The Complainant is John Hancock Life Insurance Company (U.S.A.), United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is 钱梦聃 (Meng Dan Qian / Qianmengdan), China. 2. The Domain Names and Registrars
The disputed domain names The disputed domain name The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2020. On August 12, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 13, 2020, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On August 17, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 18, 2020, the Complainant confirmed its request that English be the language of the proceeding. On August 18, 2020, the Respondent inquired if it could reply in Chinese. The Center kept on record an email communication in English from the Respondent dated August 8, 2020, regarding the disputed domain names, which was part of a previous proceeding that was separated into two proceedings following the disclosure of different registrant details for part of the domain names subject to the previous proceeding. Consequently, the Complainant filed a separate Complaint for the disputed domain names. 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 in English and Chinese of the Complaint, and the proceedings commenced on August 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2020. On August 21, 2020, the Center received the Respondent’s email communication. No formal Response was filed with the Center. On September 15, 2020, the Center informed the Parties that it would proceed to appoint the Panel. The Center appointed Rachel Tan as the sole panelist in this matter on September 29, 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 The Complainant is a wholly owned subsidiary of Manulife Financial Corporation, founded in 1862. Its core retail products in the United States include life insurance, mutual funds, 401(k) plans, retirement plans, long-term care insurance, travel insurance and annuities. The Complainant has used the JOHN HANCOCK mark in the United States since its inception in 1862 and internationally since the early 1990s in connection with financial services, insurance and long-term care underwriting and administration, financial planning, and investment for others. The Complainant owns a range of trade mark registrations for its JOHN HANCOCK mark worldwide, including registrations in the United States and China that solely incorporate the term “John Hancock”, namely, United States Registration No. 0557033 registered on April 1, 1952, in class 36; United States Registration No. 1287236 registered on July 24, 1984, in class 36; Chinese Registration No. 1097429 registered on September 7, 1997, in class 36. The Complainant is also the owner of the domain names The Respondent is 钱梦聃 (Meng Dan Qian / Qianmengdan), China. The disputed domain names were either registered on June 6, 2020 or July 3, 2020. They resolved to parked pages comprising pay-per-click advertising links entirely in English that divert Internet users to various third parties’ websites, some of which related to insurance and financial advisory services. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are confusingly similar, if not identical, to the Complainant’s registered JOHN HANCOCK trade mark. The Complainant is the owner of the JOHN HANCOCK trade mark. The applicable Top-Level Domain (“TLD”) in the disputed domain names should be disregarded under the first element confusing similarity test. The disputed domain names are purposeful misspelling of the Complainant’s JOHN HANCOCK trade mark because most of them consist of random single letters like “o”, “c”, “p”, “v”, “j” within the JOHN HANCOCK trade mark. The disputed domain names must be considered as prototypical example of typosquatting. In creating the disputed domain names The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the disputed domain names. The Complainant has not licensed, authorized, or permitted the Respondent to register the disputed domain names incorporating the Complainant’s trade mark. The pertinent WhoIs information identifying the Respondent does not resemble the disputed domain names in any manner. The Respondent is using the disputed domain names to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with the Complainant’s business. It is presumed that the Respondent receives pay-per-click fees from the linked websites that are listed at the websites associated with the disputed domain names. The disputed domain names were registered significantly after the Complainant filed for registration its JOHN HANCOKC trade mark and domain names. The Complainant finally asserts that the disputed domain names were registered and are being used in bad faith. The Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The JOHN HANCOCK mark is so closely associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith. The Respondent knew, or at least should have known, of the existence of the Complainant’s trade mark at the time of registration of the disputed domain names. The disputed domain names are typosquatted versions of the Complainant’s JOHN HANCOCK trade mark and has intentionally been designed to closely mimic the Complainant’s trade mark and primary domains. The Respondent is using the disputed domain names to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the disputed domain names and websites. The sheer number of disputed domain names registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting. The Respondent had employed a privacy service to hide its identity at the time of initial filing of the Complaint, which past UDRP panels have held serves as further evidence of bad faith registration and use. B. Respondent The Respondent contends that “John Hancock” is a person’s name, and the Respondent did not intentionally copy the Complainant’s trade mark. The disputed domain names are indicated on the resolved websites in large print to remind Internet users of the websites that they are visiting. All advertisements appearing in the resolved websites have nothing to do with the Complainant and the Respondent never attempted to mislead Internet users to the websites. 