Securian Financial Group, Inc. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation
Claim Number: FA1801001766268
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwsecurianretirementcenter com> and <securian401k.com. >, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2018; the Forum received payment on January 10, 2018.
On January 11, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wwwsecurianretirementcenter.com> and <securian401k.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 January 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 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@wwwsecurianretirementcenter.com and postmaster@securian401k.com. Also on January 12, 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.
A timely Response was received and determined to be complete on February 1, 2018.
On February 06, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, 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.
Complainant requests that the domain names wwwsecurianretirementcenter com> and <securian401k.com be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the SECURIAN mark used in connection with retirement, insurance, and investment products. Complainant has used the mark in commerce continuously since at least as early as 2001. Complainant has rights in mark through 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). See Compl. Ex. 1B. Respondent’s <wwwsecurianretirementcenter.com> and <securian401k.com> domain names are confusingly similar to Complainant’s mark as they each contain the addition of generic terms and append the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the infringing domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the resolving webpage to offer advertising links to services in competition with Complainant. See Compl. Exs. 7A & 7B. Further, Respondent listed the domain names for sale, demonstrating a willingness to part with the domain names. See Compl. Exs. 6A-6B, 9A-9B.
Respondent registered and uses the <wwwsecurianretirementcenter.com> and <securian401k.com> domain names in bad faith as Respondent indicates a willingness to sell the domain names. See Compl. Exs. 6A-6B, 9A-9B. Further, Respondent disrupts Complainant’s business by creating a likelihood of confusion as to the source of the websites while offering competing hyperlink advertisements. See Compl. Exs. 7A & 7B. Additionally, Respondent engages in typosquatting to capitalize on common typing errors committed by users seeking Complainant’s services. Finally, the content on the site, referring to Complainant’s financial and investment services, shows Respondent’s knowledge of Complainant and its SECURIAN brand products. See Compl. Exs. 7A & 7B.
.
B. Respondent
Respondent respectfully requests that the transfer be ordered without findings of fact or conclusions as to Policy 4(a) other than the domain names be transferred.
Respondent registered the domain names on the following dates: <wwwsecurianretirementcenter.com> (July 31, 2015) and <securian401k.com> (July 29, 2016). See Compl. Exs. 6A-6B.
1. Complainant has trademark rights in the SECURIAN marks in accordance with Policy 4(a)(i).
2. Respondent registered the disputed domains name of <wwwsecurianretirementcenter.com> and <securian401k.com> after Complainant acquired trademark rights in the SECURIAN marks.
3. Respondent’s disputed domain names of <wwwsecurianretirementcenter.com> and <securian401k.com> are identical or confusingly similar to Complainant’s SECURIAN marks, in accordance with Policy 4(a)(i).
4. Respondent has consented to the transfer of disputed domain names of <wwwsecurianretirementcenter.com> and <securian401k.com>.
PRELIMINARY ISSUES
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii, when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In this case, Respondent, in its Response, summarily agreed to transfer the disputed domain names, as a matter of course. This consent to transfer mirrors Complainant’s requested relief.
Thus, the Panel holds in accord with the rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015) (where the Respondent agrees to transfer the at-issue domain names to the Complainant) and will not analyze prongs ¶¶4(a)ii or 4(a)iii of the Policy.
DISCUSSION
As a necessary prerequisite to Complainant obtaining its requested relief, even where Respondent agrees to such relief, Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name.
Complainant, Securian Financial Group, Inc., (hereinafter “Securian”) has presented credible evidence that it is the owner of the SECURIAN trademarks
used in connection with retirement, insurance, and investment products. Securian has used the SECURIAN Marks in commerce continuously since at
least as early as 2001. And Panel notes that Complainant’s Exhibit 1B evidences that Complainant has rights in the SECURIAN Marks through 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 Domain Names of <wwwsecurianretirementcenter.com> and <securian401k.com are confusingly similar to the SECURIAN Marks because
they differ only by the addition of the commonly used “www” and the addition of the term 401k, which is merely a service Securian provides under its SECURIAN
Marks. Therefore, the Domain Names are confusingly similar to the SECURIAN Marks, in accordance with Policy Paragraph 4(a)(i).
Respondent’s consent to transfer the <wwwsecurianretirementcenter.com> and <securian401k.com> domain names thus empowers the Panel to order that the <<wwwsecurianretirementcenter.com> and <securian401k.com> domain names be transferred to Complainant, without further analysis regarding paragraphs 4(a)(ii) or 4(a)(iii) of the Policy.
Having concluded that Respondent consents to Complainant’s request that the <wwwsecurianretirementcenter.com> and <securian401k.com> domain names be transferred to Complainant, the Panel GRANTS Complainant’s request.
Accordingly, it is Ordered that the <<wwwsecurianretirementcenter.com> and <securian401k.com> domain names be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: February 20, 2018
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