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 Shawn Wang, Germany.
2. The Domain Name and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2021. On October 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 5, 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 October 9, 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 on October 13, 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 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 October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2021.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on November 23, 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 was founded in 1862 and the Complainant’s trademark JOHN HANCOCK has been in use ever since. The Complainant’s trademark is registered in various countries, for example in the United States under No. 0557033 on April 1, 1952. The Complainant provides various financial services including life insurances, mutual funds, retirement plans and travel insurance.
All the disputed domain names were registered on August 5, 2021. The disputed domain names resolve to websites containing pay-per-click (“PPC”) links to third-party websites offering services competing with those of the Complainant.
5. Parties’ Contentions A. ComplainantThe disputed domain names are purposeful misspellings of the Complainant’s trademark JOHN HANCOCK. They include various misspellings of the words “John”, “Hancock”, “travel”, and “insurance”. As such, the disputed domain names are typical examples of typosquatting.
The Complainant has not given the Respondent permission to use the Complainant’s trademark in any manner, including in domain names. The Respondent is not commonly known by the disputed domain names. The disputed domain names resolve to websites containing PPC links to third-party websites offering services competing with those of the Complainant. The Respondent is monetizing the disputed domain names by using PPC links.
By registering the disputed domain names, the Respondent has created domain names that are confusingly similar to the Complainant’s trademark, which demonstrates knowledge of the Complainant’s trademark and business. The Respondent is attempting to capitalize on the typing errors committed by the Complainant’s customers when trying to locate the Complainant on the Internet.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain names are identical or confusingly similar to this trademark.
According to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
Furthermore, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview 3.0.
The disputed domain names are confusingly similar to the Complainant’s trademark as they include the Complainant’s trademark in an easily recognizable form (albeit, two of the disputed domain names feature typographic variations thereof, e.g., “johnhancok” and “jonhancock”) combined with the words “travel” and “insurance” (or typographical variations thereof, e.g., “trave” and “insurace”), relating to the Complainant’s activities. These typos and additions do not prevent confusing similarity between the Complainant’s trademark and the disputed domain names.
This means that the disputed domain names are confusingly similar with the Complainant’s trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain names.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of proof shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain names, that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and is not commonly known by the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy.
Moreover, the Panel finds that the nature of the disputed domain names carries a risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0. Moreover, “[a]pplying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. See section 2.9 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or has 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the 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.”
Considering that the Complainant has been using and registering its trademark JOHN HANCOCK since 1862, it is clear that the Respondent must have been aware of the Complainant and its trademark when registering the disputed domain names. See section 3.1.4 of the WIPO Overview 3.0.
The disputed domain names have been found to be confusingly similar with the Complainant’s trademark JOHN HANCOCK, and the disputed domain names resolve to PPC websites offering links to websites of competitors of the Complainant. Using a PPC website containing links to third parties’ websites generate revenue for the Respondent or another party when Internet users click the links.
It is therefore evident that the Respondent has registered the disputed domain names to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, or endorsement of the Respondent’s website.
Therefore, the Panel finds that the third element of the Policy is fulfilled.
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,
Tuukka Airaksinen
Sole Panelist
Date: December 7, 2021