The Complainant is Milliman, Inc. of Seattle, Washington, United States of America ("United States"), represented by Adams and Reese LLP, United States.
The Respondent is Jiang Li of Chengdu, Sichuan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on January 24, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2018, 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. On January 29, 2018, the Center sent an email to the Parties in Chinese and English regarding the language of the proceeding. On the same day, 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 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 February 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 27, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 7, 2018. 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 an actuarial and consulting firm operating in the areas of employee benefits, investment, property and casualty, healthcare and life and financial services, with 62 offices around the world. Among other products, it administers 401K retirement plans. The Complainant owns numerous trademark registrations for MILLIMAN in multiple jurisdictions, including Chinese trademark registration 3838950, registered from May 14, 2006 in respect of retirement fund administration and other services in class 36. That trademark registration remains current. The Complainant has also registered the domain names and that it uses in connection with its official websites. The website at "www.m" is an access-controlled web portal through which the Complainant provides services exclusively to its clients.
The Respondent is an individual located in China. According to the results of a reverse WhoIs search submitted by the Complainant, the Respondent's name or contact email address is associated with many other domain name registrations that are very similar to a domain name used in connection with of a third-party trademark owner's official website, or the address of such an official website.
The disputed domain name was registered on May 2, 2017. It resolves to a landing page showing links to other websites for services such as "401K Retirement Accounts" and "Employee Benefits 401K".
The Complainant sent a cease-and-desist letter in English to the Respondent by email dated October 20, 2017. The Respondent replied in English in an email dated October 23, 2017 advising that the Complainant could either "bu[y] the domain for USD 500 or start a UDRP process for USD1500". 5. Parties' Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant's MILLIMAN mark. The addition of the country code Top-Level Domain ("ccTLD") suffix ".co" does not impact the analysis of identity or confusing similarity between the Complainant's trademark and the disputed domain name. The addition of the word "benefits" does not prevent the disputed domain name from being confusingly similar to the Complainant's MILLIMAN mark. In fact, the inclusion of the word "benefits" actually serves to increase the confusing similarity because the Complainant's business involves the provision of benefits services.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is the exclusive owner of the distinctive and well-known MILLIMAN mark. To the Complainant's knowledge, "Milliman" is not the Respondent's name, and the Respondent is not, and has never been commonly known as "Milliman." The Respondent is not and has never been a licensee or franchisee of the Complainant. Furthermore, the Respondent has never been authorized by the Complainant to register or use the Complainant's MILLIMAN mark or to apply for or use any domain name incorporating the mark. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. The disputed domain name directs to a landing page showing pay-per-click advertising links to websites purportedly offering services identical or related to those of the Complainant.
The disputed domain name was registered and is being used in bad faith. Given the fact that MILLIMAN is a well-known mark universally associated with the Complainant, it is not plausible that the Respondent could have been unaware of the Complainant at the time of registration of the disputed domain name. The Respondent's knowledge of the Complainant is evidenced by inclusion of the word "benefits" in the disputed domain name, and the fact that the Respondent is using the disputed domain name to redirect to a landing page showing pay-per-click advertising links to websites purportedly offering services identical or related to those of the Complainant, and in some cases specifically naming the Complainant and the Complainant's competitors.
The disputed domain name is being used in bad faith to divert Internet users, and particularly the Complainant's clients, to a commercial landing page with links related and identical to the services offered under the Complainant's mark. In doing so, the Respondent is using the MILLIMAN mark to attract the Complainant's clients, and then to encourage those clients, who would plausibly assume that the Complainant owned or endorsed the commercial landing page, to visit other websites they might similarly assume were associated with the Complainant. The Respondent generates unjustified revenues for each click-through of the sponsored links, thereby illegitimately capitalizing on the Complainant's name and reputation. The Respondent's bad faith is furthermore demonstrated by his demand that the Complainant pay him USD 500 for the disputed domain name "or start UDRP process for 1500 USD" as USD 500 far exceeds his out-of-pocket expenses directly related to the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 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 Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are (a) the disputed domain name is in Latin characters and incorporates English words; (b) the Respondent's email address uses an English name and the Respondent replied in reasonably proficient English via email to the Complainant's cease-and-desist letter (also written in English); (c) the disputed domain name directs to a commercial landing page showing pay-per-click links, a copyright notice, and a privacy policy, all of which are in English; (d) reverse WhoIs searches for "jiang li" and the Respondent's email contact address show that the Respondent has registered numerous other domain names comprising English words; and (e) requiring translation of the Complaint and attached annexes from English to Chinese would subject the Complainant to disproportionate expense for translation services and would cause undue delay and inconvenience. The Respondent did not comment on the language request.
