The Complainant is Jackson National Life Insurance Company of Lansing, Michigan, United States of America, represented by Dickinson Wright, PLLC, United States of America.
The Respondent is Transure Enterprise Ltd, Tortola, the British Virgin Islands. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2012. On February 20, 2012, the Center transmitted by email to A, Inc a request for registrar verification in connection with the disputed domain name. On February 21, 2012, A, Inc.. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 24, 2012.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2012.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on April 5, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is an American life insurance company and a provider of variable, fixed and fixed index annuities.
The Complainant registered the following United States trademarks respectively in 1988 and 2000, but does not provide the Panel with any evidence of regular renewal:
- JACKSON NATIONAL LIFE, Registration No. 1,489,625 registered on May 24, 1988, in classes 35 and 36 namely for “life insurance underwriting services”;
- JACKSON NATIONAL LIFE INSURANCE COMPANY, Registration No. 2,338,319 registered on April 4, 2000, in classes 35 and 36 namely for “life insurance underwriting services” renewed on April 6, 2010.
The Complainant also holds the following United States trademark:
- JACKSON NATIONAL LIFE INSURANCE COMPANY, Registration No. 3,529,316 registered on November 4, 2008, in classes 35 and 36 namely for “life insurance and annuity underwriting services”.
The Complainant also declares holding the domain name which resolves to the Complainant’s website, at the domain name . On this website, the Complainant promotes and advertises its services.
The Respondent is Transure Enterprise Ltd.
The disputed domain name was registered on August 21, 2011.
According to the documentary evidence submitted by the Complainant, on February 15, 2012, the website to which the disputed domain name resolved contained commercial paid advertisement links related to retirement plans, financial services, investments, careers, etc. 5. Parties’ Contentions A. Complainant
The Complainant contends that over the last fifty-years, it has become one of America’s largest life insurance companies and a leading provider of variable, fixed and fixed index annuities. The Complainant adds that it has obtained several registrations for JACKSON NATIONAL LIFE and formatives and that it owns and uses the domain name to promote and advertise its services.
The Complainant contends that the disputed domain name is virtually identical and confusingly similar to its trademarks as it consists of the precise words contained in the dominant portion of the Complainant’s marks with a minor misspelling.
The Complainant also contends that the Respondent has neither rights, nor any legitimate interests in the disputed domain name.
The Complainant then adds that the disputed domain name was registered and is being used in bad faith. In this regard, the Complainant considers that the Respondent intentionally attempted to attract, for commercial gain, internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant claims to hold several JACKSON NATIONAL LIFE trademarks but provides the Panel with the evidence for only one live United States trademark: JACKSON NATIONAL LIFE INSURANCE COMPANY, Registration No. 3,529,316. The Panel will therefore base its decision on this mark alone.
The disputed domain name consists of words contained in the Complainant’s mark “Jackson” and “national” with a misspelling, the subtraction of one “n”.
As such, the disputed domain name is not identical to the Complainant’s mark.
The Panel shall then determine whether the disputed domain name is confusingly similar to the Complainant’s mark.
First, it has been acknowledged in previous WIPO decisions that in comparing a mark and a domain name with respect to a likelihood of confusion, special attention should be paid to the first part of the mark (Workman Publishing Co., Inc., Patricia Schultz v. ICE,WIPO Case No. D2011-0414). Here, the Panel considers that the words “life insurance company”, also composing the mark, do not have a relevant distinguishing function, and that the dominant part of the mark is the expression “Jackson national”. The Panel thus finds that the first and dominant part of the Complainant’s mark is almost identical to the disputed domain name, and as such is confusingly similar to the Complainant’s mark.
Second, the first and dominant part of the mark is not totally identical to the disputed domain name as there is the subtraction of a letter “n”. However, it is often recalled in UDRP decisions that the omission of a letter is commonly known as typosquatting and does not negate the confusingly similar aspects of the disputed domain name from the Complainant’s mark (Cincinnati Bell Inc. v. Cincinnati Bell Telephone Company / CINCNNATIBELL.COM c/o Whois Identity Shield,WIPO Case No. D2006-1406). Furthermore, despite the subtraction of a letter “n”, the disputed domain name is visually and phonetically similar to the dominant portion of the Complainant’s mark and as such the likelihood of confusion is heightened (Align Technology, Inc. v. LaPorte Holdings,WIPO Case No. D2005-1317). Here, the Panel finds that the typosquatting in the disputed domain name does not negate the confusing similarity with the Complainant’s mark.
In view of the above, the Panel considers that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy outlines circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
In line with prior UDRP decisions, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to have the burden of production shift to the respondent (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
In this case, the Panel considers that the Complainant has made a prima facie case showing that the Respondent does not have rights or legitimate interests in the disputed domain name. This finding is based on the non-disputed circumstances brought forward by the Complainant that:
- there is no evidence of the Respondent’s use of, or demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods and services;
- there is no evidence of the Respondent being commonly known by the disputed domain name;
- and the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name as the webpage to which it resolves provides links to websites for competitors of the Complainant’s (retirement investment advising service, financial advising services, etc.)
The Respondent did not answer to these assertions, and as such failed to demonstrate any of the above circumstances under paragraph 4(c) of the Policy.
In view of the above, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy outlines circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. These circumstances are:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent have engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on respondent’s web site or location.
As for the Panel, the fact that the advertising links on the website to which the disputed domain name resolves are in connection with the Complainant’s offer of goods and services proves that the Respondent did not ignore the Complainant’s mark and registered the disputed domain name on purpose to attract Internet users. Moreover, as already stated in other UDRP decisions, the use of misspellings in domain names indicates bad faith registration (see e.g. Cincinnati Bell Inc. v. Cincinnati Bell Telephone Company / CINCNNATIBELL.COM c/o Whois Identity Shield,WIPO Case No. D2006-1406). As a consequence, in this case, the Panel considers that the registration of the disputed domain name was made in bad faith, as it reproduces the first and dominant part of the Complainant’s mark with a misspelling.
Furthermore, the Panel finds that Internet users looking for the Complainant online may find the Respondent’s website instead and become confused as to the Complainant’s affiliation with the website and its content (Mattel Inc. v. A Domain Privacy, Case No. D2011-2264). In fact, the likelihood of confusion is all the more apparent as, as already stated, the Respondent provides on its website advertising contents in direct connection with the Complainant’s products and services, but for competitors (retirement plans, financial services, investments, careers, etc.). This content reflects the Respondent's use of the disputed domain name to attract Internet users to its website in order to generate pay-per-click advertising revenues (The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057).
As a consequence, the Panel finds that there is no reason for the Respondent to use the dominant part of the Complainant’s mark except to attract, for commercial gain, Internet users to the its website or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, or affiliation of the Respondent’s website, which characterizes a use in bad faith pursuant to paragraph 4(b)(iv).
Therefore, in accordance with the Policy, the Panel considers that the disputed domain name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Dated: April 19, 2012
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