Complainant is Milliman, Inc., United States of America (“United States”), represented by Adams and Reese LLP, United States.
Respondent is Super Privacy Service LTD c/o Dynadot, United States / Zhichao, China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 10, 2020, 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 June 15, 2020. 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 June 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 30, 2020. The Center appointed Marina Perraki as the sole panelist in this matter on August 31, 2020. 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 Per Complaint, Complainant is one of the world’s largest independent actuarial and consulting firms operating in the areas of employee benefits, investment, property and casualty, healthcare and life, financial services and insurance services. Complainant has been active in this field since 1947 and currently operates in various markets throughout the world, with sixty-six offices located in Africa, Asia, Europe, Latin America, North America and the Middle East. Complainant operates its principal websites at “www.milliman.com” and “www.millimanbenefits.com”. The latter is a web portal through which Complainant provides information and services to its clients pertaining to employee and other benefits. Complainant first used the MILLIMAN & ROBERTSON mark in 1957 and the MILLIMAN mark in 2001 and has throughout promoted its trademark continuously and extensively in numerous jurisdictions. Complainant owns numerous trademark registrations for MILLIMAN in various jurisdictions, including: - United States trademark registration No. 75714848, MILLIMAN (word mark) filed on May 27, 1999, first use in commerce May 31, 2001 and registered on March 19, 2002, for services in international class 36; and - United States trademark registration No. 77145266, MILLIMAN (word mark) filed on March 30, 2007, first use in commerce May 31, 2001 and registered on February 26, 2008, for goods and services in international classes 9, 16, 35, 36 and 41. Finally, Complainant is the owner of various domain names incorporating the MILLIMAN mark, including but not limited to The first Domain Name The Domain Names lead to commercial parking pages showing pay-per-click (PPC) advertising links to websites purportedly offering services identical or related to those of Complainant, such as “Employee Benefits” and “Health Insurance Benefits”. Complainant sent a cease and desist letter to Respondent on April 13, 2020, to which Respondent did not reply. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Names: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Domain Names incorporate Complainant’s trademark MILLIMAN in its entirety with the mere replacement of the last vowel “a” with an “e”. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). Furthermore, such replacement is an obvious or intentional misspelling of Complainant’s trademark MILLIMAN, which further supports the finding of confusing similarity to such trademark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9). The addition of the words “benfits” and “benifits” respectively, misspellings of the word “benefit”, do not avoid a finding of confusing similarity (Milliman, Inc. v. Nexperian Holding Limited / Leed Johnny, Johnny,WIPO Case No. D2018-1172, Milliman, Inc. v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang,WIPO Case No. D2018-2178). The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Names are confusingly similar to the MILLIMAN mark of Complainant. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names. Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services. On the contrary, as Complainant has demonstrated, the Domain Names resolve to pages displaying numerous links to third party sites, purportedly offering services identical or related to those of Complainant. As per Complainant, presumably Respondent received pay-per-click (“PPC”) fees from the linked websites that were listed at the Domain Names’ website and used the Domain Names for its own commercial gain . The use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with complainants’ trademark (Archer-Daniels-Midland Company v. Wang De Bing,WIPO Case No.D2017-0363; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao,WIPO Case No. D2016-2302 ; Milliman, Inc. v. PrivacyProtect.org / Telecom Tech Corp.,WIPO Case No. D2011-0246, WIPO Overview 3.0 , section 2.9 ). Furthermore, this indicates that Respondent knew of Complainant and chose the Domain Names with knowledge of Complainant and its industry competitors (Safepay Malta Limited v. ICS Inc,WIPO Case No. D2015-0403). The diversion of Internet users to competitors of Complainant does not give rise to any rights or legitimate interests in the Domain Names on the part of Respondent within the meaning of paragraph 4(c) of the Policy. In addition, the Domain Names incorporate in whole Complainant’s mark and thus carry a risk of implied affiliation (WIPO Overview 3.0 , section 2.5.1 ). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or (ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with 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 website or location. The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Because the MILLIMAN mark was well-known at the time of the Domain Names registration by Respondent, as repeatedly recognized (Milliman, Inc. v. PrivacyProtect.org / Telecom Tech Corp., supra; Milliman, Inc. v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang, supra), the Panel finds likely that Respondent had Complainant’s mark in mind when registering the Domain Names (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Respondent could have searched the United States trademark registry and would have found Complainant’s prior registrations in respect of MILLIMAN (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338). Furthermore, the Domain Names incorporate in whole Complainant’s mark with the replacement of the last vowel “a” with an “e”, thus typosquatting in bad faith on Complainant’s well-known trademark (WIPO Overview, sections 3.1 and 3.2). As regards bad faith use, Complainant demonstrated that the Domain Names lead to parking websites displaying PPC links to websites purportedly offering services identical or related to those of Complainant. It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi,WIPO Case No. D2015-0299; WIPO Overview 3.0, section 3.5). Accordingly, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark. Furthermore, registration of a disputed domain name for directing Internet users, including customers and potential customers of complainant to the website of a competitor of complainant, constitutes bad faith registration and use (item Industrietechnik GmbH v. Kevin Caulfield,WIPO Case No. D2015-0725; Safepay Malta Limited v. ICS Inc.,supra). The failure of Respondent to reply to the cease and desist letter of Complainant and to submit a Response are also further evidence of bad faith. Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith. Complainant has established 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 Domain Names, Marina Perraki
Sole Panelist
Date: September 14, 2020
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