6. Discussion and Findings 6.1. Language of the Proceeding Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions. In this case, the Registrars have confirmed to the Center that the language of the Registration Agreements are Chinese. However, the Complainant requested the language of the proceeding be in English on the grounds that: (a) The Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter; (b) Considering the obviously abusive nature of the disputed domain names which are all typosquatted versions of the Complainant’s JOHN HANCOCK trade mark and the (c) The disputed domain names are comprised of Latin characters; (d) The websites found at the disputed domain names feature third-party links that are in English; (e) The term “John Hancock” does not carry any specific meaning in the Chinese language; (f) Pursuant to paragraph 11(a) of the Rules, the Panel may determine the language of the proceedings having regard to all circumstances, and to help ensure fairness, and maintain an inexpensive and expeditious avenue for resolving domain name disputes. In this case, it would unduly burden the Complainant to have to arrange and pay for translation where the Respondent has demonstrated behavior that disrupts the Complainant’s business and has already required the Complainant to devote significant time and resources to addressing this instance of abuse. (g) Even in instances where a registration agreement was in a language other than English, past UDRP panels have made the decision to allow a case to proceed in English based on the totality of circumstances in that case. On the other hand, the Respondent inquired if it could reply in Chinese. The Panel will treat this as the Respondent’s request for the language of the proceedings to be in Chinese. It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below. (a) The Complainant is a company based in the United States. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses; (b) The Respondent’s choice of English words for the disputed domain names indicates some familiarity with the English language; (c) The email communication from the Respondent to the Center dated August 8, 2020 regarding the disputed domain names is also in English; (d) The webpages to which the disputed domain names resolve are entirely in English. Hence, the Respondent is likely to be able to understand English; (e) The Respondent inquired whether it could reply in Chinese but did not expressly request for the proceeding to be in Chinese, nor did it provide any reasons for it; (f) The Center sent all case related communications in both English and Chinese; and (g) The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. The Panel would have accepted a Response in either English or Chinese, but none was filed. 6.2. Substantive Issues A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the JOHN HANCOCK trade mark. The Panel notes that each of the disputed domain names The Panel notes that the disputed domain names Further, the elements “retirement” and “retirementplanservice” do not preclude a finding of confusing similarity between the JOHN HANCOCK trade mark and the disputed domain names Lastly, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) suffix, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0. Accordingly, the Panel finds that the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In circumstances where the Complainant possesses exclusive rights to the JOHN HANCOCK trade mark, whereas the Respondent seems to have no trade mark rights, and taking into account the facts and arguments set out above, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following: (i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark 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 trade mark or service mark at issue. The Respondent asserts a lack of intention to copy the Complainant’s mark or mislead Internet users. Yet, the Respondent failed to present any evidence to establish its rights or legitimate interests. The Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term “John Hancock”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain names or otherwise has rights or legitimate interests in any of them. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s JOHN HANCOCK trade mark or register the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy is present in this case. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant’s JOHN HANCOCK trade mark has been widely registered around the world. The disputed domain names were registered well after the registration of the Complainant’s JOHN HANCOCK trade marks. Through extensive use and advertising, the Complainant’s JOHN HANCOCK trade mark is known throughout the world, including China where the Respondent is apparently located. Moreover, JOHN HANCOCK is not merely the name of a person, as the Respondent suggested. Search results using the key words “John Hancock” on the Baidu and Google search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the JOHN HANCOCK trade mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s JOHN HANCOCK trade mark when registering the disputed domain names or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874. Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain names are either misspelling of the JOHN HANCOCK trade mark or completely incorporated the JOHN HANCOCK trade mark plus a descriptive term, meaning that bad faith registration of the disputed domain names can be presumed. Section 3.5 of the WIPO Overview 3.0 states that “[p]articularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).” The Panel notes that the disputed domain names resolve to parked pages comprising pay-per-click advertising links that divert Internet users to various sites related to insurance and financial advisory services. The Panel finds the use of confusingly similar disputed domain names to lure Internet users to websites hosting links to providers of competing products or services is prima facie evidence of bad faith, which has not been successfully rebutted by the Respondent. Therefore, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 Rachel Tan
Sole Panelist
Date: October 13, 2020
Full & Egal Universal Law Academy