Securian Financial Group, Inc. v. domain buy / buy domain
Claim Number: FA1801001766538
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is domain buy / buy domain (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securian.biz>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2018; the Forum received payment on January 11, 2018«DateHardCopy».
On Jan 14, 2018, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <securian.biz> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 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@securian.biz. Also on January 15, 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 February 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 its clients since 1880, providing financial security through insurance, investment, and retirement 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 <securian.biz> domain name is identical to Complainant’s SECURIAN mark, as the domain name is consists entirely of the mark and the “.biz” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <securian.biz> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the SECURIAN mark for any purpose. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the name was registered primarily for the purpose of commercial gain by forwarding Internet users to its adult-oriented website that contains commercial advertising.
Respondent registered and is using the <securian.biz> domain name in bad faith. Its registration of the domain name is part of a pattern of bad faith registration targeting multiple brands and marks. Additionally, Respondent’s use of the domain name to confuse and divert Internet users for commercial gain serves to disrupt Complainant’s business. Further, it is clear that Respondent had actual knowledge of Complainant’s rights in the SECURIAN mark at the time it registered and subsequently used the name.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the disputed domain name on January 24, 2017.
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.”).
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant claims rights in the SECURIAN mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,637,008, registered Oct. 15, 2002). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the SECURIAN mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <securian.biz> domain name is identical to the SECURIAN mark, as the name consists entirely of the mark and the “.biz” gTLD. The addition of a gTLD to a mark is an irrelevant change and not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Workday, Inc. v. Emily Vaguine, FA 1716531 (Forum Mar. 15, 2017) (“The at-issue domain name consists of Complainant’s entire WORKDAY trademark followed by the top-level domain name “.biz”. The difference between the domain name and Complainant’s trademark, resulting from the addition of a top-level (necessary to create the domain name), is insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <workday.biz> domain name is identical to Complainant’s WORKDAY mark.”). The Panel therefore determines that the<securian.biz> domain name is identical to the SECURIAN mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <securian.biz> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SECURIAN mark for any purpose. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies Respondent as “domain buy / buy domain” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <securian.biz> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <securian.biz> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the domain name resolves to an adult-oriented website displaying commercial advertisements. Use of a domain name to divert Internet users to an adult-oriented website for commercial gain is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant claims that the domain name resolves to Respondent’s website, which displays adult-oriented images and commercial advertisements and links, from which Respondent presumably benefits commercially. The Panel agrees that Respondent’s use of the <securian.biz> domain name does not amount to a bona fide offering of goods or services or legitimate noncommercial or fair use, and indicates that Respondent lacks rights or legitimate interests in the name.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration of the <securian.biz> domain name is part of a pattern of bad faith registration and use. A pattern of bad faith registration can be established by a showing of that the respondent has registered multiple domain name infringing on famous marks, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses). Complainant includes a list of domain names owned by Respondent, domain buy / buy domain, which Complainant claims infringe on famous marks. The Panel therefore determines that the registration and use of the <securian.biz> domain name is part a of pattern and is evidence of bad faith per Policy ¶ 4(b)(ii).
Complainant also contends Respondent’s bad faith is indicated by its use of the <securian.biz> domain name to resolve to an adult-oriented website which displays commercial advertising links. Use of a domain name to divert Internet users for commercial gain can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site); see also 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.”). Complainant contends the domain name resolves to a webpage displaying advertisements, in a presumed attempt to disrupt Complainant’s business for commercial gain. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant further argues Respondent’s use of the domain name to resolve to an adult-oriented website indicates the name was registered and has been used in bad faith. Use of a domain name to host adult-oriented content can be independent evidence of bad faith per Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”); H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”). In light of the evidence submitted by Complainant, the Panel finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that in light of the coined nature of Complainant's SECURIAN mark, Respondent must have registered the <securian.biz> domain name, which consists of that mark in it’s entirely, with actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied 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 the <securian.biz> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: February 16, 2018
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