Certain generic words and word combos make weak trademarks.
That’s the primary take from the UDRP filed against the domain Security-Finance.com, consisting of two generic words, security and finance.
Security Group, Inc. d/b/a Security Finance, filed the UDRP to usurp the domain, citing trademark violations. They registered the mark SECURITY FINANCE in 2020, whereas the domain was registered in 1999.
Despite a lack of response by the Respondent, the NAF panelist did not find that the domain was registered in bad faith:
In other words, the domain in question consists of two generic words that have a descriptive meaning, making the trademark appear weak.
Final decision: Deny transfer of Security-Finance.com to the Complainant.
Security Group, Inc. d/b/a Security Finance v. Zhi Chao Yang
Claim Number: FA2105001945161
Complainant is Security Group, Inc. d/b/a Security Finance (“Complainant”), represented by Jason A. Pittman of Dority & Manning, P.A., South Carolina, USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <secuirty-finance.com> (“Domain Name”), registered with West263 International Limited.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2021; the Forum received payment on May 14, 2021. The Complaint was received in English.
On June 8, 2021, West263 International Limited confirmed by e-mail to the Forum that the <secuirty-finance.com> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 June 14, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 6, 2021 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 [email protected]. Also on June 14, 2021, the Chinese language 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 July 9, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The language of the Registration Agreement in this case is Chinese. The Complaint has been provided in English.
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 language requested by Complainant. 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 Russian 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.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website 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 particular the Respondent’s Website is in English. The Panel also notes that the Respondent has not objected in any way to the proceeding continuing in English. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
Complainant and its operating subsidiaries have provided financial services to customers for more than 60 years. Complainant has rights in the SECURITY FINANCE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,011,189, registered March 17, 2020). Respondent’s <secuirty-finance.com> domain name is confusingly similar to Complainant’s SECURITY FINANCE mark as it contains a misspelled version of Complainant’s mark – Respondent merely inverts the letters “R” and “I” while adding the generic top level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <secuirty-finance.com> domain name. Respondent is not commonly known by the Domain Name nor has Complainant authorized Respondent to use the SECURITY FINANCE mark. Additionally, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it in connection with competitive hyperlinks.
Respondent registered and uses the <secuirty-finance.com> domain name in bad faith. Respondent uses the Domain Name in connection with competitive hyperlinks. Respondent also had constructive and actual knowledge of Complainant’s rights in the SECURITY FINANCE mark prior to registering the Domain Name, evidenced by Complainant’s trademark registrations and Respondent’s use of competitive hyperlinks. Finally, Respondent engaged in typosquatting and failed to respond to Complainant’s cease and desist letter.
Respondent failed to submit a Response in this proceeding.
Complainant having failed to establish bad faith registration and use of the domain name <secuirty-finance.com> has not established all required elements of its claim, and thus its complaint must be denied.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has rights in the SECURITY FINANCE mark based upon registration of the mark with the USPTO (e.g. 4, Reg. No. 6,011,189, registered March 17, 2020). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <secuirty-finance.com> Domain Name is confusingly similar to the SECURITY FINANCE mark as it wholly incorporates the SECURITY FINANCE mark (merely inverting the letters “r” and “I’ to create a misspelling) and adds the “.com” gTLD. Adding gTLD to a misspelled mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA 1620197 (Forum June 16, 2015) (finding confusing similarity where the respondent misspelled the word “bank” by transposing the letters “a” and “n,” attached the gTLD “.com,” and eliminated spacing with respect to the CAPITAL ONE BANK mark to create the <capitalonebnak.com> domain name.)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
Registration and Use in Bad Faith
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
The Domain Name consists of two generic words (being “security” and “finance”) one of which is misspelled. Each of these words, and the combination “security finance” have entirely descriptive meanings that relate to loans and security for loans. While Complainant holds a registered trade mark for the SECURITY FINANCE mark it is limited to the United States. The Respondent is located in China and the doctrine of constructive notice is insufficient by itself to support a finding of bad faith see The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) (“Mere constructive knowledge is insufficient to support a finding of bad faith.”).
