WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Milliman, Inc. v. PrivacyProtect.org / Telecom Tech Corp.
Case No. D2011-0246
1. The Parties
1.1 The Complainant is Milliman, Inc. of Seattle, Washington State, United States of America (“the Complainant”), represented by Adams and Reese LLP, United States of America.
1.2 The Respondent is PrivacyProtect.org of Munsbach, Luxembourg / Telecom Tech Corp. of Panama, Panama (“the Respondent”).
2. The Domain Name and Registrar
2.1 The disputed domain name <millomanonline.com> (the disputed Domain Name) is registered with Bargin Register Inc (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On February 17, 2011, Bargin Register Inc. 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.
3.2 The Center sent an email communication to the Complainant on February 18, 2011 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 February 23, 2011.
3.3 The Center verified that 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”).
3.4 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2011.
3.5 The Center appointed Ike Ehiribe as the sole panelist in this matter on March 25, 2011. 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
4.1 The Complainant is Milliman Inc., a corporation registered under the laws of the state of Washington U.S.A. and is one of the world’s largest independent actuarial and consulting firms operating in the areas of employee benefits, investment, property, casualty healthcare and life and financial services. The Complainant has been active in these fields since 1947 and advertises its goods and services through its <milliman.com> website.
4.2 The Complainant has 55 offices in over 20 countries and in the year 2010 in the United States alone, the Complainant spent 600,000 United States (U.S.) dollars in advertising and promotion. In the year 2009, the Complainant realized the sum of 610 million U.S. dollars from goods and services under the MILLIMAN mark.
4.3 The Respondent registered the disputed Domain Name <millomanonline.com> according to the WhoIs database printout annexed to these proceedings on or around April 12, 2010.
5. Parties’ Contentions
5.1 The Complainant owns valid and subsisting trademark registrations for the MILLIMAN mark and design, in 56 countries and the Complainant has annexed to these proceedings evidence of registrations in a number of selected jurisdictions such as in: (i) the United States of America: (ii) the European Union; and (iii) the Cayman Islands. The Complainant is also the owner of other trademarks and service marks containing the word MILLIMAN, including but not limited to MILLIMAN & ROBERTSON, MILLIMAN ADVANCED TECHNOLOGIES, MILLIMAN CARE GUIDELINES, MILLIMAN GUIDELINES (design), MILLIMAN GLOBAL, MILLIMAN GUARANTEE INDEX, MILLIMAN INTELLISCRIPT, MILLIMAN LAMP, and WOODROW MILLIMAN.
5.2 The Complainant is also the registrant of a large number of domain names such as:
<milliman.com>, registered September 21, 1995;
<millimanline.com>, registered May 10, 1999;
<millimanhealth.com>, registered November 2, 2000;
<millimanon.com>, registered October 21, 2009;
<millimanpension.com>, registered July,2006;
<millimaninsurance.com>, registered November 2, 2000;
<millimanemployeebenefits.com>, registered May 18, 2000;
<millimandocumentation.com>, registered April 24, 2007;
<milliamnonline.com>, obtained by transfer on November 23, 2009; and
<miiliimanonline.com>, obtained by transfer on November 20, 2008 etc.
The Complainant also operates its principal website at <milliman.com>.
5.3 The Complainant therefore contends that the disputed Domain Name <millomanonline.com> which incorporates a term almost identical to the Complainant’s MILLIMAN trademark is confusingly similar to the Complainant’s trademark and domain names over which the Complainant has held long established rights. The Complainant indicates that with respect to the disputed Domain Name, the Respondent seeks to take advantage of common typographical errors made by Internet users, a practice known as “typo-squatting”. In this regard, reliance is placed on the case of Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492. The Complainant further submits that the Respondent attempts to capitalize on the tendency for Internet users to type “o” instead of the second “i” in the MILLIMAN mark as not only are the keys for both “o” and “i” adjacent on a standard keyboard, but “milloman” sounds virtually identical to “Milliman”, thereby making such a mistake and confusion more likely. The Complainant contends further that the addition of the word “online” is insufficient to distinguish the disputed Domain Name from the Complainant’s trade and service marks and in support cites a number of previous UDRP decisions including Barclays Bank PLC v. Mr Mohammed Hassan, WIPO Case No. D2001-0253 where the addition of the words “online” and “-online” to the BARCLAYCARD mark in the domain names in question did not prevent a finding of the domain names being confusingly similar to the BARCLAYCARD trademark. Furthermore, it is stated that the fact that the Complainant owns and uses the domain name <millimanonline.com> there is an increased level of confusing similarity between the disputed Domain Name <millomanonline.com> and the Complainant’s marks and websites at <milliman.com> and <millimanonline.com>.
