” “401K Rollover,” and “Insurance Retirement Plan.” Therefore, the Panel finds that Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant contends that the <securianretiermentcenter.com> domain name is part of a pattern of bad faith registration and use of infringing domain names. Evidence of a respondent’s history of adverse UDRP rulings is sufficient to establish a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Therefore the Panel finds bad faith under the provision.”); see also Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).” Complainant contends that Respondent was also the respondent in Capital One Financial Corp. v. Zhichao Yang, FA1583406 (Forum Nov. 17, 2014). The Panel finds that Respondent has established a pattern of bad faith registration and use and that the current domain was thus registered in bad faith as part of that pattern.
Complainant alleges that Respondent registered and is using the <securianretiermentcenter.com> domain name in bad faith by creating a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein can evidence bad faith per Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). As mentioned previously, Complainant argues that screenshots of the <securianretiermentcenter.com> domain name resolving website indicate that the site features competing hyperlinks from which Respondent most likely benefits commercially. The Panel finds that Respondent uses the domain name to create confusion in users seeking Complainant in bad faith pursuant to Policy ¶ 4(b)(iv)
Further, Complainant argues Respondent registered the domain name with actual knowledge of Complainant’s rights in the SECURIAN mark. A respondent may be presumed to have actual knowledge of a complainant’s rights in a mark when the domain name is used to purposely host links related to the complainant’s field of operation. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). As mentioned previously, Complainant argues that screenshots of the <securianretiermentcenter.com> domain name’s resolving website indicate that the site features links that advertise services that directly compete with Complainant’s financial services business. The Panel agrees with Complainant that Respondent did have knowledge of Complainant’s mark prior to registering the domain name at issue and finds that this demonstrates bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that the domain name is a typosquatted version of Complainant’s <securianretirementcenter.com> domain name. Typosquatting is the deliberate introduction of typographical errors or misspellings in a domain name, and can be independent evidence of bad faith. See Twitter, Inc. v. Domain Admin, FA1503001607451 (Forum Apr. 2, 2015) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited. Here, Respondent simply changes a single letter in Complainant’s trademark before incorporating the mark into the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith.”). Complainant alleges that Respondent’s <securianretiermentcenter.com> domain name contains a misspelled version of the term “retirement,” which is a salient feature in one of Complainant’s domain names. The Panel agrees that Respondent engaged in typosquatting and finds that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proved this element.
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 <securianretiermentcenter.com>domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 8, 2018
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