The Complainant is The Manufacturers Life Insurance Company of Toronto, Canada, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Jan Fishman, Fishman Lawyers of Vancouver, British Columbia, Canada. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 18, 2016. On July 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 19, 2016.
The Center appointed Cherise Valles as the sole panelist in this matter on August 25, 2016. 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 a Canada-based financial services company with principal operations in Canada, Asia and the United States of America. The Complainant is a Fortune Global 500 company and was ranked number 212 in Fortune magazines' annual list of the top 500 Global companies in 2013. It maintains an international network of more than 34,000 employees and 63,000 agents, along with thousands of other distribution partners around the world. In 2014, the Complainant earned revenues of USD 37.4 billion.
The Complainant's MANULIFE brand is well-recognized by consumers, industry peers and the broader global community. The Complainant has established considerable goodwill in the MANULIFE brand and trademark. It has won a number of awards for its success as an employer and a brand, and it sponsors a number of events and civic projects around the world.
The Complainant is the owner of multiple trademark registrations throughout the world, including in Canada, the United States of America and Europe, for the mark MANULIFE. These include the following:
- Canadian trademark registration No. TMA385240 for MANULIFE, registered on May 31, 1991;
- Canadian trademark registration No. TMA385241 for MANULIFE FINANCIAL, registered on May 31, 1991;
- Canadian trademark registration No. TMA643885 for the MANULIFE FINANCIAL design, registered on July 8, 2005;
- United States registration No. 1790892 for MANULIFE FINANCIAL registered on August 31, 1993 in class 36;
- United Kingdom of Great Britain and Northern Ireland registration No. 1301399 for MANULIFE registered on December 8, 1989 in class 36;
- European Union registration No. 000540989 for MANULIFE registered on July 9, 1999, in classes 16, 36 and 41.
The Complainant has also registered the trademark MANULIFE as a domain name under several generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs"), among these, and .
The disputed domain name was registered on March 29, 2016, and both disputed domain name and disputed domain name were registered on April 18, 2016.
The Complainant has had prior dealings with the Respondent – see The Manufacturers Life Insurance Company v. Jan Fishman, Fishman Lawyers,WIPO Case No. D2016-0511 and The Manufacturers Life Insurance Company v. Jan Fishman, CIRA Case No. 00313. In those cases, the Respondent claimed to have a legitimate interest in the domain names in question from a business standpoint as he was using the domain names to attract clients to his legal practice. Additionally, in a letter dated January 7, 2016, the Respondent offered to sell the Complainant the disputed domain names , , and for the amount of CAD 250,000.
The disputed domain names resolve to websites where the Respondent advertises its business of legal representation in cases against the Complainant involving denial of insurance. The websites feature a disclaimer that states that the Respondent is not associated with the Complainant. 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain names are confusingly similar or identical to the Complainant's registered trademark, MANULIFE, in light of the fact that they wholly incorporate the Complainant's mark.
- The inclusion of the word "denial" in the disputed domain names only increases the confusing similarity between the disputed domain names and the Complainant's MANULIFE trademark. The concept of insurance denial is common in the Complainant's insurance business and industry.
The Respondent lacks rights or legitimate interests in the disputed domain names.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain names. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
- The Respondent is using geolocation to block the Complainant from seeing the disputed domain name websites. If Respondent truly believed he had legitimate rights in the disputed domain names, he would have no reason to block anyone from accessing his websites.
The disputed domain names have been registered and are being used in bad faith.
- The Complainant asserts that the disputed domain names were registered and are used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
- The Respondent was involved in an earlier UDRP proceeding with WIPO and a case with the Canadian Internet Registration Authority ("CIRA") in which the Respondent had domain names transferred away from him. This indicates the Respondent has engaged in a bad faith pattern of cybersquatting.
The Complainant requests the Panel to issue a decision finding that the disputed domain names be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The Complainant is the sole and exclusive owner of the MANULIFE mark. The Complainant is the owner of multiple trademark and domain name registrations in Canada and around the world for the trademark MANULIFE, as indicated in Section 4 above and as demonstrated in Annex 1 to the Complaint.
The disputed domain names , and wholly incorporate the Complainant's MANULIFE registered mark. Earlier UDRP decisions have held that when a domain name wholly incorporates a complainant's registered trademark, it is sufficient to establish that a domain name is identical or confusingly similar for the purpose of the Policy. See, among others, Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150.
The addition of a hyphen and the generic descriptive word "denial" to the Complainant's MANULIFE mark increases the confusing similarity with the Complainant's mark. Such a term is closely linked and associated with Complainant's brand and trademark since the idea of insurance denial is common in the Complainant's business and industry. The word "denial" therefore only serves to underscore and increase the confusing similarity between the disputed domain names and the Complainant's mark. See The Manufacturers Life Insurance Company v. Jan Fishman, Fishman Lawyers,WIPO Case No. D2016-0511. Previous panels have consistently held that a disputed domain name that consists merely of a complainant's trademark and an additional term that closely relates to or describes that complainant's business is confusingly similar to that complainant's trademarks. See OLX B.V. v. Jakony Amnon, OLX Uganda,WIPO Case No. D2016-0743.
