The Complainant is The Manufacturers Life Insurance Company of Toronto, Ontario, Canada, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Whois Privacy Protection Service by of Tokyo, Japan / Dao Huy of Hanoi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2018. On May 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2018, 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 May 25, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email to the Parties in English and Japanese regarding the language of the proceeding. The Complainant filed an amended Complaint and requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding 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 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on June 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2018.
The Center appointed Teruo Kato as the sole panelist in this matter on June 28, 2018. 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
According to the Complainant, the Complainant is a leading Canada-based financial services company with principal operations in Canada, Asia and the United States of America (“the United States”), operates in Canada and Asia as Manulife and in the United States as John Hancock and is publically listed on the Toronto Stock Exchange, the New York Stock Exchange, the Philippine Stock Exchange and the Stock Exchange of Hong Kong (SEHK: 945), and since its founding, it has grown into a global, financial services leader providing financial advice, insurance and wealth and asset management solutions for individuals, groups and institutions.
The Complainant owns, inter alia, Vietnamese Trademark Registration No. 4-0025548-000, registered on November 15, 1997 for MANULIFE FINANCIAL, and Japanese Trademark Registration No. 4627924, registered on December 6, 2002 for MANULIFE.
Additionally, the Complainant has registered domain names worldwide consisting of or comprising the trademark MANULIFE, including, amongst others, registered on February 14, 1994, registered on October 13, 2000, registered on January 11, 2002, and registered on December 9, 2010.
The disputed domain name was registered on February 8, 2018.
The Respondent is Whois Privacy Protection Service by of Tokyo, Japan, acting for the registrant Dao Huy whose address is given as being in Hanoi, Viet Nam.
The website at the disputed domain name is in Vietnamese and purports to sell certain financial products bearing the name of “Manulife”.
The Complainant requests that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is the owner of various trademarks including MANULIFE.
The Complainant also contends that the disputed domain name is confusingly similar to the Complainant’s MANULIFE trademark and that the generic and descriptive term “baohiem”, being “insurance” in Vietnamese, and the letters “vn” (which the Complainant contends to be an abbreviation of Viet Nam) should be disregarded in considering the confusing similarity.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark MANULIFE, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith and further contends that the Respondent is using it to host a website that is nearly identical to Complainant’s Vietnamese website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complaint has been submitted in English. The Registrar confirmed that the language of the Registration Agreement is Japanese. The Center sent an email communication in both Japanese and English regarding the language of the proceeding. The Panel notes that the Respondent has not submitted an objection for English to the language of the proceeding, has not submitted any reply and that the website is in Vietnamese.
In view of the circumstances of this case and in accordance with paragraph 11(a) of the Rules the Panel decides that English will be the language of the proceeding. B. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of MANULIFE registered trademarks, including inter alia:
- Vietnamese Trademark Registrations No. 4-0031029-000 and No. 4-0031031-000, both of May 20, 1999 in Classes 9, 16 and 36; and
- Japanese Trademark Registrations No. 4627924 and No. 4627925, both of December 6, 2002 in Class 36.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the generic Top-Level Domain (“gTLD”), the disputed domain name consists of the Complainant’s trademark MANULIFE and the geographical term “vn” (initials for Viet Nam) in combination with a term “baohiem”, deriving from “bảo hiểm”, meaning “insurance” or “to insure” in Vietnamese language. The Panel finds that both additional terms are of a descriptive nature only and that the distinctive element of the disputed domain name is the term “manulife”.
It is well established that, where a disputed domain name incorporates, as here, the entirety of a complainant’s trademark, the addition of common terms does not serve to distinguish adequately the domain name from the trademark. (See Salvatore Ferragamo S.p.A v. Ying Chou,WIPO Case No. D2013-2034; Salvatore Ferragamo S.p.A. v. Haonan Hong,WIPO Case No. D2013-2040; Salvatore Ferragamo S.p.A. v. Brian E. Nielsen,WIPO Case No. D2014-1123; and Salvatore Ferragamo S.p.A. v. Wei Huan,WIPO Case No. D2014-1290).
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant contends that the disputed domain name “redirects Internet users to a website that copies and attempts to duplicate Complainant’s official website by utilizing a similar design in connection with the same images, color scheme and text found on Complainant’s website www..vn”.
By not submitting a response, the Respondent has failed to overturn such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting evidence of bad faith, which includes the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 said website location or of a product or service on that website location.
The Panel notes and accepts that the trademark MANULIFE was registered and extensively used internationally, including in Viet Nam and Japan, long before the disputed domain name was registered on February 8, 2018. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Registration in bad faith can be inferred under such circumstances.
The Panel further notes and accepts the Complainant’s contention that at the disputed domain name the Respondent offers for sale unauthorized products, bearing the Complainant’s MANULIFE trademarks as well as the Complainant’s logo and the same picture images as used in the Complainant’s own site at “www..vn” without authorisation of the Complainant, thereby taking unfair advantage of the reputation of the Complainant’s trademark, and uses the Complainant’s official advertising images with the intention to create confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website by the Complainant and the products offered on that website (see paragraph 4(b)(iv) of the Policy as quoted above).
In the premises the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The third requirement of the Policy has been met. 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.
Teruo Kato
Sole Panelist
Date: July 2, 2018
Full & Egal Universal Law Academy