WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Milliman, Inc. v. Wanzhongmedia
Case No. D2012-1649
1. The Parties
The Complainant is Milliman, Inc. of Seattle, Washington, United States of America, represented by Adams and Reese LLP, United States of America (“US”).
The Respondent is Wanzhongmedia, of Shenzhen, China.
2. The Domain Name and Registrar
The disputed domain name <milllimanbenefits.com> is registered with EuroDNS S.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 16, 2012. On August 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2012.
The Center appointed David H. Tatham as the sole panelist in this matter on September 25, 2012. 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 large independent actuarial and consulting firm with 55 offices in more than 20 countries and it has been active since 1947. It first started using the mark MILLIMAN & ROBERTSON in 1957 and the mark MILLIMAN in 2001. It owns registrations for the trademark MILLIMAN or MILLIMAN design in 59 countries.
The Respondent filed no Response so little is known about it. It registered the disputed domain name <milllimanbenefits.com> on February 18, 2002.
The Complainant attempted to contact the Respondent in January 2012 c/o Whois Privacy Limited (“Whois Privacy”) which was the then current contact address for the Respondent. There was no response from the Respondent but Whois Privacy wrote that it had discontinued its services in light of the Respondent’s infringement of the Complainant’s rights. Whois Privacy revealed details of the Respondent’s whereabouts and the Complainant attempted to contact the Respondent at these contact details, without reply. Indeed the letter was subsequently returned as having an incorrect address. Following this failure, the Complaint was filed.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademark MILLIMAN. As noted above, it has used this mark on its own for more than 10 years and in conjunction with other marks for longer than that. It advertises and sells its goods and services through its main website at <milliman.com>. The Complainant states that in 2011 it spent approximately USD 1,295,000 in advertising and promoting its wares in the US alone, and that it also had worldwide sales in 2011 of approximately USD 723 million.
The Complainant annexed to the Complaint copies of 11 trademark registrations for MILLIMAN or MILLIMAM design: six in the US, two in the European Union and three in China which is the home country of the Respondent. The Complainant also listed a number of other registered trademarks which it owns and which include the word “milliman”, as well as 30 domain names consisting of the word “milliman” followed by another word. Bearing in mind that the disputed domain name is <milllimanbenefits.com>, it is worth noting that amongst the Complainant’s list of its domain names is <millimanbenefits.com> and that the website at this address relates to employee benefits, retirement benefits and retirement planning.
The Complainant contends that the slight misspelling of its mark ”milliman” in the disputed domain name is a clear example of typosquatting and the Complainant referred to numerous decisions under the Policy in which this practice has been condemned by UDRP panels. The Complainant also referred to numerous decisions under the Policy in which the practice of incorporating of a trademark in its entirety within a disputed domain name has been found to be in breach of the Policy.
The Complainant also contends that the Respondent has no rights or legitimate interest in the disputed domain name, because:
-the Respondent is not and has never been commonly known as “milliman” or even “millliman”;
-the Respondent has never been a licensee or franchisee of the Complainant;
-the Respondent has never asked, or been permitted, to use the Complainant’s trademark, or to apply for or use any domain name incorporating any of the Complainant’s trademarks;
The Complainant further contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate non-commercial or fair manner. This is because the website at the disputed domain name resolves to a site which contains links to third party websites which offer many services including those offered by the Complainant, including retirement benefits, retirement plans and ”401K” which is a term ubiquitously used in the US as a synonym for a retirement plan.
The Complainant concludes this section of its Complaint by contending that the Respondent’s use of a common typing error to divert Internet users to its website is evidence of its lack of rights or legitimate interests in the disputed domain name.
Finally, the Complainant charges the Respondent with registering and using the disputed domain name in bad faith. This, it claims, is evidenced by its use of the disputed domain name for the sole purpose of redirecting Internet users, and in particular the Complainant’s customers or its potential customers, to the websites of other companies that compete with the Complainant, with the purpose of benefitting commercially from the goodwill in the MILLIMAN mark.
In addition, the Respondent’s failure to provide and/or maintain correct contact details, as explained above, is a breach of the Registrar’s General Terms and Conditions, and the Complainant annexed a copy of this document as proof thereof.
As noted above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 5(b)(i) of the Rules specifies that a Respondent may: “respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has been given an opportunity to present his case, but it has failed to do so.
Paragraph 14(b) of the Rules specifies that, in the event of a default, “…the Panel shall draw such inferences therefrom as it considers appropriate”. For example, it was said in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443 that “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. … In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this present proceeding, since the Respondent has chosen not to submit a Response, its default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the Complainant’s assertions, and to take its decision on the basis of the statements and documents before it, in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable.
