WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Hancock Life Insurance Company (U.S.A.) v. Don Aronowitz, Safeguard Insurance
Case No. D2016-2218
1. The Parties
The Complainant is John Hancock Life Insurance Company (U.S.A.) of Boston, Massachusetts, United States of America ("USA" or "US"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Don Aronowitz, Safeguard Insurance of Coconut Creek, Florida, USA.
2. The Domain Name and Registrar
The disputed domain name <johnhancocklongtermcareinsurance.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 1, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2016. The Response was filed with the Center on November 24, 2016.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 2, 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 Complainant is a financial services company that sells a range of insurance products throughout the USA. The Complainant is the successor to an insurance business that was founded in Boston, Massachusetts, USA in 1862, using the JOHN HANCOCK mark for insurance services since that time. Following its acquisition in 2004, the Complainant is the wholly-owned US subsidiary of the publicly traded Canadian Manulife Financial Corporation and is one of the leading providers of long-term care insurance in the United States. The Complainant operates several websites, prominently "www.johnhancock.com" and "www.johnhancockinsurance.com", as well as social media sites using the JOHN HANCOCK name.
The Complainant owns numerous trademark registrations in more than forty-five jurisdictions consisting of or incorporating JOHN HANCOCK, including United States Registration Numbers 557033 (stylized), registered on April 1, 1952, and 1287236 (standard characters), registered on July 24, 1984. The record includes ample evidence that the mark is well known and long established in the insurance industry and is heavily advertised online and in other media, as well as appearing regularly in the promotion of sporting and charitable events in the USA.
According to the Registrar, the Domain Name was created on January 29, 2016. It is registered in the name of the Respondent, Mr. Don Aronowitz of Safeguard Insurance at an address in Coconut Creek, Florida, USA. The Panel notes that the online database maintained by the Florida Division of Corporations lists an inactive limited liability company named "Safeguard Insurance Solutions, LLC" at the same postal address, with a Donald J. Aronowitz as manager. Mr. Aronowitz is also listed as a licensed insurance agent on the online database maintained by the Florida Department of Financial Services, where he is shown as representing a number of insurance companies; the Complainant is not among them.
At the time of this Decision, the Domain Name resolves to a default landing page hosted by the Registrar that displays third-party, "sponsored" advertising links, presumably on a pay-per-click ("PPC") basis, for a variety of products and services. The first link is for an insurance broker advertising quotes for long term care insurance provided by the Complainant and at least four of its competitors. The landing page also includes the Registrar's standard advertisements to the holder of the Domain Name ("Let's turn it into a website!") and to others who might be interested in acquiring the Domain Name ("Would you like to buy this domain?").
The Complainant reports having several conversations with the Respondent and the Respondent's counsel, beginning in August 2016. This proceeding followed.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its JOHN HANCOCK trademarks, in which the Respondent has no rights or legitimate interests. The Complainant infers that the Respondent acquired the Domain Name in bad faith, to misdirect Internet users for commercial gain.
The Respondent has replied without addressing the substance of the Complaint.
The Center delivered the Complaint by email and by post to the contact addresses listed in the Registrar's WhoIs database, as required by the Rules, paragraph 2(a). The courier service provided receipt of delivery of the Written Notice of the Complaint, of which the Respondent confirms receipt in its Response. The electronic copies were sent to the same email address that the Respondent continues to use in communicating with the Center. The Respondent then sent an email to the Center denying having received the Complaint "by any means".
The Written Notice includes the following statement: "If you would like a copy of the Complaint (including any annexes) forwarded to you at an alternate email address(es), please advise the Center of this as soon as possible." The Panel notes that the Respondent continued to correspond with the Center using the same email address and did not suggest any alternate address.
While not providing an alternate address, the Respondent submitted a signed Response using the Center's template. The Response does not substantively address the Complaint, which it does not deny receiving from the Center itself. Rather, it asserts that the Respondent did not receive the Complaint from the Complainant:
"I am unable to respond to a complaint or specific allegation as I have never received a copy of said complaint via email by John Hancock as stated in your letter (page 1, 2nd paragraph) dated November 4, 2016. Though I am willing to consider a compromise equitable to both parties."
The Center promptly replied by sending yet another copy of the Complaint to the same email address from which the Respondent communicated. The Respondent sent another email to the Center stating again that it has not received a copy of the Complaint, that the Complainant has neglected to purchase the Domain Name and that it is licensed to do business with John Hancock.
The Panel concludes that the Complainant and the Center have complied with the Rules, and the Respondent has been given a fair opportunity to review and respond substantively to the Complaint. The Respondent has not chosen to do so, and the signed Response as filed will be treated as the Response in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
Under paragraph 15(a) of the Rules, "[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The first element of the UDRP is "essentially a standing requirement" requiring "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
The Domain Name meets this test by comparison with the JOHN HANCOCK trademarks registered by the Complainant, which is identical to the material and most distinctive portion of the Domain Name. "Longterm care insurance" is a descriptive phrase that does not serve to avoid confusion, especially as that kind of insurance is one of the Complainant's principal offerings, and the ".com" generic Top-Level Domain name is a technical feature of the URL address that does not form a meaningful portion of the Domain Name in this instance. Hence, the Panel finds the Domain Name confusingly similar to the Complainant's JOHN HANCOCK trademarks.
The Panel concludes that the first element of the Complaint has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this issue shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
The Domain Name here is confusingly similar to the Complainant's well-known trademarks, and the Respondent, which is not making noncommercial fair use of the Domain Name, is neither known by a corresponding name nor is offering goods or services itself under such a name. It is undisputed that the Complainant has not given the Respondent permission to make use of the Complainant's mark in the Domain Name. The Respondent has not come forward with persuasive evidence of rights or legitimate interests in the Domain Name, and the Respondent has not used the Domain Name in an arguably legitimate fashion as, for example, a licensed agent or reseller of the Complainant's products, since the Domain Name has been used to advertise competing and irrelevant services. See WIPO Overview 2.0, paragraph 2.3. The Panel concludes, therefore, that the Complainant has established the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following ("you" refers to a respondent):
"(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 or service on your website or location."
It can safely be assumed that the Respondent was aware of the Complainant and its trademarks. The marks are well known and long established in the US insurance industry, and the Respondent is active in that industry. The Respondent is licensed as an agent for several insurance companies, including some that compete with the Complainant in some lines of insurance. The Domain Name consists of the Complainant's mark and a long, descriptive phrase that exactly describes one of the Complainant's principal insurance products. In these circumstances, it is inconceivable that the Domain Name was selected for any reason other than to target the Complainant's marks.
So far, the Domain Name has been used only for a PPC landing page hosted by the Registrar, as described above. This site may not even share revenues with the Respondent, since it is labelled as "parked for free" and the Registrar has "cash parking" programs that require a paid subscription to share in ad revenues. But that does not change the fact that the Respondent has been allowing a third party to generate advertising revenue (some of it from the Complainant's direct competitors) for nearly a year by using the Domain Name to attract Internet users familiar with the Complainant's trademark. The Panel simply cannot find any good faith reason for the Respondent to register and use the Domain Name, based on the trademark of a leading insurance company, for commercial gain in such a fashion, and the Respondent has not offered one.
The Panel concludes that the third element of the Complaint has been established.
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, <johnhancocklongtermcareinsurance.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: December 14, 2016