While Complainant has traded under the SECURITY FINANCE mark for 60 years it only applied to register its mark in 2019. It otherwise provides no evidence of the extent of its business, including geographic reach, customer base, extent of advertising or third party recognition. In particular Complainant does not establish that its SECURITY FINANCE mark is so well-known and ubiquitous that the Panel can conclude, for that reason alone, that the Chinese Respondent’s registration of a domain name containing the words “finance” and a misspelling of “security” was motivated by awareness of Complainant (which would generally amount to bad faith registration), as opposed to registration of the Domain Name for its inherent meaning being a misspelling of two descriptive words. Nor does Complainant provide any evidence relating to the identity of Respondent, such as past dealings with Complainant, or connection with Complainant’s businesses, such that it would be reasonable to infer Respondent was aware of Complainant at the time of registration.
Therefore, in order to determine if Respondent’s registration of the Domain Name was motivated by awareness of Complainant or the inherent qualities of the words comprising the Domain Name, it is necessary to consider evidence of Respondent’s use of the Domain Name. The Domain Name parked on a pay-per-click page (“Respondent’s Website”) with advertisements predominantly for personal loans (the Panel has visited the Respondent’s Website and notes that there is also one advertisement for home security systems). Complainant submits that “the content of Respondent’s website demonstrates an intentional effort to mimic and trade on the goodwill in Complainant’s trademark…”. The Panel does not agree with this conclusion. While the Respondent’s Website does advertise financial services products, similar to those offered by the Complainant, the products advertised on the Respondent’s website correlate directly with the descriptive words that comprise of the Domain Name. There is no other evidence from the Respondent’s Website (such as a direct reference to the Complainant or South Carolina, the location of the Complainant) to infer that the Respondent, prior to the commencement of the proceeding was aware of the Complainant in any way.
Finally, there is no other evidence that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith). Respondent has not, on the basis of the evidence before the Panel, engaged in a pattern of conduct of registering domain names to prevent the owner of a mark for reflecting such a mark in a corresponding domain name. Respondent, who is based in China, is not a competitor of Complainant. There is no evidence that Respondent has offered the Domain Name for sale.
The Panel notes that both the use of pay-per-click sites and the misspelling/typosquatting of in a domain name are common reasons for finding bad faith registration and use under the Policy. However such findings this require a Panel to reach a conclusion that the respondent in question is acting in bad faith by seeking to capitalize on the reputation and goodwill of a complainant’s mark. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”) notes at 2.9 on the question of whether pay-per-click pages support respondent rights and legitimate interests
“Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.”
In respect of misspelling or typosquatting, the WIPO Overview at 3.1.4 states:
“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
In the present case Complainant has not provided evidence that its trademark is famous or widely-known or indeed any basis for the Panel to conclude that Respondent’s registration of the Domain Name was motivated by a desire to take advantage of any confusion with Complaint’s SECURITY FINANCE mark rather than the descriptive meaning of the words “security finance”.
The Uniform Domain Name Dispute Resolution Policy, is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable. ”). In the present case Respondent has registered a domain name consisting of a misspelling of “security finance” and redirected the domain name to a pay-per-click website offering advertisements for finance and security products. Absent any evidence of fame of the SECURITY FINANCE mark or any other evidence that Respondent has engaged in bad faith conduct, those facts are not sufficient to establish bad faith under the Policy.
The Panel notes that in the event that further information arises that suggests the motives of the Respondent in registering or using the Domain Name related to the Respondent’s awareness of the Complainant’s SECURITY FINANCE mark as opposed to the descriptive meaning of the words there may be grounds to consider a refiled complaint, subject to the applicable criteria.
As reasoned above, the Panel finds that Complainant has failed to prove that the Domain Name was registered and used in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <secuirty-finance.com> domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: July 12, 2021
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