Securian Financial Group, Inc. v. yinsi baohu yi kai qi(Hidden by Whois Privacy Protection Service)
Claim Number: FA1709001749555
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is yinsi baohu yi kai qi(Hidden by Whois Privacy Protection Service) (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwsecurian.com>, <ecurian.com>, <secrian.com>, <secuian.com>, <seurian.com>, <sacurian.com>, <securisn.com>, <secyrian.com>, <sicurian.com>, <socurian.com>, <sucurian.com>, and <ssecurian.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 September 18, 2017; the Forum received payment on September 18, 2017.
On September 21, 2017, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that <wwwsecurian.com>, <ecurian.com>, <secrian.com>, <secuian.com>, <seurian.com>, <sacurian.com>, <securisn.com>, <secyrian.com>, <sicurian.com>, <socurian.com>, <sucurian.com>, and <ssecurian.com> are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. 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 September 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2017 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@wwwsecurian.com, postmaster@ecurian.com, postmaster@secrian.com, postmaster@secuian.com, postmaster@seurian.com, postmaster@sacurian.com, postmaster@securisn.com, postmaster@secyrian.com, postmaster@sicurian.com, postmaster@socurian.com, postmaster@sucurian.com, and postmaster@ssecurian.com. Also on September 22, 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.
October 16, 2017, 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 names be transferred from Respondent to Complainant.
A. Complainant
Summarize Complainant's contentions here
i) Complainant, Securian Financial Group, Inc., is in the business of global financial services, providing investment banking, securities, wealth management and investment management services. In connection with its business, Complainant uses the SECURIAN trademark. Complainant has rights in the SECURIAN mark as a result of its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,637,008, registered Sept. 25, 2001). Respondent’s <wwwsecurian.com>, <ecurian.com>, <secrian.com>, <secuian.com>, <seurian.com>, <sacurian.com>, <securisn.com>, <secyrian.com>, <sicurian.com>, <socurian.com>, <sucurian.com>, and <ssecurian.com> each incorporate a misspelled version of the SECURIAN mark and are therefore confusingly similar iterations of the mark.
ii) Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the domain names. Further, Respondent is not making a bona fide offering of goods or services or any legitimate noncommercial or fair use because it is using the domain names primarily for commercial advertising to competing products and services. Specifically, with respect to <ecurian.com>, Respondent’s failure to use also evinces no rights or legitimate interests.
iii) Respondent registered and used the domain names in bad faith. Respondent’s registration of numerous domain names indicates a pattern of bad faith registrations under Policy ¶ 4(b)(ii). Additionally, inclusion of competing content indicates an intent to disrupt the business of Complainant, presumably for the purpose of commercially gaining, indicating both Policy ¶¶ 4(b)(iii) and (iv) bad faith. Respondent also had actual or constructive knowledge of Complainant and Complainant’s rights in the SECURIAN mark, showing bad faith under Policy ¶ 4(a)(iii). Lastly, Respondent’s registration of several typo-squatted versions of Complainant’s mark also constitutes nonexclusive evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes the following registration dates for the domain names:
<wwwsecurian.com>....................................................................... January 13, 2017;
<ecurian.com>................................................................................. February 27, 2017;
<secrian.com>.................................................................................. February 27, 2017;
<secuian.com>................................................................................. February 27, 2017;
<seurian.com>................................................................................. February 27, 2017;
<sacurian.com>............................................................................... February 27, 2017;
<securisn.com>............................................................................... February 27, 2017;
<secyrian.com>.................................................................................... March 31, 2017;
<sicurian.com>..................................................................................... March 31, 2017;
<socurian.com>.................................................................................... March 31, 2017;
<sucurian.com>............................................................................ March 31, 2017; and
<ssecurian.com>.................................................................................. March 31, 2017.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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."
