Securian Financial Group, Inc. v. Lisa Katz / Domain Protection LLC
Claim Number: FA1810001811134
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securianretirmentcenter.com>, registered with Sea Wasp, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 10, 2018; the Forum received payment on October 10, 2018.
On October 15, 2018, Sea Wasp, LLC confirmed by e-mail to the Forum that the <securianretirmentcenter.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 October 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@securianretirmentcenter.com. Also on October 19, 2018, 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 November 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 the SECURIAN mark in connection with retirement, insurance, and investment products. Complainant has rights in the SECURIAN mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,637,008 registered Oct. 15, 2002). Respondent’s <securianretirmentcenter.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the SECURIAN mark in its entirety in the domain name and adds the misspelled generic term “retirment” (as opposed to “retirement”), the generic term “center,” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <securianretirmentcenter.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users to a website that features pay-per-click advertisements.
Respondent registered and uses the <securianretirmentcenter.com> domain in bad faith. Additionally, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s website, which features pay-per-click advertising links directing users to Complainant’s competitors. Moreover, Respondent engages in typosquatting. Further, Respondent had actual knowledge of Complainant’s rights in the SECURIAN mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Securian Financial Group, Inc. (“Complainant”), of St. Paul, Minnesota, USA. Complainant is the owner of the domestic registration for the mark SECURIAN and variations thereof, comprising the family of Securian marks. Complainant has continuously used the SECURIAN mark since at least as early as 2001, in connection with its provision of retirement, insurance, and investment goods and services.
Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), of Dallas, Texas, USA. Respondent’s registrar’s address is listed Metarie, LA, USA. The
Panel notes the <securianretirmentcenter.com> domain name was registered on or about May 6, 2006.
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 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 claims rights in the SECURIAN mark based upon its registration of the mark with the USPTO. Registration with the USPTO generally establishes rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides printouts from the USPTO website showing its registrations of its marks (e.g., Reg. No. 2,637,008 registered Oct. 15, 2002). The Panel here finds that Complainant has rights in the SECURIAN mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <securianretirmentcenter.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the SECURIAN mark in its entirety in the domain name and adds generic terms and a gTLD. The addition of generic or descriptive terms may be insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). 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). Additionally, the addition of a gTLD is irrelevant under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Here, Respondent incorporates the SECURIAN mark in its entirety in the domain name and adds the misspelled generic term “retirment” (as opposed to “retirement”), the generic term “center,” and the “.com” gTLD. The Panel here finds that Respondent’s <securianretirmentcenter.com> domain name is confusingly similar to Complainant’s SECURIAN mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent lacks rights and legitimate interests in the <securianretirmentcenter.com> domain name. Specifically, Complainant claims Respondent is not authorized or permitted to use Complainant’s SECURIAN mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). 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)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies the Respondent as “Lisa Katz / Domain Protection LLC,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain. The Panel here finds that the Respondent lacks rights and legitimate interests in the <securianretirmentcenter.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <securianretirmentcenter.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain to host pay-per-click advertising links. Use of a disputed domain name to host advertising links may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant…The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant provides evidence that the disputed domain name’s resolving website features Complainant’s SECURIAN mark along with hyperlinks related to Complainant’s business. The Panel here finds that Respondent uses the <securianretirmentcenter.com> domain to host pay-per-click advertising links, and therefore fails to use the disputed domain in connection with 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).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <securianretirmentcenter.com> domain name in bad faith because Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to Respondent’s website, which features advertising links. Complainant claims that some of the links redirect users to Complainant’s competitors’ websites. Use of a disputed domain to divert users to a website featuring advertising links and ultimately divert users to a complainant’s competitors may evince bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Aizhenhua / Aizhenhua, FA140700157872 (Forum Sept. 17, 2014) (finding that because the complainant operated in the field of automobile parts and services and the respondent was using the disputed domain name to display hyperlinks to companies that operate in the same field, the respondent was disrupting the complainant’s business, demonstrating bad faith according to Policy ¶ 4(b)(iii)); 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.”). The Panel again notes that Complainant provides a screenshot of the disputed domain name’s resolving webpage, which features links related to Complainant’s business. Complainant asserts the links lead to additional pages of links, some of which ultimately lead users to Complainant’s competitors. The Panel here finds that Respondent uses the <securianretirmentcenter.com> domain name to divert users to Complainant’s competitors, thereby supporting a finding of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant argues Respondent had actual knowledge of Complainant’s rights in the SECURIAN mark prior to registering the <securianretirmentcenter.com> domain name. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established by the respondent’s use of the mark at the disputed domain. 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). Here, Complainant’s screenshot of the disputed domain name’s resolving webpage show links related to Complainant’s business. Additionally, Complainant cites the confusing similarity between its SECURIAN mark and Respondent’s <securianretirmentcenter.com> domain name. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the SECURIAN mark prior to registering the <securianretirmentcenter.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <securianretirmentcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 26, 2018
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