The Complainant is Jackson National Life Insurance Company of Michigan, United States of America (“US”), represented by Dickinson Wright, PLLC, US.
The Respondent is guojianguang of Beijing, China and LinYu of Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2013. On August 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2013, the Registrar 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 August 7, 2013 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 amended Complaint on August 8, 2013. On August 7, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the August 8, 2013, the Complainant submitted its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
The Center verified that the Complaint together with the amended 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 August 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2013. The Respondent filed a pre-commencement communication by email, on August 13, 2013, which the Center acknowledged receipt. Accordingly, the Center sent an email communication to the Respondent on September 4, 2013, informing the parties that it would proceed to appoint the panel
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 18, 2013. 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, Jackson National Life Insurance Company is a company founded in 1961 in the United States.
The Complainant is one of the largest life insurance companies in the United States and is now a leading provider of variable, fixed and fixed index annuities.
The Complainant is the owner of trademark registrations for the JNL, JACKSON NATIONAL LIFE and JACKSON NATIONAL LIFE INSURANCE marks in the US and other countries around the world. For example: US registration number 1,451,252 – JNL with the registration date of August 4, 1987, US registration number 2,338,319 – JACKSON NATIONAL LIFE INSURANCE COMPANY with the registration date of April 4, 2000, US registration number 1,489,625 – JACKSON NATIONAL LIFE with the registration date of May 24, 1988, US registration number 2,534,852 – JNL TARGET SELECT with the registration date of January 29, 2002.
The Complainant also developed a presence on the Internet and is the owner of several domain names which contain the trademark JNL such as and the mark JACKSON NATIONAL LIFE such as .
The disputed domain name was registered May 14, 2008. The disputed domain name is inactive. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademarks JNL and JACKSON NATIONAL LIFE. The Complainant further argues that because of their long commercial use, its trademarks are well-known and enjoy substantial goodwill.
The Complainant further argues that the disputed domain name is likely to be perceived as a short-hand for the Complainant’s trademark mark JACKSON NATIONAL LIFE.
The Complainant further contends that the additional term “life” in conjunction with the letters ‘j’ and ‘n’ increases the likelihood of confusion since the letters ‘j’ and ‘n’ stand for “Jackson” and “National”.
The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its JNL and JACKSON NATIONAL LIFE trademarks and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further argues that the Respondent is not commonly known by the disputed domain name.
The Complainant argues the disputed domain name is not being used for legitimate noncommercial or fair use by the Respondent.
The Complainant further argues that the disputed domain name is passively held and therefore it was improperly registered and is being improperly used.
The Complainant further argues that the mere passive holding of the disputed domain name is sufficient to show that the Respondent intends to prevent the Complainant from reflecting its trademark in a corresponding domain under the gTLD “.com”
The Complainant further argues that the mere passive holding of the disputed domain name is sufficient to show that the Respondent creates an impression that the disputed domain name is for sale and therefore it is clear indication of the Respondent’s bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
On August 13, 2013, the Respondent filed a pre-commencement communication email to the Center in both the English and Chinese languages providing what would seem to be an informal response.
The Respondent provided that the Complainant did not file a trademark application in China for the trademark JNL. The Respondent further provided that the Complainant was not well known in China and had no visibility or business in China.
The Respondent further provided that the letters JN refers to a city well known in China called Jinan (济南) which is the capital of the Shandong Province (山东). The Respondent added that the use of the word “life” with the initials of a city were used in China providing the examples of the domain names referring to Shandong and referring to Guilin.
The Respondent further provided that there are numerous domain names in China with the letters “jn”.
The Respondent also provided that the Respondent’s use of the web site was under planning and construction and did not apply to the Complainant business.
The Respondent further provided that it registered and intends to use the disputed domain name in good faith and that the Complainant failed to show that the Respondent was acting in bad faith.
The Respondent did not file a formal reply, however having considered the circumstances of the proceedings before it, the Panel determines that the pre-commencement communication should serve as the reply made by the Respondent. 6. Discussion and Findings A. Procedural Issue – Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant requested that the language of the proceeding should be English.
The Respondents did not respond to the Complainant’s request that the language of the proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. 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 abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name comprises the JNL trademark, which is known to be associated with a United States company.
b) The disputed domain name comprises characters in the English language.
c) The Complainant provided evidence showing that the Respondent is familiar with the English language.
d) The Respondent filed a communication in both the English and Chinese languages with the Center.
e) The Respondent failed to respond to the Complaint’s request that the language of the proceeding be in the English language.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceeding. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of several trademark registrations for the JNL and JACKSON NATIONAL LIFE trademarks in the US. For example: US registration No. 1451252 – JNL, with registration date of August 4, 1987; US registration No. 1489625 – JACKSON NATIONAL LIFE, with registration date of May 24, 1988; US registration No. 2883296 – JNL PROTECTOR, with registration date of September 7, 2004; US registration No. 2883310 – JNL GENERATIONS UL, with registration date of September 7, 2004; US No. 2534852 – JNL TARGET SELECT, with registration date of January 29, 2002.
