The Complainant is The Manufacturers Life Insurance Company, Canada, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Do Tung Lam, Viet Nam.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2021. On July 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 23, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On July 23, 2021, the Center sent an email communication to the Complainant informing that the language of the registration agreement is Vietnamese. The Complainant filed an amended Complaint on July 27, 2021, and requested the proceeding to be in English.
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 the Respondent of the Complaint, and the proceedings commenced on July 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2021.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on September 1, 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 BackgroundThe Complainant 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 98,000 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 (e.g., Viet Nam Trademark Registration No. 40355835000 registered on July 7, 2020), 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 Names
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 Names are 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 jurisdictions around the world. Further, the Complainant 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 Names are confusingly similar to the trademark owned by the Complainant by arguing that:
- The Disputed Domain Names reproduce entirely the registered trademark MANULIFE of the Complainant; and
- The addition of the word “baohiem”, which means “insurance” in Vietnamese, could not dispel any confusing similarity. On the contrary, this term misleads the Internet users into thinking that the Disputed Domain Names are related to, sponsored by, or affiliated with the Complainant and its services in Viet Nam, when this is not the case.
- Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” or “.net” in the Disputed Domain Names does not add any distinctiveness to the Disputed Domain Names.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant submits that the elements set forth in the 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.
Second, the Complainant asserts that the Respondent is not commonly known by the Disputed Domain Names or the name “Manulife”, since the pertinent WhoIs information identifies the Registrant as “Do Tung Lam”.
Third, by claiming to be the Complainant or its authorized agent, while featuring a color scheme widely associated with the Complainant on the website, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain to misleadingly divert consumers.
Finally, the Complainant contends that the Respondent has not made use of, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. Particularly, the uses of Disputed Domain Names do 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, contrary to what is stated in the label “MANULIFE INSURANCE - MANULIFE AUTHORIZED AGENT LEVEL 1” at the footer of the Disputed Domain Names’ website.
- The websites at the Disputed Domain Names include no visible disclaimer stating the Website is neither endorsed nor sponsor by the Complainant to explain the non-existing relationship with the Complainant. Instead, the Respondent is misrepresenting itself as the Complainant or the Complainant’s authorized agent.
(iii) The Disputed Domain Names were registered and are 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 these trademarks well before the Respondent’s registrations of the Disputed Domain Names.
Second, the Complainant submits that it is evident from the Respondent’s use of the Disputed Domain Names that the Respondent knew of the Complainant’s MANULIFE trademark when registering the Disputed Domain Names.
Third, the Complainant submits that the Respondent registered and is using the Disputed Domain Names for commercial gain and to profit from the resulting consumer confusion that the Disputed Domain Names’ website is endorsed by or associated with the Complainant. Particularly, the Respondent creates a likelihood of confusing with the Complainant and its trademarks by using the Disputed Domain Names to pass off as the Complainant or its authorized agent. Further, the Respondent is claiming to be the Complainant or its authorized agent, and copying the Complainant’s color scheme at the associated website, with the intention to profit from such confusion by offering the Complainant’s insurance products without authorization. As such, the Respondent is attempting to cause consumers to mislead that the Respondent is the Complainant or associated with the Complainant, when in fact, it is not.
Lastly, in addition to the Disputed Domain Names, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use of the Disputed Domain Names.
Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith under the Policy paragraph 4(b)(iii).
With the said arguments, the Complainant requests that the Disputed Domain Names be transferred to the Complainant.
B. RespondentThe 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 is Vietnamese.
As the Complaint was filed in English, the Center, in its communication dated July 23, 2021, 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 July 27, 2021, 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) of the Rules 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;
(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) Delay in bringing the Complaint
The Panel finds that the Disputed Domain Name
(iii) 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 SimilarThe Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Names are identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to MANULIFE, well before the Disputed Domain Names were registered.
