The Complainant is The Manufacturers Life Insurance Company, Canada, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Bui Duc Anh, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2020. On December 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 30, 2020, 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 Registrar also disclosed that the registration agreement for the Disputed Domain Name was in Vietnamese. Pursuant to paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Center sent an email communication to the Parties in English and Vietnamese on December 30, 2020, disclosing that the registration agreement for the Disputed Domain Name was Vietnamese. The Complainant was invited to submit satisfactory evidence of an agreement between the Complainants and the Respondent to the effect that the proceedings should be in English; or, submit the Complaint translated into Vietnamese; or, submit a request for English to be the language of the administrative proceedings. The Respondent was similarly invited to submit any comments on the Complainant’s submission regarding the language of the proceeding. The Complainant emailed the Center on December 31, 2020, filing an amended Complaint requesting that English be the language of the proceedings and providing arguments thereto. The Respondent did not respond by the deadline of January 4, 2021. 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, 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 Vietnamese of the Complaint, and the proceedings commenced on January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2021, in both English and Vietnamese. The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on February 3, 2021. 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, The Manufacturers Life Insurance Company, is a Canadian corporation that specializes in financial services, particularly providing financial advice, insurance, and wealth and asset management solutions for individuals, groups, and institutions. According to the Complaint, the Complainant maintains an international network of more than 35,000 employees and 70,000 agents, along with thousands of other distribution partners around the world. In 2019, the Complainant reported core earnings of CAD 6 billion globally. The Complainant is the owner of numerous trademark registrations for the trademark MANULIFE in various jurisdictions throughout the world, including, but not limited to, Canadian Trademark Registration No. TMA385240 registered on May 31, 1991; European Union Trademark Registration No. 000540989 registered on July 09, 1999; United States of America Trademark Registration No. 1790892 registered on August 31, 1993; and, United Kingdom Trademark Registration No. UK00001301399 registered on December 08, 1989. The MANULIFE trademark has also been protected in Viet Nam, where the Respondent resides. The Complainant was the first foreign life insurer to have presence in Viet Nam since 1999, offering a wide range of products from traditional insurance products to health insurance, education, investment association, and retirement to more than 800,000 customers. The Complainant employs professional agents in 61 offices in 45 provinces in Viet Nam. The Complainant also owns a number of domain names featuring the trademark MANULIFE, among which the notable ones are The Disputed Domain Name The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights. First, the Complainant contends that the Complainant is the registered owner of trademark registrations for MANULIFE in numerous countries all around the world. The Complainant further asserts that the MANULIFE trademark is well recognized by consumers, industry peers, and the broader global community. Second, the Complainant contends that the Disputed Domain Name is confusingly similar to the mark owned by the Complainant since the Disputed Domain Name reproduces entirely the registered trademark MANULIFE, and the addition of the descriptive term “online” with a hyphen mark “-” could not dispel any likelihood of confusion. Third, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled. First, the Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s MANULIFE trademark. Secondly, the Complainant asserts that the Respondent is not commonly known by the Disputed Domain Name or the name “Manulife”, since the pertinent WhoIs information identifies the Registrant as “Bui Duc Anh”. Furthermore, the Complainant contends that the Respondent has not made use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. Particularly, the use of Disputed Domain Name does not meet the requirements described in the decision Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903: - The Respondent is not an authorized sale or service agent for the Complainant. - The Website includes no information clarifying the Respondent’s relationship to the Complainant, but, to the contrary, the Respondent is misrepresenting itself as consultant(s) “authorized by Manulife Vietnam to provide free consultation on premium insurance products”. Finally, by copying the Complainant’s MANULIFE logo and color scheme on the associated website, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers. (iii) The Disputed Domain Name has been registered and is being used in bad faith. First, the Complainant asserts that the MANULIFE trademark is known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark well before the Respondent’s registration of the Disputed Domain Name on March 28, 2020. Secondly, the Complainant submits that it is evident from the Respondent’s use of the Disputed Domain Name that the Respondent knew of the Complainant’s MANULIFE trademark when registering the Disputed Domain Name. Furthermore, it is also evident that by copying the Complainant’s MANULIFE logo and color scheme, the Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s MANULIFE trademark as to the source, sponsorship, affiliation or endorsement of its website or a product/service. Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith under Policy 4(b)(iii). With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues (i) Language of the Proceeding The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese. As the Complaint was filed in English, the Center, in its communication dated December 30, 2020, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding. On December 31, 2020, the Complainant filed an amended Complaint, requesting that English be the language of the proceeding. According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to: (i) the fact that the Complainant, a Canadian business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) the English language is quite popular in Viet Nam, where the Respondent is located, and the Disputed Domain Name itself contains the English word “online”; these suggest that the Respondent has knowledge of the English language and will be able to communicate in English; (iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in either English or Vietnamese. Therefore, in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English. (ii) The Respondent’s Failure to Respond The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark. First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to MANULIFE, well before the Disputed Domain Name was registered. Second, the Disputed Domain Name comprises the Complainant’s MANULIFE mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “online”, which evidently refers to the provision of products and services on the Internet, and a hyphen “-”, which is a punctuation mark. The Panel finds that “manulife” remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive term (such as “online”) and a hyphen mark to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said suffix does nothing to prevent the trademark from being recognizable in the Disputed Domain Name, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Royal Canin SAS v. Ong Pham Duc Thang, WIPO Case No. D2017-2567). Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s MANULIFE trademarks, and the first element of the Policy is established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including: “(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 Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions. The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary. Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark MANULIFE. A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”), including: - the respondent must actually be offering the goods or services at issue; - the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); - the site itself must accurately disclose the respondent’s relationship with the trademark owner; and - the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name. In this particular case, the Panel finds the Respondent does not place any statement or disclaimer disclosing accurately its relationship with the Complainant. Further, the website under the Disputed Domain Name also contains the Complainant’s MANULIFE logo and color scheme. In addition, the website under the Disputed Domain Name also comprises the statement “Bảo hiểm trực tuyến Manulife tự hào được Manulife Việt Nam ủy quyền cung cấp dịch vụ tư vấn miễn phí về sản phẩm bảo hiểm ưu việt” (in English “Manulife online insurance is proud to be authorized by Manulife Vietnam to provide free consultation on premium insurance products”) and the Copyright claim “Ⓒ 2020 - Manulife Việt Nam”. These indications may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality. With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name wholly incorporating the Complainant’s MANULIFE trademark does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy. Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the MANULIFE trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant. Moreover, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states that “where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.” Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the second element, paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including: “(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions. The Panel further finds that the Complainant’s MANULIFE trademark has been registered in numerous countries. The Complainant’s MANULIFE trademark has been registered and used in, among other countries, Viet Nam where the Respondent resides. These trademark registrations well predate the registration of the Disputed Domain Name. The Disputed Domain Name comprises the MANULIFE trademark in its entirety, adding only the descriptive term “online” and a hyphen mark. Given the extensive use of the MANULIFE trademark for insurance services by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its MANULIFE trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill. Furthermore, on the date of this Decision, the Panel accessed the Disputed Domain Name and finds that it is still resolving to a website offering insurance services branded with the Complainant’s trademark MANULIFE. In addition to the adoption of the Complainant’s MANULIFE trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant’s logo and color scheme on the website and falsely represented itself as the Complainant’s Vietnamese branch by the statement “Bảo hiểm trực tuyến Manulife tự hào được Manulife Việt Nam ủy quyền cung cấp dịch vụ tư vấn miễn phí về sản phẩm bảo hiểm ưu việt” (in English “Manulife online insurance is proudly authorized by Manulife Vietnam to provide free consultation on premium insurance products”) and the Copyright claim “Ⓒ 2020 - Manulife Việt Nam”. The Panel takes the view that any Internet users seeking to purchase the Complainant’s MANULIFE services would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while no such connection exists in fact. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent. Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established. 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 Pham Nghiem Xuan Bac
Sole Panelist
Date: February 8, 2021
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