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 杨智超 (Zhichao Yang), China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 27, 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 31, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on August 5, 2021.
On July 31, 2021, the Center also transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 5, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 12, 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 financial service company that offers life insurance, long-term care insurance, mutual funds, retirement plan services, and college saving plans, among other products. The Complainant holds multiple trademark registrations for JOHN HANCOCK in multiple jurisdictions, including the following:
- United States trademark registration number 1287236, registered on July 24, 1984, with a claim of first use in commerce on January 1, 1969; and
- Chinese trademark registration number 1097429, registered on September 7, 1997.
The above registrations both specify services in class 36 and they remain in force. The Complainant has also registered domain names including
The Respondent is an individual resident in China.
Five disputed domain names (
According to evidence provided by the Complainant, a panel in a previous proceeding under the Policy decided that the Respondent had registered and was using in bad faith 81 other domain names that incorporated the Complainant’s JOHN HANCOCK mark or a misspelling of that mark. Those domain names were registered on June 16, 2020 and resolved to parked pages comprising PPC advertising links that diverted Internet users to various third party websites, some of which were related to insurance and financial advisory services. See John Hancock Life Insurance Company v. 杨智超(Zhi Chao Yang),WIPO Case No. D2020-1889.
5. Parties’ Contentions A. ComplainantThe disputed domain names are confusingly similar to the Complainant’s JOHN HANCOCK mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not commonly known as “John Hancock”. The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark. 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.
The disputed domain names were registered and are being used in bad faith. By registering domain names that incorporate the Complainant’s JOHN HANCOCK trademark in its entirety, adding related terms to the Complainant and with various one-letter typographical errors, the Respondent has created domain names that are confusingly similar to the Complainant’s trademark, as well as its primary domains. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The sheer number of infringing domain names registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use. The Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering domains that contain numerous typographical errors wherein each infringes upon the Complainant’s JOHN HANCOCK trademark, which demonstrates that 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.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingParagraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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”. The Registrar confirmed that the Registration Agreements for all the disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that, as it is unable to communicate in Chinese, translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings; and the websites associated with the disputed domain names are in English.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. The landing pages to which the disputed domain names resolve are also in English, from which it is reasonable to infer that the Respondent is able to communicate in that language. Further, despite the Center having sent an email regarding the language of the proceeding and a notice of the Complaint in both English and Chinese, the Respondent did not comment on the issue of language or express any interest in participating otherwise in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response filed in Chinese, but none was filed.
6.2. Substantive IssuesParagraph 4(a) of the Policy provides that, with respect to each disputed domain name, the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Based on the evidence presented, the Panel finds that the Complainant has rights in the JOHN HANCOCK mark.
Thirty-two disputed domain names incorporate the JOHN HANCOCK mark, omitting only the space between the names for technical reasons. The other 37 disputed domain names incorporate versions of the JOHN HANCOCK mark with a letter variously mistyped, inverted, or added. This practice is known as “typosquatting”. In each case, these disputed domain names contain sufficiently recognizable aspects of the relevant mark to be considered confusingly similar to it. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.
All but one of the disputed domain names also include the word “insurance” or a misspelling of that word while the disputed domain names
The disputed domain names also include a generic Top-Level Domain (“gTLD”) (“.com”). As a mere technical requirement of domain name registration, a gTLD is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the second circumstance set out above, the Respondent is identified in the Registrar’s WhoIs database as “杨智超 (Zhichao Yang)”, not “John Hancock”, nor any of the disputed domain names. There is no evidence indicating that the Respondent has been commonly known by any of the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy.
As regards the first and third circumstances set out above, the disputed domain names resolve to landing pages that display PPC links to websites offering insurance that compete with the Complainant’s services. In one case, a landing page also displays at times PPC links to websites offering unrelated products. The Complainant submits that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s JOHN HANCOCK trademark. This evidence constitutes a prima facie case that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Given that the PPC links operate for the commercial gain of the Respondent, if he is paid to direct traffic to the linked websites, or the commercial gain of the operators of those linked websites, or both, this is not a legitimate noncommercial or fair use of the disputed domain names within the circumstances of paragraph 4(c)(iii) of the Policy either.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
The disputed domain names were registered in 2020 and 2021, decades after the Complainant obtained its trademark registrations for JOHN HANCOCK, including in China, where the Respondent is resident. The disputed domain names incorporate the JOHN HANCOCK mark or a cascade of misspelt versions of that mark, which indicates a deliberate attempt to target that mark. All but one of the disputed domain names incorporate the word “insurance” or a misspelling of that word, which indicates an awareness of the Complainant’s services. Moreover, the Respondent has demonstrably had actual knowledge of the Complainant and its JOHN HANCOCK mark since a previous proceeding under the Policy issued a decision in favour of the Complainant on October 13, 2020, which was prior to the registration of 64 of the disputed domain names in the current proceeding. In view of these circumstances, the Panel finds that the Respondent knew of the Complainant and had its JOHN HANCOCK trademark in mind when he registered the disputed domain names in this proceeding.
The Respondent uses the disputed domain names in connection with landing pages displaying PPC links to websites for services that compete with those of the Complainant. The PPC links operate for the commercial gain of the Respondent, if he is paid to direct traffic to the linked websites, or the commercial gain of the operators of those linked websites, or both. In view of these circumstances, the Panel considers that the disputed domain names are intended to attract Internet users by creating a likelihood of confusion with the Complainant’s JOHN HANCOCK trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or other online location of a service offered on such other online location within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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
Matthew Kennedy
Sole Panelist
Date: October 26, 2021