The Complainant is Great-West Life & Annuity Insurance Company d/b/a Empower Retirement, United States of America (“United States”), represented by Armstrong Teasdale, LLP, United States.
The Respondent is Whois Privacy, Private by Design, LLC, United States / Jiang Li, Yihuanlu, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 25, 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 January 29, 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 February 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2021. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 2, 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 Background The Complainant is a corporation of the State of Colorado, United States, which provides retirement account management services to plan participants via the website at “www.empowermyretirement.com”, the domain name for which was registered on March 23, 2016, and which resolves to the Complainant’s participant login page. Employers direct their employees to this page in order to manage their retirement accounts. The Complainant is the second-largest retirement services provider in the United States, serving over 41,000 organizations and 9.7 million retirement plan participants. The Complainant is the owner of a variety of EMPOWER and EMPOWER RETIREMENT trademarks, including for example, United States registered trademark no. 5256647 for the word and design mark EMPOWER RETIREMENT, filed on October 27, 2014 and registered on August 1, 2017 in International classes 35 and 36. The disputed domain name was registered on July 24, 2017 and, according to the Registrar’s verification, was transferred to the Registrar on July 11, 2018. Screenshots produced by the Complainant taken on December 18, 2020 show that the disputed domain name resolves to a parked page featuring hyperlinks relating to retirement accounts. The Complainant has identified at least 21 prior cases under the Policy in which the Respondent, or “Johnny Leeds” (the name associated with the Respondent’s email address) has been named as respondent. In each of these cases, in which the respondent filed no response, the domain names involved were found to be engaged in pay-per-click activity and were transferred to the complainant concerned. The Complainant’s representative issued demand notices to the Respondent via the Registrar on November 23, 2020 and December 15, 2020. The Respondent did not reply to either of such notices. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: The Complainant’s domain name The Complainant has never authorized the Respondent to use any of its trademarks. The Respondent has never been commonly known by the disputed domain name, has not used the domain name in any bona fide business, and has simply adopted the disputed domain name in bad faith in order to profit from confusing similarity with the Complainant’s marks. The Respondent is a serial offender under the Policy and uses the disputed domain name consistently with previous cases. The disputed domain name resolves to a parked page featuring hyperlinks relating to retirement accounts. If a user follows said hyperlinks, they are presented with offerings of retirement and financial services which are similar to those of the Complainant. Such use is not a bona fide offering of goods or services. By registering the disputed domain name, which is visually and phonetically similar to the Complainant’s trademark and is a common misspelling of that mark, the Respondent was hoping to take advantage of the Complainant’s popularity by catching traffic from Internet users looking for the Complainant, but misspelling its name. The Respondent registered the disputed domain name with intent to profit from confusion with the Complainant’s trademarks. Given the widespread use and fame of said marks and the Complainant’s stature as the second-largest provider of retirement account services in the United States, the Respondent must have been aware of the Complainant’s marks when it registered the disputed domain name. The Respondent copied the Complainant’s domain name in the disputed domain name, and uses the latter to attract Internet users and to profit when they click on competing pay-per-click hyperlinks, thus demonstrating awareness of said marks and adoption of the disputed domain name in bad faith. Registration and use in bad faith is further demonstrated by the fact that at least some of the hyperlinks on the disputed domain name are reported as being used to distribute malicious software, including spyware and adware. The Respondent’s refusal to respond to the Complainant’s repeated communications indicates that the Respondent is using the disputed domain name in bad faith. If the Respondent were a legitimate user of the disputed domain name, it would have responded to the Complainant’s accusations. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 There are two parts to the inquiry under the first element of the Policy. The Complainant must demonstrate both that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to such trademark. The Panel is satisfied that the Complainant has rights in its EMPOWER RETIREMENT trademark as demonstrated by the registered trademark noted in the factual background section above. The Panel notes that the Respondent has not sought to dispute the Complainant’s rights in such mark. On the second aspect to the first element inquiry, the Panel notes that the alphanumeric string in the second level of the disputed domain name exactly matches the two words in the Complainant’s trademark with an additional element, the word “my”, which is used as a separator. This additional word does not prevent the the Complainant’s mark