WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Milliman, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2016-1937
1. The Parties
The Complainant is Milliman, Inc. of Seattle, Washington, United States of America (“US”), represented by Adams and Reese LLP, US.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd of Wilmington, Delaware, US.
2. The Domain Names and Registrars
The disputed domain names <millimanbenfits.com>, <millimanbenifets.com> and <millimenbenefits.com> are registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2016. On September 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 29, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 29, 2016, 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 September 30, 2016.
On September 29, 2016, the Center sent out a Domain Name Expiry email to the Registrar, copying the Parties, regarding the expiry date of one of the disputed domain names. On October 3, 2016, the Registrar sent an email to the Center, copying the Parties, requesting the Complainant to renew the disputed domain name that was expiring shortly in order to keep it under LOCK during the proceedings. The Center acknowledged receipt of this email communication on the same day and clarified to the Complainant that it was requested by the Registrar to act in accordance with the instructions found in the email communication from the Registrar in order to keep the disputed domain name under LOCK during the proceedings. The Center furthermore stated that it accepted no responsibility for the consequences if the necessary steps to ensure the renewal of the disputed domain name (including payment of any applicable renewal / registration fees) were not taken. On October 10, 2016, the Complainant confirmed by email the renewal of the disputed domain name.
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 October 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on November 9, 2016. 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 facts, relevant to the Panel’s determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant is one of the world’s largest independent actuarial and consulting firms operating in the areas of employee benefits, investment, property and casualty, healthcare and life and financial services. The Complainant has been active in this field since 1947. It holds trademark registrations in approximately three dozen jurisdictions around the globe for the mark MILLIMAN, including U.S. Reg. No. 2535009, issued on January 29, 2002 for business consulting services.
According to the WhoIs information, <millimanbenfits.com> was registered on March 3, 2009, <millimenbenefits.com> was registered on March 25, 2009, and <millimanbenifets.com> was registered on October 5, 2009.
As of the date of the original Complaint and the amended Complaint, the disputed domain names directed to either (1) a webpage on a website owned or operated by a competitor of the Complainant, or (2) a parking page showing pay-per-click advertising links to websites purportedly offering services identical or related to those of the Complainant.
5. Parties’ Contentions
The Complainant asserts, among other things, that (i) the disputed domain names are identical to the registered MILLIMAN mark; (ii) the Respondent lacks rights or legitimate interests in the disputed domain names because it has never been known by the disputed domain names and has received no license or consent to use the MILLIMAN mark in any manner; and (iii) the Respondent registered and has used the domain names in bad faith by linking to a competitor’s website and/or showing pay-per-click advertising links to websites purportedly offering services identical or related to those of the Complainant.
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.
The Panel proceeds to discuss all three of these elements below.
A. Identical or Confusingly Similar
This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain names are identical or confusingly similar to that mark.
The Panel finds the Complainant has established rights in the MILLIMAN mark based on the Complainant’s long-standing use of the MILLIMAN mark as well as numerous trademark registrations in various jurisdictions around the world.
The Panel further finds that the disputed domain names are confusingly similar to the Complainant’s mark. The disputed domain names either incorporate the entirety of the MILLIMAN mark or a phonetic near-equivalent “Millimen”. This element is accompanied by the generic term “benefits” (or misspelled versions of that word). Because the Complainant’s business involves the provision of benefits services, the inclusion of the word “benefits” or a common misspelling thereof serves to increase the confusing similarity.
When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is of no legal significance from the standpoint of comparing the disputed domain names to the Complainant’s MILLIMAN mark, because use of a gTLD is required of domain name registrants and “.com” does not serve to identify a specific enterprise as a source of goods or services. SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602.
Similarly, UDRP panels have consistently held that “a mere addition of a minor misspelling or typographical error of a mark, does not create a new or different mark in which Respondent has legitimate rights”. Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc, WIPO Case No. D2003-0317. Such insignificant modifications to trademarks are commonly referred to as “typosquatting” or “typo-piracy,” as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See, Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161. “Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive”. Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423; see also American Home Products Corporation v. Privateer Ltd., WIPO Case No. D2000-0455 (ADDVIL.com held confusingly similar to ADVIL).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See, Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(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.”
In this case, there are several indicators concerning the Respondent’s lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain names, nor is there any evidence in the record showing the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute. Joining with numerous previous UDRP panels, this Panel finds that the use of the disputed domain names in this manner to establish a web page to redirect to websites for competitive services, or for pay-per-click advertising, is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain names.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as 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 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 website or location or of a product.”
These criteria are not exclusive and the Panel may conclude that the Respondent has acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain names.
The Panel concludes, on the evidence submitted by the Complainant, that the Respondent has registered and used the disputed domain names in bad faith. As an initial matter, the Respondent’s mere act of typosquatting presents ample evidence of bad faith in the circumstances of this case. Briefing.com Inc. v. Cost New Domain Manager, WIPO Case No. D2001-0970 (finding that “Respondent has demonstrated bad faith by engaging in ‘typo-piracy’ to confuse Internet users and draw them away from Complainant’s web site”).
Due to the Complainant’s 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 Complainant at the time of registration.
The Panel additionally finds that the disputed domain names are currently being used in bad faith to divert Internet users, and particularly the Complainant’s clients, to commercial parking pages with links related and identical to the services offered under the Complainant’s MILLIMAN mark. In doing so, the Respondent is using the MILLIMAN mark to attract the Complainant’s clients, and then to encourage those clients, who would plausibly assume that the Complainant owned or endorsed the commercial parking pages, to visit other websites they might similarly assume were associated with the Complainant. The Respondent generates unjustified revenues for each click-through of the sponsored links, thereby illegitimately capitalizing on the Complainant’s name and reputation. Such activity constitutes evidence of bad faith registration and use of the disputed domain names under paragraph 4(b)(iv) of the Policy. See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
The Panel therefore holds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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, <millimanbenfits.com>, <millimanbenifets.com> and <millimenbenefits.com> be transferred to the Complainant.
Evan D. Brown
Date: November 22, 2016