The Complainant is The Manufacturers Life Insurance Company, Canada, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Jack Zhang, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2021. On October 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 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 October 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2021. On November 9, 2021, the Respondent requested an extension of time of one to two months for the filing of its Response “due to several COVID-19 cases in my neighborhood”. On the same day, the Center informed the Respondent that its request would be forwarded to the Panel when appointed. The Center also invited the Complainant’s response to the Respondent’s extension request by November 11, 2021. The Complainant submitted a supplemental filing on November 11, 2021 which opposed the Respondent’s request for further time and made additional submissions in support of the Complaint. On November 15, 2021, the Center exceptionally granted an extension of time until November 24, 2021 for service of the Response. No Response was filed by the Respondent. The Center notified the Parties of the Commencement of Panel Appointment Process on November 26, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on December 6, 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.
Having considered the Respondent’s request for an extension of time, the Panel finds that the exceptional grant of an extension of time until November 24, 2021 was ample to allow the Respondent to file a Response and that no additional extension of time was warranted.
Other than noting its opposition to the Respondent’s request for further time, Panel disregards the remainder of the Complainant’s supplemental filing on the grounds that its additional submissions were unsolicited and that the Panel finds there to be no exceptional reasons for accepting those submissions. The Panel notes that the Complainant’s supplemental filing would not have any impact on the outcome of the Decision in any event.
4. Factual BackgroundThe Complainant is a financial services company with its principal operations in Canada. It trades in Canada and in Asia under the name and trademark MANULIFE.
The Complainant is the owner of numerous trademark registrations which comprise or include the mark MANULIFE. Those registrations include, for example:
- Canada trademark registration number TMA385240 for the word mark MANULIFE, registered on May 31, 1991, for goods and services including investment services in International Classes 9, 16, 35, 36, 37, 41 and 44;
- China trademark registration number 1115596 for the word mark MANULIFE, registered on September 28, 1997, for services including financial and investment services in International Class 36;
- Canada trademark registration number TMA610229 for the word mark MANULIFE INVESTMENTS, registered on May 13, 2004, for services including financial and investment services in International Classes 36 and 41; and
- China trademark registration number 37138045 for the word mark MANULIFE INVESTMENT MANAGEMENT, registered on December 7, 2019, for services including financial planning and investment consulting services in International Class 36.
The disputed domain name was registered on September 12, 2014.
According to evidence submitted by the Complainant, the disputed domain name has resolved to a website operated by “Dan.com” headed “manulifeinvestment.com is for sale” and offering the disputed domain name for sale for the price of USD 5,000.
At the date of this Decision, the disputed domain name redirects to a website at “www.manutd.com”, which appears to be an official website of Manchester United Football Club.
5. Parties’ Contentions A. ComplainantThe Complainant states that it was founded in 1887 and that it is currently a global leader in financial services, providing financial advice and wealth management solutions for individuals and institutions. It states that it maintains an international network of over 35,000 employees and 98,000 agents, serving almost 30 million customers. It reported core global earnings of CAD 6 billion for 2019 and claims over CAD 1.3 trillion of funds under management. In Asia, it claims over 120 years of operations with over 95,000 contracted agents across 11 markets including China. The Complainant exhibits information concerning its history and business profile, including media coverage and industry awards. The Complainant states that it operates numerous websites, including those located at “www.manulife.com” and “www.manulifeinvestments.com”, the former of which is stated to have a monthly average of 2.6 million visitors from July to December, 2020. The Complainant contends that it has in the circumstances established considerable fame and goodwill in the MANULIFE trademarks and brands, which are uniquely associated with the Complainant.
The Complainant submits that the disputed domain name is confusingly similar to both its MANULIFE and MANULIFE INVESTMENTS trademarks. It contends that, in the former case, the disputed domain name combines its MANULIFE trademark with the generic and descriptive term “investment”, which in fact describes the Complainant’s own area of activity. In the latter case, the Complainant says that the disputed domain name is identical to its MANULIFE INVESTMENTS trademark, but for the omission of the final letter “s”, which can only be viewed as a case of “typosquatting”, i.e., deliberate misspelling aimed at diverting Internet users who inadvertently type an incorrect name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it is not affiliated with the Respondent, has not licensed or otherwise permitted it to use its MANULIFE or MANULIFE INVESTMENTS trademarks and that the Respondent has not commonly been known by those names. The Complainant contends that the Respondent’s use of the disputed domain name, to direct only to a webpage offering the disputed domain name for sale and having no other active content, cannot constitute any bona fide commercial use of the disputed domain name.
The Complainant submits that the disputed domain name was registered and has been used in bad faith.