Second, the Disputed Domain Names comprise the Complainant’s MANULIFE mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Names and the trademark is the addition of the prefix “baohiem”, which can be written with tone marks in Vietnamese as “bảo hiểm”, and means “insurance” in English. However, it is well established that the addition of a term to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said term does nothing to prevent the trademark from being recognizable in the Disputed Domain Names, nor to prevent confusing similarity, as it was found in previous UDRP decisions (see, e.g., Price Costco International, Inc. v. Huynh Van Duc, WIPO Case No. D2020-0321; Philip Morris Products S.A. v. Ong Nguyen Ngoc Ha,WIPO Case No. D2019-2509; Facebook, Inc. v. Domain Admin Privacy Protect, LLC (PrivacyProtect.org) / Do Viet Dung,WIPO Case No. D2019-1121).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLDs “.com” or “.net” to the Disputed Domain Names 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 Names are confusingly similar to the Complainant’s MANULIFE trademark, and the first element of the Policy is established.
C. Rights or Legitimate InterestsParagraph 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 Names 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 a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute them.
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 its rights or legitimate interests in the Disputed Domain Names (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 present 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 related to Manulife or the Disputed Domain Names. 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., supra (“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 or services (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 or services);
- the site itself must accurately and prominently disclose the Respondent’s relationship with the trademark owner; and
- the Respondent must not try to “corner the market” in domain names that reflect the trademark, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
In this particular case, it is well proven and evidenced by the Complainant that the Disputed Domain Names used to resolve to a website in Vietnamese, featuring the Complainant’s mark, and offering insurance-related products. On such website, the Panel finds that the Respondent did not place any statement or disclaimer accurately and prominently disclosing its relationship with the Complainant.
In addition, both Disputed Domain Names used to direct users to a website at “www.baohiemmanulife.com”, which comprised the label “Copyright ©2021 MANULIFE INSURANCE - MANULIFE AUTHORIZED AGENT LEVEL 1” at the footer and also featured a color scheme widely associated with the Complainant. In the website’s “About Us” page, the Respondent further claimed to be Manulife Viet Nam, “a member of Manulife Financial”. 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 use of the Disputed Domain Names 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 Names, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Names, 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.
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 FaithParagraph 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.”
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Names in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence relating to the Respondent’s registration and use of the Disputed Domain Names. In this regard, the Panel finds that the Complainant’s MANULIFE trademark has been registered in a variety of jurisdictions around the world. In addition, the Complainant’s MANULIFE trademark has been registered and put in use in, among other countries, Viet Nam where the Respondent resides. These trademark registrations well predate the registration of the Disputed Domain Names.
The Disputed Domain Names comprise the MANULIFE trademark in its entirety, adding the descriptive term “baohiem”. 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 Names in a fortuity. Also, in consideration of the use of the Disputed Domain Names and the contents of the website “www.baohiemmanulife.com”, the Panel is of the view that the Respondent obviously knew of the Complainant and its MANULIFE trademark when it registered the Disputed Domain Names, and the Panel considers the registration is an attempt by the Respondent as to take advantage of the reputation and goodwill of the Complainant’s trademark.
Furthermore, it is well proved and evidenced by the Complainant that the website under the Disputed Domain Names used to offer 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 Names, the Respondent used the Complainant’s color scheme and falsely represented itself as the Complainant’s Vietnamese branch by the label “Copyright ©2021 MANULIFE INSURANCE - MANULIFE AUTHORIZED AGENT LEVEL 1” on the website.
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 the Complainant 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.
Moreover, on the date of this Decision, the Panel accesses the Disputed Domain Names and finds that they are resolving to a Google website “www.sites.google.com/view/dotunglammanulife”, which offers to sell the Disputed Domain Names. Such offer for sale of the Disputed Domain Names is an indicative fact of bad faith in the Panel’s view.
Furthermore, the Panel finds that there has been a “pattern of conduct” on the part of the Respondent as it has registered many other domain names which incorporate the brand names of third parties (such as FORD, TOYOTA, and VIN FAST). See section 3.1.2 of WIPO Overview 3.0.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Names were registered and are being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.
7. DecisionFor 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,
Pham Nghiem Xuan Bac
Sole Panelist
Date: September 14, 2021