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 the Complaint in this proceeding was filed in English. The Parties have engaged in correspondence in English prior to the commencement of this proceeding. Moreover, the website to which the disputed domain name resolves displays links in English. This gives rise to the inference that the Respondent is able to communicate in English. Further, having received notice of the proceeding in Chinese and English, the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that 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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the MILLIMAN trademark.
The disputed domain name wholly incorporates the Complainant's MILLIMAN trademark as its dominant and only distinctive element.
The disputed domain name includes the word "benefits". As a dictionary word, this is incapable of dispelling confusing similarity between a domain name and a trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110.
The disputed domain name also includes the ccTLD suffix ".co". A TLD suffix may generally be disregarded in the comparison between a disputed domain name and a trademark for the purposes of the Policy where, as here, it does not form part of the trademark. See Fareportal Inc. v. Nguyet Dang,WIPO Case No. DCO2016-0028.
Therefore, the Panel finds that the disputed domain name is 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 Interests
Paragraph 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, 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.
The Panel has already found the disputed domain name to be confusingly similar to the Complainant's MILLIMAN trademark. The Complainant informs the Panel that the Respondent has never been authorized by the Complainant to register or use the Complainant's MILLIMAN mark or to apply for or use any domain name incorporating the mark.
With respect to the first and third circumstances above, the disputed domain name resolves to a landing page that displays links to websites offering the same retirement planning services as the Complainant. The links are generated based on the trademark value of the Complainant's mark. That does not create rights or legitimate interests in the disputed domain name for the purposes of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267; Milliman, Inc. v. PrivacyP / Telecom Tech Corp.,WIPO Case No. D2011-0246. Nor is it a noncommercial or fair use of the disputed domain name.
With respect to the second circumstance above, the Respondent's name is shown in the Registrar's WhoIs database as "jiang li", and the user name in his contact email address is "Johnny Leed", neither of which are "Milliman". There is no evidence that the Respondent has been commonly known by the disputed domain name.
In view of the above circumstances, 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 name. The Respondent failed to rebut that case because he did not respond to the Complainant's contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 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 first and fourth circumstances are as follows:
"(i) circumstances indicating that [the Respondent has] registered or [the Respondent 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 [disputed] domain name;" and
"(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 Respondent registered the disputed domain name in 2017, years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. MILLIMAN is not a dictionary word. The disputed domain name incorporates the Complainant's MILLIMAN trademark as its dominant element besides the dictionary word "benefits" and a ccTLD suffix. The choice to include the word "benefits" in the disputed domain name indicates an awareness of the Complainant's services at the time of registration. See Milliman, Inc. v. Wanzhongmedia,WIPO Case No. D2012-1649. Moreover, the Respondent's website address is identical to the Complainant's official website address "www.m" but for the omission of the last letter in the TLD suffix. This does not appear to be coincidental, particularly given the number of other domain names associated with the Respondent's contact email address that differ only slightly from a third party trademark owner's domain name or website address. The disputed domain name is used to attract Internet users to a landing page displaying links to other websites where the links are based on the trademark value of the Complainant's mark. This all gives the Panel reason to believe that the Respondent was aware of the Complainant and its MILLIMAN trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.
As regards use, the Respondent promptly replied to the Complainant's cease-and-desist letter with an offer to sell the disputed domain name to the Complainant for USD 500. According to evidence provided by the Complainant, the Registrar charges USD 12.09 per year for registration of a domain name in the ".co" domain. This circumstance indicates that the Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name within the meaning of paragraph 4(b)(i) of the Policy.
Further, the landing page to which the disputed domain name resolves displays links to other websites offering the same services as the Complainant. The disputed domain name operates by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the landing page. This use was intentional and either for the Respondent's own commercial gain, if he was paid to direct traffic to the other websites, or for the commercial gain of the operators of the linked websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 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 be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: March 11, 2018
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