5.4 The Complainant contends further that the Respondent is not and has never been a licensee or franchisee of the Complainant and has never been permitted to register or use the Complainant’s marks or apply for or use any domain name incorporating any of the Complainant’s marks; therefore none of the circumstances provided in paragraph 4(c) of the Policy for demonstrating a Respondent’s rights to legitimate interests in a domain name are present in this case. It is also stated that the Complainant is unaware that the Respondent has ever been commonly known as “Milliman” or “Milloman”. The Complainant therefore asserts that the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods and services, or in a legitimate non-commercial or fair manner. The disputed Domain Name is said to resolve to a website titled “Millomanonline.Com” which contains sponsored links to third party websites which offer services offered by the Complainant such as advice relating to retirement plans, employee benefits, health insurance and financial planning. It is therefore submitted that this type of use of a domain name is not one which establishes rights or legitimate interest in a domain name as stipulated in Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006-1082 amongst other previous UDRP decisions cited by the Complainant; and neither can it be considered to be legitimate use in connection with a bona fide offering of goods and services as also found in Volvo Trademark Holding AB v. Unasi Inc., WIPO Case No. D2005-0556. Finally, on this issue it is submitted that the Respondent’s act of taking advantage of typing errors to divert Internet users to its websites is further evidence of lack of rights or legitimate interests in the disputed Domain Name. In this regard reference is made to the decision in LTD Commodities, LLC v. Domain Park Limited, NAF Claim No. FA0705000982996, where the panel inferred that the respondent in that case lacked any rights and legitimate interests due to the nature of the domain names as they are all typo-squatted versions of the Complainant’s marks.
5.5 On the question of registration and use in bad faith, the Complainant contends that given the several trademark registrations for the mark MILLIMAN and its international reputation, and 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 existence of the MILLIMAN marks at the time of registration of the disputed Domain Name. Accordingly, it is submitted that the Respondent registered and is using the disputed Domain Name for the sole purpose of redirecting Internet users, and particularly customers and potential customers of the Complainant from the Complainant’s websites to the websites of competitors of the Complainant in order to benefit commercially from the goodwill attached to the Complainant’s marks. In this regard the Complainant relies on a number of previous UDRP decisions, some of which have been referred to above at paragraphs 5.3 and 5.4 including the decision in Asurion Corporation v. Digi Real Estate Foundation, WIPO Case No. D2006-0765.
5.6 The Complainant asserts that despite dispatching its cease and desist letter on October 27, 2009, the Respondent renewed the registration of the Domain Name on or around April 12, 2010. The Complainant states that since a copy of the WhoIs database dated January 6, 2011 shows the same apparent registrant, the Respondent’s renewal of the registration in spite of receiving actual notice of the Complainant’s rights also demonstrates registration and use in bad faith.
5.7 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;(ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in the proceedings.
A. Identical or Confusingly Similar
6.3 This Panel without any hesitation finds the disputed Domain Name, <millomanonline.com> confusingly similar to the trademark and domain names over which the Complainant has long established rights since 1957, and in as many as 56 countries around the world. This Panel finds as a fact that the Complainant’s trademark MILLIMAN is well known worldwide and is universally associated with the Complainant. The Panel is satisfied that the disputed Domain Name clearly incorporates a term almost identical to the Complainant’s trademark. The Panel also observes that according to the WhoIs database printout of February 04, 2011 annexed to these proceedings the Respondent still appears as the registrant of the disputed Domain Name well after the Complainant acquired trademark rights in the trademark MILLIMAN and well after the registration of numerous domain names including the trademark MILLIMAN such as <milliman.com> registered by the Complainant since September 21, 1995. This Panel is satisfied, just as the Complainant contends that slight misspellings of the Complainant’s mark or the mere addition of the generic word “online” are insufficient features capable of distinguishing the disputed Domain Name from the Complainant’s marks and prevent the likelihood of confusion in the minds of Internet visitors. The Panel is also satisfied that the Respondent has sought to engage in the practice known as “typo-squatting” and to exploit the confusion likely to arise in the minds of Internet users; since “milloman” sounds virtually identical to “Milliman” and Internet users are likely to type “o” instead of the second “i” those keys being adjacent to each other on a standard keyboard.
