WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Milliman Inc v. ICS INC/PrivacyProtect.org
Case No. D2013-1329
1. The Parties
The Complainant is Milliman, Inc. of Seattle, United States of America, represented by Adams and Reese LLP, United States of America(“US”).
The Respondent is ICS INC. of Grand Cayman, United Kingdom of Great Britain and Northern Ireland (“United Kindom”), and PrivacyPortect.org of Queensland, Australia.
2. The Domain Name & Registrar
The disputed domain name <millimanbenefitsonline.com> is registered with PDR Ltd. d/b/a Public Domain Registry.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on July 23, 2013. On July 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2013, 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 July 26, 2013, 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 July 30, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2013.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on August 27, 2013. 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 following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of challenge, can be accepted as background.
The Complainant is the owner of the registered trademark MILLIMAN and is one of the world’s largest independent actuarial and consulting firms operating in the areas of employee benefits, investment, property and casualty, health care and life, and financial services. It has been active in this field since 1947 and advertises and sells its goods and services through its “www.milliman.com”, and “www.minlimanbenefits.com” websites and related websites, as well as through print media and other channels throughout the world.
The Complainant has 54 offices in over 20 countries throughout North America, Asia-Pacific, Europe, Latin America and the Middle East.
The Complainant first used the MILLIMAN & ROBERTSON trademark in 1957 and the MILLIMAN trademark in 2001, which it promoted continuously and extensively.
In 2011, it spent approximately USD 1,295,000.00 in advertising and promotion of its wares in the US and had world-wide sales of approximately USD 732,000,000.00.
Its ownership of the trademark extends to valid and subsisting registrations of the MILLIMAN trademark in 59 countries, as well as being the owner of a series of domain names approximately 45 in number, which include the domain names <millimanbenefits.com> and <.millimanonline.com>.
5. Parties’ Contentions
The Complainant’s contentions are as follows:
As appears from the factual background, its MILLIMAN trademark is well-known by reason of its registration in 59 countries around the world, which include Grand Cayman where the Respondent appears to be located, and Australia where it is also located.
The disputed domain name incorporates its MILLIMAN trademark and also happens to adopt both the descriptive terms “benefits” and “online” which appear in those domain names already referred to in the factual background.
It contends that in general principle, where a domain name wholly incorporates the complainant’s registered trademark, that is sufficient to establish confusing similarity for the purposes of the Policy.
It further contends that the mere addition of a generic or descriptive word to a trademark, being in this case “benefits” and “online”, does not prevent the domain name from being confusingly similar. Moreover, it draws attention to previous UDRP Panel decisions in which it has been the complainant and similar considerations have arisen, and those Panels have made findings favourable to the Complainant.
It points out that, notwithstanding a cease and desist letter sent by email to the Respondent requesting that the website be taken down and the domain name transferred to the Complainant, the Respondent did not react but in fact renewed the registration of the domain name on or about January 16, 2013.
It points out further that the Respondent is in no way associated with it, nor is Milliman a name of the Respondent or one by which it has been commonly known. Moreover, the Respondent has never been a licensee or franchisee of the Complainant, nor sought or been granted any permission to register or use any of the trademarks.
The Complainant further contends that there is nothing to suggest that the Respondent is using the domain name with the bona fide intention of offering goods or services, or in a legitimate non-commercial fair manner.
Reference to the Respondent’s website suggests that the Respondent is offering many services, including those offered by the Complainant, and is also using the website to redirect Internet users to the websites of other insurance companies which may compete with the Complainant.
Thus it is apparent that the Respondent has not shown any rights or legitimate interests in respect of the disputed domain name.
Based on the circumstances already referred to above and given the Complainant's well-known trademark universally associated with it, the Complainant contends that the Respondent must have known of the Complainant's rights in the trademark and therefore its use cannot be said to be other than in bad faith. This, it is contended, is compounded by the use of the disputed domain name for redirecting Internet users and obviously potential customers or existing customers away from the Complainant's website and to others.
The Complainant further points out that the Respondent may generate unjustified revenues for each click-through by online consumers of the sponsored links to which they may be lured.
Additionally, the Complainant points out that the disputed domain name was registered for the purpose of selling it in excess of the Respondent’s out-of-pocket costs directly related to it. The disputed domain name contains a link indicating that it is for sale which, when a click resolves to a domain name sales website, it indicates that it is available for USD 1,719.00, whereas the Registrar has indicated that the cost of a “.com” domain is USD 35.00 per year.
By its failure to respond, the Respondent is in default in terms of paragraphs 5(e) and 14 of the Rules and paragraph 8(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint.
