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 Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2021, 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 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 of the Complaint, and the proceedings commenced on February 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2021. The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on March 26, 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 is the owner of trademark registrations in over 45 different jurisdictions with the JOHN HANCOCK formative marks being the subject of over 90 trademark registrations worldwide. In the United States, the Complainant is the owner of United States Registration No. 557,033 of the mark JOHN HANCOCK (stylized), which has been registered since April 1, 1952, and United States Registration No. 1,287,236 registered on July 24, 1984 for the mark JOHN HANCOCK. The Complainant uses the trademark JOHN HANCOCK in connection with numerous financial services, insurance and long term care underwriting and administration, financial planning, and investment for others, including retirement plan services. The Complainant’s core retail products in the United States focus on providing financial services for every stage of life. Current products include life insurance, mutual funds, 401(k) plans, retirement plans, long-term care insurance, travel insurance, and annuities. The Complainant’s products are distributed primarily through licensed financial advisors. The Complainant also has a strong internet presence through its primary website “www.johnhancock.com” as well as its various social media platforms including Facebook, Twitter, Instagram and LinkedIn. According to SimilarWeb.com, the Complainant’s website located at its primary domain name received an average of 543,000 total visits during a six-month period ranging from January 2020 – June 2020. In addition, has a global ranking of 23,668 and ranks 4,469 in the United States. The Complainant is also the owner of the domain name The disputed domain name has been registered with Internet Domain Service BS Corp since September 16, 2007 and resolves to a website featuring pay-per-click links related to adult content and adult dating websites. 5. Parties’ Contentions A. Complainant The Complainant contends that: - It is the owner of the well-known JOHN HANCOCK trademark and the disputed domain name is clearly confusingly similar, if not identical, to the Complainant’s brand and registered JOHN HANCOCK trademark. - The granting of registrations by the USPTO and EUIPO to the Complainant for the JOHN HANCOCK trademark is prima facie evidence of the validity of the term JOHN HANCOCK as a trademark, of Complainant’s ownership of this trademark, and of Complainant’s exclusive right to use the JOHN HANCOCK trademark in commerce on or in connection with the goods and/or services specified in the registration certificates. - The Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not given the Respondent permission to use Complainant’s trademarks in any manner, including in domain names. - The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. - The Respondent is using the disputed domain name to redirect internet users to a website featuring links to third-party websites. These links directly promote adult content and adult dating websites, and bear no relation to the term “retirement”. It is clear that these pay-per-click ads are in no way related to the generic or dictionary meaning of the disputed domain name, and that the Respondent’s primary intention is to divert Internet users who intend to seek information concerning the Complainant’s products and services to its own website. Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name’s website. - The disputed domain name was registered on September 16, 2007, but the Complainant contends the disputed domain name only transitioned to the Respondent between September 14, 2014 and November 27, 2014, which is also significantly after the Complainant’s registration of its JOHN HANCOCK trademarks. - The Complainant has also extensively used its JOHN HANCOCK trademarks in commerce since 1862 and Complainant has provided evidence of trademark rights in major jurisdictions that predate the registration of the disputed domain name. - The Complainant has had no interaction with the Respondent whatsoever in regard to the disputed domain name outside of the sending of a Cease and Desist letter and the filing of this dispute. - The Respondent has passively held the disputed domain name since its registration only recently using the disputed domain name to host pay-per-click sites featuring links to adult content; thus, no identity in the disputed domain name has been developed. - By registering a domain name that incorporates Complainant’s JOHN HANCOCK trademark in its entirety, adding a term that is related to the Complainant and its services, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, as well as its primary domains, and its subdomain, and as such, the Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. Here, the Respondent creates a likelihood of confusion with Complainant and its trademarks by registering a domain name that incorporates Complainant’s JOHN HANCOCK trademark in its entirety, with the mere addition of the related term “retirement”, which demonstrates that the Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for Complainant’s services, and to mislead Internet users as to the source of the disputed domain name and website. - By creating this likelihood of confusion between the Complainant’s trademarks and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the disputed domain name’s website for Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to Respondent’s website, most of which relate to adult content. - The Respondent has ignored Complainant’s attempt to resolve this dispute outside of this administrative proceeding. - The Respondent has previously been involved in over a hundred of other UDRP cases, which provides evidence of the pattern of cybersquatting in which Respondent is engaging. - The Respondent has employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. - On balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith. B. Respondent Although properly summoned, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar This Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the JOHN HANCOCK trademark. The disputed domain name comprises the entirety of the Complainant’s trademark together with the addition of the term “retirement”. It is the opinion of this Panel that the addition of this element does not preclude a finding of confusing similarity between the JOHN HANCOCK trademark and the disputed domain name. It is accepted by previous UDRP panels that the addition to the complainant’s trademarks of words or terms that describe or refer to part of the complainant’s business in the disputed domain name does not affect the confusing similarity between the disputed domain name and the registered trademark under the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. For all the reasons above, this Panel finds that the disputed domain name is confusingly similar to the JOHN HANCOCK marks and that the Complainant has established the first element of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, according to section 2.1 of the WIPO Overview 3.0. In these proceedings, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant’s contentions. This Panel finds the contentions of the Complaint in relationship to the lack of rights or legitimate interest of the Respondent in the disputed domain name well-argued and documented. Use of the disputed domain name to redirect Internet users to a website featuring links that directly promote adult content and adult dating websites, and bear no relation to the term “retirement”, indicate that these pay-per-click links are in no way related to the generic or dictionary meaning of the disputed domain name, and that the Respondent’s primary intention is to profit by diverting Internet users who intend to seek information concerning the Complainant’s products and services to its own website. In these circumstances, such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. As noted above, the contentions of the Complainant have not been rebutted by the Respondent. Furthermore, the composition of the disputed domain name, comprising the JOHN HANCOCK trademark and a related dictionary term, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. Therefore, in the opinion of this Panel, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is therefore established. C. Registered and Used in Bad Faith The Complainant submits various factors which this Panel considers relevant evidence for a finding of bad faith in registering and using the disputed domain name. In this sense, the Complainant asserts that the JOHN HANCOCK trademarks have been used in commerce since 1862 and it has provided evidence of registered trademark rights in various jurisdictions that predate registration of the disputed domain name. By registering a domain name that incorporates the Complainant’s JOHN HANCOCK trademark in its entirety, adding a term that is related to the Complainant and its services, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark and has demonstrated a knowledge of and familiarity with Complainant’s brand and business. On balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted Complainant’s trademark at the time of registration of the disputed domain name. The Panel agrees, that by registering and using the disputed domain name the Respondent creates a likelihood of confusion with the Complainant and it further demonstrates that the Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for Complainant’s services, and to mislead Internet users as to the source of the disputed domain name and website. This Panel also agrees with the Complainant that it is transparent that the Respondent has nefariously capitalized on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the disputed domain name’s website for Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to Respondent’s website, most of which relate to adult content. Moreover, the fact that the Respondent has employed a privacy service to hide its identity and failed to reply to Complainant’s attempt to resolve this dispute outside of this administrative proceeding or to the Complaint, is in the opinion of this Panel a further indication of bad faith registration and use of the disputed domain name in this case. Accordingly, the Panel finds that the Respondent registered and used in bad faith the disputed domain name, and therefore, the third element of paragraph 4(a) 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 Beatrice Onica Jarka
Sole Panelist
Date: April 9, 2021
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