WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Guardian Life Insurance Company of America v. Hochan Liu / Luther Fleming
Case No. D2017-1901
1. The Parties
The Complainant is The Guardian Life Insurance Company of America of New York, New York, United States of America ("USA" or "United States"), represented by Steven M. Levy, Philadelphia, Pennsylvania, USA.
The Respondent is Hochan Liu of Beijing, China / Luther Fleming of Baoding, China, self-represented.
2. The Domain Names and Registrars
The disputed domain names <guarddianlife.com>, <guardiankife.com>, <guardianlifw.com>, <guardianliife.com>, <guardoanlife.com>, <guarrdianlife.com> and <guuardianlife.com> are registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 28, 2017. On September 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, and stating that the language of the Registration Agreement for the disputed domain names is Japanese. On October 9, 2017, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on October 11, 2017, and filed an amended Complaint in response to the Center's request. In the Complaint and the amended Complaint, the Complainant requested consolidation of multiple Respondents. The Respondent did no comment on the language of the proceeding or consolidation.
On October 12, 2017, the Respondent submitted an email offering to transfer the disputed domain name to the Complainant for free. Accordingly, the Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by October 17, 2017. On October 13, 2017, the Complainant requested to suspend the proceeding for 45 days. On October 17, 2017, the Center notified the Parties that the proceeding was suspended until December 1, 2017. On November1, 2017, the Complainant requested to reinstitute the proceeding. On November 3, 2017, the Center notified the Parties that the proceeding was reinstituted.
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 in English and Japanese of the Complaint and amended Complaint, and the proceedings commenced on November 6, 2017. The notice also indicated the Center's preliminary determination regarding the language to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2017. The Respondent did not submit any substantive response. On November 27, 2017, the Center notified the Parties of the commencement of the panel appointment process.
The Center appointed Haig Oghigian as the sole panelist in this matter on December 6, 2017. 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 one of the largest mutual life insurance companies and offers a wide range of insurance products and services. The Complainant has registered the well-known GUARDIAN LIFE mark in the United States since March 18, 2014 (United States trademark registration No. 4,498,538) and extensively promotes its GUARDIAN LIFE mark through various channels. The Complainant also conducts advertising and marketing on its website "www.guardianlife.com".
The disputed domain name <guarddianlife.com> was registered by the Respondent Hochan Liu on December 12, 2016.
The disputed domain name <guardiankife.com> was registered by the Respondent Hochan Liu on December 17, 2016.
The disputed domain name <guardianlifw.com> was registered by the Respondent Hochan Liu on December 17, 2016.
The disputed domain name <guardianliife.com> was registered by the Respondent Hochan Liu on December 12, 2016.
The disputed domain name <guardoanlife.com> was registered by the Respondent Luther Fleming on December 17, 2016.
The disputed domain name <guarrdianlife.com> was registered by the Respondent Hochan Liu on December 12, 2016.
The disputed domain name <guuardianlife.com> was registered by the Respondent Hochan Liu on December 12, 2016.
The Respondent's websites under the disputed domain names are all commercial sites displaying links to view or purchase pornographic and other adult related content.
5. Parties' Contentions
Identical or confusingly similar
Each of the disputed domain names is confusingly similar, on its face, to the Complainant's registered and distinctive GUARDIAN LIFE mark. A minor misspelling of a complainant's trademark creates a confusingly similar domain name.
No rights or legitimate interests
None of the circumstances set out in paragraph 4(c) of the Policy apply to the Respondent in the present dispute.
Registered and used in bad faith
The Respondent registered the disputed domain names and uses them each for an adult-content website. Such use must be considered as tarnishing the trademark and the Complainant and therefore constitutes an evidence of a bad faith use. Further, the various companies forwarded from the website of the disputed domain names benefit from the subsequent interest and purchases of site visitors. Finally, the Respondent is an active cybersquatter who has engaged in a pattern of bad faith registration of domain names that are confusing similar to trademarks in which the Respondent has no right.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Consolidation of Respondents
WhoIs records for all of the disputed domain names list the identical email address and the exact same Registrar, which indicates these disputed domain names are subject to common control. In addition, the Respondents made no objections to the consolidation. Therefore, the consolidation would be fair and equitable to all Parties. The Panel finds the consolidation be appropriate in the present case.
6.2 Language of Proceedings
The final determination of the language of the proceeding lies with this Panel.
The Complainant requested the language of the proceeding to be English on grounds that the Respondent is an active cybersquatter and copies the famous trademarks of many well-known brand owners and is capable of communicating in the English language, and therefore it would be inequitable for the Respondent to hide behind a language requirement.
The Panel has the discretion under the Rules paragraph 11(a) to determine the appropriate language of the proceeding taking into consideration the particular circumstances of the administrative proceeding. In the absence of a Response and given no objection to the Complainant's request for the language of proceeding as well as to the Center's preliminary language determination (which was sent in Japanese and English), after considering the circumstances of the present case, pursuant to the Rules paragraph 11(a), the Panel decides English to be the language of the proceeding.
6.3 Substantive Decision
A. Identical or Confusingly Similar
All of the disputed domain names are made up of minor misspellings of the Complainant's registered and distinctive GUARDIAN LIFE mark and the generic Top-Level Domain ("gTLD") ".com".
Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides:
"A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.
Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers."
The Panel finds that the first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
As the Respondent has not sought to assert any rights or legitimate interests in the disputed domain names, nor can the Panel ascertain any such rights or legitimate interests from the content of the website under the disputed domain names, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names.
The Panel finds that the second part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
In addition, as the Complainant contends, the Respondent uses the disputed domain names each for an adult-content website. Such use is very likely to result in tarnishing the trademark and the Complainant. Section 3.12 of the WIPO Overview 3.0 provides:
"Noting that noncommercial fair use without intent to tarnish a complainant's mark is a defense under the second element, using a domain name to tarnish a complainant's mark (e.g., by posting false or defamatory content, including for commercial purposes) may constitute evidence of a respondent's bad faith."
Therefore, the Panel finds that the disputed domain names were registered and are being used in bad faith.
The Panel finds that the third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 names, <guarddianlife.com>, <guardiankife.com>, <guardianlifw.com>, <guardianliife.com>, <guardoanlife.com>, <guarrdianlife.com> and <guuardianlife.com> be transferred to the Complainant.
Date: December 11, 2017