Finally, the addition of the generic Top-Level Domains ("gTLD") ".com",".info" and ".solutions" is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant's mark. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
In the light of the foregoing, the Panel finds that the disputed domain names , , and are confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that he has rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: "[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in the disputed domain names, and the Respondent has failed to demonstrate his rights in the disputed domain names. The Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. The Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant's MANULIFE trademark in any way or manner, including by registering a domain name containing the term "Manulife". The Respondent is not commonly known by the term "Manulife" or the disputed domain names, which evinces the absence of rights or legitimate interests in the disputed domain names. See Soda LLC v. SIMPLEDOLLAR.COM,WIPO Case No. D2016-0038.
The Respondent registered the disputed domain names between March 29, 2013 and April 18, 2016, significantly after the Complainant filed for registration of its MANULIFE trademarks listed in Section 4 above. The Respondent cannot claim to have been using the trademark MANULIFE without having been aware of the Complainant's rights to it – particularly because the Respondent served as in-house counsel for Complainant from 2002 to 2012. This suggests that the Respondent's interest in registering the disputed domain names could not have been legitimate.
The Respondent is making neither a bona fide offering of goods or services nor a legitimate, non commercial fair use of the disputed domain names. The Respondent has registered the disputed domain names based on a trademark that is famous in Canada and known internationally, and is using the disputed domain names to host websites which promote the Respondent's own legal practice as one that aims to bring suits against the Complainant. The Respondent is doing this for the second time, having previously registered the domain names , , and and having tried to sell them to the Complainant for CAD 250,000 as outlined in Section 4 above. The Respondent is again seeking to trade on the Complainant's trademark for his own commercial gain. This is evidence that the Respondent's interests are not and cannot have been legitimate. Past panels have confirmed that such use does not bestow legitimate rights or interests upon a respondent. See The Manufacturers Life Insurance Company v. Jan Fishman, Fishman Lawyers,WIPO Case No. D2016-0511.
Finally, the Respondent's own actions have demonstrated his belief that the registration and use of the disputed domain names are without legitimate interest because he has attempted to hide his use of the disputed domain names from the Complainant. The Respondent is using geolocation to block persons in certain geographical areas from seeing his website, namely the Complainant and the Complainant's authorized representative's location. If the Respondent truly believed he had legitimate rights in the disputed domain names and was using them in good faith he would have no reason to block anyone from accessing his websites.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 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 the respondent's website or location or of a product or service on its website or location.
As indicated in Section 4 above, the Complainant's MANULIFE trademarks were registered long before the disputed domain names. The Respondent must have been aware of the existence of the Complainant's rights in the trademarks when registering the disputed domain name. Previous Panels have held that the registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith. See, among others, LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494.
At the time of initial filing of the Complaint, the Respondent employed a privacy service to hide his identity, which past panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc and Sabatino Andreoni,WIPO Case No. D2003-0230. Moreover, the Respondent has ignored the Complainant's attempts to resolve this dispute outside of this administrative proceeding. Past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330.
The Respondent has sought to use the Complainant's reputation and trademarks to his advantage by redirecting Internet users to websites which promote the Respondent's own legal practice as one that aims to bring suits against the Complainant. The Respondent admitted in his offer letter to sell the other set of similar domain names to Complainant that he believes the use of these types of domain names will generate nearly two million dollars over the next five years. Under the circumstances, the Respondent using the Complainant's trademark within the disputed domain names for profit is not good faith use in accordance with the Policy. See The Manufacturers Life Insurance Company v. Jan Fishman, Fishman Lawyers,WIPO Case No. D2016-0511.
The Respondent's use of the disputed domain names constitutes a disruption of the Complainant's business and qualifies as bad faith registration and use because while Respondent is not a direct competitor of Complainant, the Respondent's domain names are confusingly similar to the Complainant's trademarks and use of such domain names could cause confusion among the Complainant's customers.
The disputed domain name websites feature a disclaimer which states that the Respondent is not associated with the Complainant. However, the consensus view of previous panels is that "[t]he existence of a disclaimer cannot by itself cure bad faith, where bad faith has been established by other factors." Paragraph 3.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. Under the circumstances in this case, the disclaimer on the disputed domain name websites does not protect the Respondent.
The Respondent has previously been involved in the cases listed in Section 4 above, for almost identical domain names. In addition, the Respondent has registered a total of eight domain names that each include the Complainant's MANULIFE trademark including the disputed domain names, one domain name that is the subject of a CDRP proceeding, and four other domain names that have been successfully recovered from the Respondent. Previous panels have concluded that evidence of prior panel decisions in which domain names have been transferred away from the respondent to complaining parties supports a finding that respondent has engaged in a bad faith pattern of "cybersquatting." See MarkMonitor Inc., Thomson Reuters Canada Limited, Thomson Reuters Organization LLC, and Thomson Reuters Corporation v. Domain Admin, E-Promote,WIPO Case No. D2016-0693. Thus, the foregoing provides evidence of the pattern of cybersquatting in which Respondent is engaging.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 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 names, , , and be transferred to the Complainant.
Cherise Valles
Sole Panelist
Date: September 7, 2016
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