The Complainant is also the owner of the domain names which contain the name “jnl” and “Jackson National Life”: , , , and more.
While the disputed domain name incorporates the Complainant’s trademark JNL in whole, it could also be read that the disputed domain name incorporates the letters “jn” with the word “life”.
Taking the Complainant argument at face value, the disputed domain name differs from the registered trademark JNL by the addition of the word “ife” to the JNL trademark and the additional generic Top-Level Domain (gTLD) “.com”.
The Panel finds that the dominant element in the Complainant’s trademark and in the disputed domain name is the word “jn” which is similar but not identical to the Complainant’s trademark JNL.
The Complainant is using its JNL trademark as one of its Internet presences under the domain name . The Complainant is also using the domain name and others. The addition of the letters ‘life’ does not serve to sufficiently distinguish the disputed domain name from the Complainant’s trademark JNL. The use of the letter “l” both in the dominant part of the disputed domain name and as part of the word “life” may serve to create additional confusion. (Jackson Nat’l Life Ins. Co. v. Zheng Zhongxing,WIPO Case No. D2007-0028 )
Also, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. (F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLDs “.com” in this case is without legal significance since the use of this gTLD is only a technical requirement to operate a domain name. Therefore, under the circumstances of this case, the Panel finds that the Complainant has met its burden of establishing that the Respondent’s disputed domain name is confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests of respect to the disputed domain name (Policy, paragraph 4(a)(ii); Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its JNL trademark.
The Respondent did not deny or addressed the evidence relating to the rights shown by the Complainant. The Respondent argued that the Complainant did not have a registered trademark in China. However, it is sufficient for the Complainant to show any trademark rights in order to satisfy their rights in the disputed domain name.
Once the burden was shifted, the Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain name.
The disputed domain name is inactive and the Respondent argued that it was planning to launch a web site relating to Jinan city life in China. However, the disputed domain name was registered in 2008, more than four years before the Complaint was lodged without a web site being lodged ever since.
The Respondent did not provide any evidence or explanation as to why such a web site has not been lodged over the past four years.
Thus, the Respondent failed to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances that constitute evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 the respondent’s web site or location or of a product or service on its website or location.
It is the Complainant’s burden to show that the Respondent registered and is using the disputed domain name in bad faith.
Apart from arguing that the disputed domain name is passively held and therefore it was improperly registered and is being improperly used by the Respondent, the Complainant did not argue in detail nor bring any material evidence to show that the Respondent actually registered the disputed domain name in bad faith.
Mere passive holding may under some circumstances satisfy a finding that a domain name was registered and used in bad faith, especially when the disputed domain name has not been used for a long period of time. However, for this to be the case, the complainant must convince the panel that it is more likely than not that the respondent acted in bad faith, including when it registered the domain name. The Panel is not convinced, on the balance of probabilities, that the Respondent registered the disputed domain name in bad faith.
While a previous UDRP Panel found that the Complainant trademark JACKSON NATIONAL LIFE INSURANCE is well-known ( Jackson Nat’l Life Ins. Co. v. Dan, Booker, Total Net Solutions / Moniker Privacy Servs.,WIPO Case No. D2008-1505) the Complainant failed to make such showing relating to the trademark JNL. Therefore, there is no evidence before the Panel showing that the JNL trademark has become famous or well-known and there is no evidence before the Panel as to the extent of the use of the JNL trademark available in the location of the Respondent.
The Panel notes that the Complainant has indicated in its Complaint that “if the Respondent fails to submit a response to this compliant, the Panel should render the decision in favor of Jackson” and that “[t]he Panel has the authority, under paragraphs 5(e), 14(a), 14(b), and 15(a) of the Rules, to decide this administrative proceeding on the basis of the Complainant’s undisputed representations, to accept all reasonable allegations and inferences set forth in the Complaint as true, and to draw any further inferences it considers appropriate”. Since the Respondent has filed an informal Response in this case and disputed the representation made by the Complainant in its Complaint, this request by the Complainant cannot be considered and accepted.
Having regard to the entire circumstances of this case, the Panel finds that Complainant failed to show that the Respondent registered the disputed domain name in bad faith.
Having determined that the Complainant failed to meet the burden of proof that the Respondent registered the disputed domain name in bad faith, there is no need to discuss whether the passive holding of the disputed domain name by the Respondent amounts to bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Jonathan Agmon
Sole Panelist
Date: October 1, 2013
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