Preliminary Issue: Language of the Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding 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. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. 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.”). Complainant attests that each website is written in English, and the copyright notices and Privacy Policy are also 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. In the absence of Response and no objection to the Complainant's request for the language of proceeding, after considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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 it has rights in the SECURIAN mark as a result of its registration with the USPTO (Reg. No. 2,637,008, registered Sept. 25, 2001). Registration with the USPTO is sufficient in conferring rights in a mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel here finds that Complainant’s evidence of a USPTO registration for the SECURIAN mark is sufficient to establish rights under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <wwwsecurian.com>, <ecurian.com>, <secrian.com>, <secuian.com>, <seurian.com>, <sacurian.com>, <securisn.com>, <secyrian.com>, <sicurian.com>, <socurian.com>, <sucurian.com>, and <ssecurian.com> each incorporate a misspelled version of the SECURIAN mark and are therefore confusingly similar iterations of the mark. Mere misspellings to fail in creating distinction. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Likewise, the Panel finds each domain name represents a common misspelling of the SECURIAN mark, and therefore are confusingly similar under 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), 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 asserts that Respondent has no rights or legitimate interests in the domain names. To begin, Complainant argues Respondent is not commonly known by the domain names. Complainant also claims it has not licensed or permitted to use the SECURIAN mark in any respect. The Panel notes that the WHOIS information of record identifies registrant as “yinsi baohu yi kai qi(Hidden by Whois Privacy Protection Service).” Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the< chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel here finds that Respondent is not commonly known by the disputed domain name.
Further, Complainant argues Respondent is not making a bona fide offering of goods or services or any legitimate noncommercial or fair use because it is using the domain names primarily for commercial advertising to competing products and services. Competing hyperlinks and advertisements may not amount to rights and legitimate interests. 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.”). The Panel notes hyperlinks such as “Insurance Companies,” “Insurance Insurance,” and “Insurance Providers.” The Panel agrees Respondent’s arrangement of competing hyperlinks does not amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Additionally, with respect to <ecurian.com>, Complainant claims Respondent’s failure to use also evinces no rights or legitimate interests. The use of a domain name that is confusingly similar to a complainant’s trademark without a demonstrable intention to make use of the disputed domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the< bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant contends that Respondent has caused <ecurian.com> to resolve to a blank page with no recognizable content (displaying, “This webpage is not available”). The Panel here finds that such behavior by a respondent is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Complainant contends Respondent registered and used the domain names in bad faith. First, Complainant argues Respondent’s registration of numerous domain names indicates a pattern of bad faith registrations under Policy ¶ 4(b)(ii). Registration of multiple infringing domain names may return a finding of Policy ¶ 4(b)(ii) bad faith. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). The Panel notes that, while a significantly greater number of domain names are involved in the present dispute than Microsoft Corporation and Skype, and all of which incorporate variants of Complaint’s SECURIAN mark, and therefore conclude that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(ii).
Additionally, Complainant contends inclusion of competing content indicates an intent to disrupt the business of Complainant, presumably for the purpose of commercially gaining, indicating both Policy ¶¶ 4(b)(iii) and (iv) bad faith. Competing hyperlinks and advertising may implicate both prongs of the Policy. 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).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel recalls hyperlinks such as “Insurance Companies,” “Insurance Insurance,” and “Insurance Providers” resolve on Internet users’ computers when the domain names are entered. The Panel agrees that these links compete with Complainant’s business, and therefore that Respondent registered and used the domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the SECURIAN mark when Respondent registered the disputed domain names. Complainant further argues that the advertisements for insurance offerings, which represent the same type of services offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights. The Panel does not agree with Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, concluding that Respondent registered the domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Lastly, Complainant makes a typosquatting argument. Typosquatting is defined as “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 or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.” Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016). Here, the Panel notes typographical errors which include the addition or removal of a single letter, the replacement of a vowel, or the removal of punctuation (period after “www”). The Panel agrees that these represent mere typographical errors or misspellings of Complainant’s mark, and bear on Respondent’s bad faith intent under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that <wwwsecurian.com>, <ecurian.com>, <secrian.com>, <secuian.com>, <seurian.com>, <sacurian.com>, <securisn.com>, <secyrian.com>, <sicurian.com>, <socurian.com>, <sucurian.com>, <ssecurian.com> be TRANSFERRED from Respondent to Complainant.
<<Ho Hyun Nahm, Esq.>>, Panelist
Dated: <<October 23, 2017>>
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