The Complainant contends that, owing to the similarity between the disputed domain name and the Complainant’s MANULIFE and MANULIFE INVESTMENTS trademarks, it is implausible that the Respondent was unaware of those trademarks when it registered the disputed domain name.
The Complainant further submits that the disputed domain name is so obviously connected with its widely-known MANULIFE and MANULIFE INVESTMENTS trademarks that the registration of the disputed domain name itself constitutes opportunistic bad faith. It adds that the Respondent’s “typosquatting” also clearly demonstrates its bad faith.
The Complainant contends that the Respondent has attempted to sell the disputed domain name, which is confusingly similar to the Complainant’s trademarks, for a sum which is obviously in excess of its out-of-pocket costs connected with the registration, which constitutes use of the disputed domain name in bad faith as contemplated by paragraph 4(b)(i) of the Policy. Alternatively, the Complainant submits that the Respondent is seeking to disrupt the Complainant’s business (paragraph 4(b)(iii) of the Policy).
The Complainant submits that, insofar as the Respondent’s use of the disputed domain name is inactive, that is not an impediment to a finding of registration and use in bad faith. The Complainant adds that there is no future use that the Respondent could make of the disputed domain name that would not cause confusion with the Complainant’s trademarks.
The Complainant states that it sent a “cease and desist” letter to the Respondent on September 24, 2021 but, despite this and further communications, the Respondent has persisted with the conduct complained of.
The Complainant further alleges that the Respondent has been engaged in a pattern of bad faith registrations of domain names corresponding to third party trademarks and cites three findings against the Respondent under the UDRP, including e.g. Facebook Technologies, LLC v. Jack Zhang,WIPO Case No. D2019-2160.
B. RespondentApart from its email communication of November 9, 2021 as described under the Procedural History, the Respondent did not formally reply to the Complainant’s submissions.
6. Discussion and FindingsIn order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(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.
A. Identical or Confusingly SimilarThe Complainant has demonstrated that it has registered trademark rights in the marks MANULIFE and MANULIFE INVESTMENTS. The disputed domain name fully incorporates the first of those trademarks together with the dictionary word “investments” which does not prevent the Complainant’s trademark from being recognizable within the disputed domain name. The disputed domain name is identical to the second of the trademarks but for the exclusion of the final letter “s” in the disputed domain name. The Panel finds therefore that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.
B. Rights or Legitimate InterestsIn the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has failed to file any Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise.
While it is not objectionable per se to offer a domain name for sale for a premium sum, such offer cannot be legitimate where the domain name specifically targets and seeks to take advantage of a third party trademark. The Panel has no doubt in this case that the disputed domain name targets the Complainant’s MANULIFE and MANULIFE INVESTMENTS trademarks and finds that the offer for sale was not in the circumstances a bona fide commercial use of the disputed domain name.
The Panel further notes that, following the commencement of this proceeding, the Respondent has redirected the disputed domain name to resolve to a Manchester United Football Club website. Since there is no evidence of any connection between the Respondent and that party, this does not give rise to any rights or legitimate interests in respect of the disputed domain name, which is in any event inherently misleading. The Panel finds indeed that the redirection of the disputed domain name in this manner is merely indicative of the Respondent’s intent to mislead.
The Panel finds in the circumstances that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe Panel finds the Complainant’s MANULIFE trademark to be widely known and distinctive of the Complainant and its services, and that there is no evidence that the term has used in commerce other than to refer to the Complainant. These matters are alone are sufficient for the Panel to infer, in the absence of any explanation from the Respondent, that the Respondent was likely to have had the Complainant’s trademark in mind when it registered the disputed domain name. This case goes further, however, in that the disputed domain name not only incorporates the MANULIFE trademark, but is also almost identical to the Complainant’s MANULIFE INVESTMENTS trademark and domain name
The Panel finds further that the disputed domain name is inherently misleading, as inevitably suggesting to Internet users that it is operated or authorized by, or otherwise affiliated with, the Complainant. The Panel accepts the Complainant’s submission that, in these circumstances, there is no bona fide use that the Respondent could plausibly make of the disputed domain name and that the Respondent must therefore be found to be using the disputed domain name in bad faith.
While it is unnecessary in the circumstances to determine the Respondent’s specific motive for registering the disputed domain name, the Panel finds it most likely in view of the Respondent’s offer to sell the disputed domain name for USD 5,000 that it acquired the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).
As stated above, the Panel finds the Respondent’s diversion of the disputed domain name to the Manchester United Football Club website to be further indicative of its bad faith in the matter.
The Panel finds therefore that the disputed domain name has been registered and is being used in bad faith.
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 name,
Steven A. Maier
Sole Panelist
Date: December 20, 2021