6. Discussion & Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith”.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the Complaint being denied (See M Corentin Benoit Thiercelin v CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (See Standard Innovation Corporation v Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (See Brooke Bollea, aka Brooke Hogan v Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S A v John Michael, WIPO Case No. D2009-0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a response, particularly in the light of the fact that the Complainant wrote on occasions to the Respondent, as did the Center when dealing with procedural matters and advising the Respondent of time limits, as against the Respondent’s failure to respond to any correspondence as well as the Complainant’s “cease and desist” letter.
From this the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (See Reuters Ltd v Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc v Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation,supra; VR Holding A/S c Above.com Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (See Reuters, supra; RX America LLC v Matthew Smith WIPO Case No. D2005-0540; Allianz, supra; Standard Innovation Corporation, supra; VKR Holdings A/S, supra; Groupe Auchan v Anirban Mitra WIPO Case No. D2012-0412; Barclays Bank PLC v Miami Investment Brokers Inc WIPO Case No. D2012-1213).
C. The Disputed Domain Name is Identical or Confusingly Similar
The Complainant put up an extensive list of its registered trademarks and the domain names which it owns in many countries.
The Complainant has cited the previous UDRP decision of Milliman Inc v PrivacyProtect.org/Telecom Tech Cor/Civ, WIPO Case No. D2011-0246, which it contends confirming that the MILLIMAN trademark is famous. As the Respondent was not party to any of these decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply, and what may have been found proven in those decisions is not evidence in this matter or binding on the Panel.
On the basis of its evidence and contentions in this matter, however, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has rights which fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6.2 and 6.3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the “TRIPS Agreement”). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (See V&S Vin & Spirit v Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v Anirban Mitra, WIPO Case No. D2012-0412; LEGO Juris A/S v Michael Fainshtein, WIPO Case No. D2013-0464).
The fact that the word trademark has been incorporated entirely into the disputed domain name is sufficient to establish that it is identical or confusingly similar to the Complainant's registered trademark (See Quixtar Investments Inc v Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios Inc v David Burns & Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v John Hopkin/NeoNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016).
The mere addition of a generic or descriptive word to the full trademark is not an element of distinctiveness that can be said to remove any confusing similarity (See Credit Industriel et Commerciel S A v Spiral Matrix, WIPO Case No. D2006-0271; F Hoffmann-La Roche A G v Hostmaster Domain Park Ltd, WIPO Case No. D2007-1096; Bid Industrial Holdings v Craig Smith, WIPO Case No. D2009-1627; F Hoffmann-La Roche A G v Fundacion Private Whois, WIPO Case No. D2012-1418). Furthermore in this case the two words “benefits” and “online” are each to be found coupled with the trademark MILLIMAN. If anything, the trademark MILLIMAN is the dominant portion of the Respondent’s disputed domain name. (Barclays Bank PLC supra).
In these circumstances the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for the purposes of Paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (See Document Technologies Inc v International Electronic Communications Inc., WIPO Case No. D2000-0270; University City Studios Inc, supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the sole proprietor of the trademark MILLIMAN and associated domain names in question and that the Respondent has not been given any permission to register or use any domain name incorporating the trademark of the Complainant. It follows, therefore, that the Respondent has no rights to the use the trademark as part of the disputed domain name and that any unauthorized use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant. (See Guerlain S A v Peikang, WIPO Case No. D2000-0055; Caesar's World Inc & Park Place Entertain Corporation v Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc v Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc v Analytical Systems, WIPO Case No. D2004-0360; San Lameer, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc, supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registration & Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, 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 again, Internet users to your website or other on-line 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 website or location.”
The disputed domain name is connected to click-through sites, with the result that the Respondent is using the disputed domain name intentionally to attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its websites. Whether or not the Respondent is personally the beneficiary or whether the revenue accrues elsewhere does not, in the view of the Panel, detract from the notion that any gain so sought to be derived need not be derived by a respondent itself in that it is sufficient if a third party stands to reap the profits of wrongful conduct (See Villeroy & Bosch A G v Mario Pingerna, WIPO Case No. D2007-1912; LEGO Juris A/S, supra).
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (See Media 24 Limited v Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer, supra).
The selection of a domain name that is confusingly similar to the Complainant’s trademark and the Complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the disputed domain name in circumstances where it was very well aware of the Complainant’s reputation and intended to benefit therefrom. (See Deutsche Post AG v MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC, supra).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <millimanbenefitsonline.com> be transferred to the Complainant.
Archibald Findlay SC
Date: September 3, 2013