Complainant is The Manufacturers Life Insurance Company, Canada, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“U.S.”) / Gao Lei, Gaolei, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 26, 2019, 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 Complainant on September 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 1, 2019. 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 Respondent of the Complaint, and the proceedings commenced on October 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 23, 2019. The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 29, 2019. 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 Complainant states that it was founded in 1887 and is “a leading Canada-based financial services company with principal operations in Canada, Asia and the United States”; that it “operates in Canada and Asia as Manulife and in the United States as John Hancock”; that it “is publically [sic] listed on the Toronto Stock Exchange (TSX: MFC), the New York Stock Exchange (NYSE: MFC), the Philippine Stock Exchange (PSE: MFC) and on the Stock Exchange of Hong Kong (SEHK: 945)”; that it “maintains an international network of more than 34,000 employees and 70,000 agents, along with thousands of other distribution partners around the world”; that it “reported core earnings of $5.6 billion Canadian dollars globally” in 2018; and that it “has over US $877 billion worth of assets under its management and administration, and has paid out over $29 billion to customers in benefits and claims in the last 12 months.” Complainant states, and provides evidence to support, that it is the owner of multiple registrations for trademarks that consist of or contain MANULIFE, including U.S. Reg. No. 1,790,892 (registered August 31, 1993); Canadian Reg. No. TMA385240 (registered May 31, 1991); and European Union Reg. No. 000540989 (registered July 9, 1999). These trademarks are referred to herein as the “MANULIFE Trademark.” The Disputed Domain Name was created on November 25, 2018. According to the Complainant (which has not been contradicted by Respondent), the Disputed Domain Name was previously used, in July 2019, “to direct Internet users to a website that features adult content” and, when the Complaint was filed, was being used “to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business,” including links labeled “Medical Insurance Quotes”, “Health Insurance Quotes”, and “Life Insurance Quotes.” 5. Parties’ Contentions A. Complainant Complainant contends, in relevant part, as follows: - The Disputed Domain Name is confusingly similar to the MANULIFE Trademark because it “a purposeful misspelling of Complainant’s MANULIFE trademark”, “must be considered a prototypical example of typosquatting”, and “is visually similar to Complainant’s trademark, and the Disputed Domain Name is also phonetically similar to Complainant’s trademark in terms of pronunciation.” - Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names”; “Respondent is not commonly known by the Disputed Domain Name”; Respondent previously used the Disputed Domain Name to redirect Internet users to a website with adult content and currently uses the Disputed Domain Name in connection with a website that contains links for services that compete with those offered by Complainant; and Respondent registered the Disputed Domain Name many years after Complainant registered the MANULIFE Trademark. - The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the composition of the domain makes it illogical to believe that Respondent registered the domain without specifically targeting Complainant”; the MANULIFE Trademark “is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith”; “numerous past [p]anels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding, as is the case here”; “[p]ast [p]anels have consistently held that a respondent’s use of a confusingly similar domain name to direct unsuspecting Internet users to adult content, as here, is evidence of bad faith registration and use of that domain name”; “Respondent is currently offering to sell the Disputed Domain Name”; Respondent “employed a privacy service to hide its identity”; and “Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding.” B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the MANULIFE Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the MANULIFE Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “manulifee”) because “[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”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1. The Disputed Domain Name contains the MANULIFE Trademark in its entirety, adding only a second letter “e” at the end. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” See also section 1.9 of WIPO Overview 3.0 (“[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”); Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798 (“[t]he repeated letter does not significantly affect the appearance or pronunciation of the domain name, and when compared to the […] trademark, it is a classic example of typosquatting”); Andrey Ternovskiy d/b/a Chatroulette v. Super Privacy Service c/o Dynadot,WIPO Case No. D2017-1238 (“this additional letter is barely perceptible and does nothing to detract from the confusing similarity between the Complainant’s mark and the Domain Name”); and Rediff.com India Limited v. Domain Name Proxy, LLC/ Navigation Catalyst Systems, Inc.,WIPO Case No. D2010-1458 (“the addition of the extra letter […] in the Disputed Domain Name […] does not assist the Respondent in escaping a finding of confusing similarity”). Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names”; “Respondent is not commonly known by the Disputed Domain Name”; Respondent previously used the Disputed Domain Name to redirect Internet users to a website with adult content and currently uses the Disputed Domain Name in connection with a website that contains links for services that compete with those offered by Complainant; and Respondent registered the Disputed Domain Name many years after Complainant registered the MANULIFE Trademark.” WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the Disputed Domain Name is associated with a monetized parking page that contains links for goods or services competing with Complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753. Accordingly, the Panel finds that the Complainant has proven the third element 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 Name Douglas M. Isenberg
Sole Panelist
Date: October 31, 2019
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