A. Identical or Confusingly Similar
The Complainant has produced ample evidence of its ownership of numerous registrations for the mark MILLIMAN. There are six in the US, the Complainant’s country of residence, two European Community Trademarks, and three in China, the apparent country of residence for the Respondent. The earliest of them all are US registrations Nos. 2,535,009 and 2,535,010, which were both registered with effect from January 29, 2002, claiming May 31, 2001 as the date of first use. The first of these is in Class 35 and is in respect of “Business consulting services”, and the other is in Class 16 in respect of “Books, loose leaf binders, compilations, benefits outsourcing, pension and retirement fund administration and healthcare management services”. The Complainant also lists 57 other countries in which it owns registrations of MILLIMAN or MILLIMAN design.
All of the Complainant’s registrations appear to be currently in force.
The addition of another letter “l” in the mark “Milliman”, and of the word “benefits” to the disputed domain name do nothing to alleviate the possibility of confusion to this Panel. Few casual observers of the disputed domain name would notice the third letter “l” and indeed the Panel did not until it was pointed out in the Complaint. Also, “benefits” are just one of the many products offered by the Complainant; quite apart from which, the Complainant also owns the domain name <millimanbenefits.com> which is currently active.
On this basis, the Panel has no hesitation in finding that the disputed domain name <milllimanbenefits.com> is confusingly similar to the Complainant’s trademark MILLIMAN, and that paragraph 4(a)(i) of the Policy is therefore proved.
B. Rights or Legitimate Interests
It is well established that a complainant may first make out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name, but that once the said complainant has made out a prima facie case, the burden of production on this element shifts to the respondent to rebut it. The burden of proof however remains with the complainant. See, for example, Document Technologies, Inc. v. International Electronic Communications Inc. WIPO Case No. D2000-0270.
In this instance, the Panel is satisfied that a clear prima facie case has been made out.
In paragraph 4(c) of the Policy there are set out three circumstances which, if present, could demonstrate that a respondent does have rights or legitimate interests in a disputed domain name, and it is well established that this list is not exhaustive. However in this case the Respondent has filed no response so it has not attempted to rebut the Complainant’s prima facie case.
The Complainant annexed a copy of the Respondent’s website to the Complaint. There are no less than thirteen links to third party websites. These offer a variety of services, such as advice in connection with retirement benefits, a retirement plan and “401k Benefits”, all of which are products offered by the Complainant, who states that the number “401k” is a term which is known in the US as being synonymous with a type of retirement plan.
The Complainant has referred to a number of decisions under the Policy in which the use of a domain name that merely provides links to competitors’ websites or services was not found to be a legitimate use. For example, in Asurion Corporation v. Digi Real Estate Foundation, WIPO Case No. D2006-0765, it was said “… Respondent appears not to run any legitimate business associated with the disputed domain name but only uses it in a website for the purpose of directing Internet users to the website of other insurance companies which may compete with Complainant. Accordingly, the use of the domain name <asurioninsurance.com> is not considered legitimate use in connection with a bona fide offering of goods and services.”
In the absence of any communication from the Respondent, the Panel has accepted the Complainant’s case and has concluded that the Respondent has no rights or legitimate interests in the disputed domain name. Consequently, paragraph 4(a)(ii) of the Policy is proved.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which are evidence that the Respondent has registered and is using the disputed domain name in bad faith. In this case, the Panel believes that the Respondent is in contravention of at least one, and possibly two, of the provisions under paragraph 4(b) of the Policy.
The registration of the disputed domain name does appear to have been made “primarily for the purpose of disrupting” the Complainant’s business, and it is in this Panel’s opinion an intentional attempt “to attract, for commercial gain, Internet users to” the Respondent’s website. This falls squarely within paragraph 4(b)(iii) and (iv) of the Policy.
Additionally, the Respondent must have been aware of the Complainant’s trademark at the time of registration of the disputed domain name as it is highly improbable that the Respondent would by chance have selected the word “Millliman” or coupled it with the word “benefits” which is a product offered by the Milliman company. This suggests opportunistic bad faith. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the word “pokémon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the Complainant suggested opportunistic bad faith. See also BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the Respondent acted in bad faith when registering the disputed domain name, because of the widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the disputed domain name, and the similarity of products implied by addition of telecommunications services suffix, all of which suggested knowledge of the Complainant’s rights in the trademarks.
In view of the above, the Panel has concluded that, since the Respondent must have known of the Complainant’s trademark MILLIMAN, and since the Respondent has no rights or legitimate interests in the disputed domain name, it was registered in bad faith.
Once again it is worth pointing out that the Respondent has filed no response so it has not attempted to rebut the Complainant’s arguments on this point.
The Panel concludes that paragraph 4(a)(iii) has been proved.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <milllimanbenefits.com> be transferred to the Complainant.
David H. Tatham
Dated: October 1, 2012