6.4 The Panel in this regard relies in support on a number of previous UDRP decisions relied upon by the Complainant such as Pfizer Inc., v. lipidor.com DNS Services, WIPO Case No. D2002-1099 in which the Respondent replaced the letter “t” in the Lipitor mark with the letter “d” and the Panel held that slight misspellings are not sufficient to distinguish a challenged domain name from an established mark. Also most relevant is the decision in Barclays Bank Plc v. Mr Mohammed Hassan, cited supra where it was held that the mere addition of the word “online” to the BARCLAYCARD mark in the challenged domain name did not prevent the domain names from being confusingly similar to the BARCLAYCARD trademark.
6.5 Accordingly, the Panel finds that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant’s trademark in accordance with paragraph 4 (a) (i) of the Policy.
B. Rights or Legitimate Interests
6.6 The Panel equally finds as the Complainant contends, that the Respondent has failed to provide any evidence or circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4 (c) of the Policy. The Complainant asserts that the Respondent is not, and has never been, a licensee or franchisee of the Complainant. Also, it is submitted that the Respondent has never been permitted to register or use the Complainant’s mark or to apply to register any domain name incorporating any of the Complainant’s marks. The Panel is therefore satisfied based on the evidence adduced by the Complainant consisting of printouts of the Respondent’s web pages, that the Respondent is simply using the disputed Domain Name to divert Internet visitors, the Complainant’s customers and potential customers to various third party websites belonging to competitors of the Complainant. Competitors who are said to be offering services normally offered by the Complainant, such as retirement plans, health insurance, term life insurance and financial planning etc. As the Complainant contends, this Panel finds that such activity does not establish rights or confer any legitimate interests in the domain name.
6.7 The Panel is therefore satisfied that the Respondent has failed to comply with the stipulated requirements necessary to establish the bona fide offering of goods and services as stipulated in the decision of Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903 and other decisions referred to by the Complainant such as Volvo Trademark Holding AB v Unasi, Inc., supra and Berlitz Investment Corporation v. Transure Enterprises Ltd. Host Master, WIPO Case No. D2009-0836 and in particular Berlitz Investment Corporation v. Telecom Tech Corp, WIPO Case No. D2008-0267 where the Panel held that operation of click- through, sites by itself is not evidence of a bona fide offering of goods and services.
6.8 In the circumstances, the Panel finds that the Complainant has established that the Respondents have no rights or legitimate interest in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.9 On the question of bad faith registration and use, the Panel is equally satisfied that the Respondents registered the disputed Domain Name in bad faith and continued to use the disputed Domain Name in bad faith in blatant disregard of the cease and desist letter dispatched to the Respondent on October 27, 2009. In addition, this Panel finds that the Respondent has failed to refute a number of matters that the Panel has taken into consideration, in arriving at this conclusion. First of all, the Panel is satisfied that the Respondent knew or ought to have known of the Complainant’s well-known worldwide rights in the MILLIMAN mark since 1957 and thereafter, including numerous domain names incorporating the MILLIMAN mark. Secondly, the Respondent has not in any shape or form countered the overwhelming evidence of screen shots and websites adduced by the Complainant and annexed to these proceedings, demonstrating the Respondent’s use of the disputed Domain Name for unjust commercial gain. Thirdly, the Respondent has failed to deny the allegation that the Respondent is attracting Internet users to its website through the use of typo-squatting which the Complainant has so evidently made out against the Respondent. Fourthly, as earlier indicated at paragraph 5.7 above, this Panel draws adverse inferences from the failure or refusal of the Respondent to respond to correspondence arising from these proceedings and the failure to submit a response to these proceedings within the prescribed time limits, in accordance with paragraph 5 (a) of the Rules, or at all.
6.10 The Complainant in support of the bad faith registration and use contention has relied on a number of previous UDRP decisions some of which have been referred to in the preceding paragraphs above, including The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, cited supra and Volvo Trademark Holding AB v. Unasi, Inc., cited supra where the panel in both decisions found that the respondents’ illegitimate exploitation of the “NASDAQ” mark in the first case and the “VOLVO” mark in the second case as indicative of bad faith registration and use of the challenged domain names in those cases.
6.11 The Panel therefore finds that the Complainant has established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy.
7.1. For all 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, <millomanonline.com> be transferred to the Complainant forthwith.
Dated: April 11, 2011