from being recognizable within the disputed domain name. Furthermore, the Complainant uses an almost identical domain name, which differs by a single letter, in connection with its own services that are used by millions of participants. This shows that the Respondent targeted the Complainant and affirms the confusing similarity. The applicable Top-Level Domain (“TLD”) in a domain name, in this case “.co”, is typically disregarded in the comparison process (see sections 1.7 and 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 3.0”)) In all the above circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has established the first element under the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by a respondent, that such respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case by reference to its submissions that the Respondent is not commonly known by the disputed domain name, has not used the domain name in any bona fide business, and has simply adopted the disputed domain name in bad faith in order to profit from confusing similarity with the Complainant’s marks. The Complainant also notes that the disputed domain name resolves to a parked page featuring hyperlinks relating to retirement accounts, being its own line of business. Such use is not a bona fide offering of goods and services (see section 2.9 of the WIPO Overview 3.0) and cannot confer rights or legitimate interests upon the Respondent. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain name. The Respondent has chosen not to participate in the administrative proceeding and accordingly has put forward no submissions or evidence regarding any rights or legitimate interests in the disputed domain name which might have rebutted the Complainant’s prima facie case. The Panel has not found anything in the present record which might have provided a suitable rebuttal if put forward by the Respondent. Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name and therefore that the second element under the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 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 web site 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 web site or location or of a product or service on your web site or location”. The disputed domain name has been identified as one letter different from the Complainant’s primary domain name, used since its registration in March 2016 for the provision of retirement planning services to millions of participants. The disputed domain name is also confusingly similar to the Complainant’s EMPOWER RETIREMENT trademark, registered in August 2017. It may be noted that the registration of said trademark post-dates the registration of the disputed domain name. However, there is extremely close proximity between the two events. The Complainant’s mark, which had been filed in 2014, proceeded to grant eight days after the disputed domain name was registered. Given such close proximity, it is reasonable to infer that the Respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent (as yet unregistered) trademark rights following the Complainant’s filing of said trademark application (on this topic, see section 3.8.2 of the WIPO Overview 3.0). Further and in any event, the Panel is satisfied that the Respondent registered the disputed domain name with knowledge of the Complainant’s said primary domain name and it is reasonable to infer that, due to the Complainant’s extensive activities under such name, it had already garnered substantial unregistered trademark rights in the mark EMPOWER MY RETIREMENT by the date of registration of the disputed domain name. It is clear from the nature of the typographical variation within the disputed domain name that the Respondent intended to target the Complainant’s activities. Such targeting is also demonstrated by the placing of the disputed domain name with a parking service featuring advertising links which are directed to the Complainant’s line of business. The disputed domain name is clearly designed to maximize traffic to the parking service used by the Respondent by way of “typosquatting”, in that all those of the Complainant’s participants who inadvertently fail to type the “m” on the end of the URL “www.empowermyretirement.com” will be diverted there. Lest there be any suggestion that the registration and use of the disputed domain name is coincidental, for example, because “empower my retirement” is a phrase comprised of dictionary words, it is evident that the Respondent has engaged in identical activities targeting a different provider of retirement services in the past using a domain name registered two months before the disputed domain name, which features exactly the same typographical variant as is afforded by the deployment of a “.co” domain name (see Milliman, Inc. v. Jiang Li,WIPO Case No. DCO2018-0004, where the Respondent’s domain name Despite the Complainant’s allegations of registration and use in bad faith, supported by suitable evidence, the Respondent has not engaged with the administrative proceeding, nor did it respond to the Complainant’s original demand notices. In the circumstances of the present case, this is a further indicator of bad faith and the Panel cannot conceive of any good faith motivation on the Respondent’s part related to the disputed domain name. In all of the above circumstances, the Panel finds that the Complainant has demonstrated that the disputed domain name has been registered and is being used in bad faith in accordance with paragraph 4(b)(iv) 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 Andrew D. S. Lothian
Sole Panelist
Date: March 16, 2021
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