WIPO Arbitration and Mediation Center
ADMINISTRATIONAL PANEL DECISION
Milliman, Inc v. ICS Inc
Case No. D2017–0360
1. The Parties
The Complainant is Milliman, Inc. of Washington, United States of America, represented by Kristina Montanaro Schrader of Adams and Reese LLP, United States of America.
The Respondent is ICS Inc of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The Domain Name <millimanbebefits.com> is registered with TUCOWS DOMAINS INC., doing business as TucowsDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2017. On February 23, 2017, the Center acknowledged receipt of the Complaint via email. The Center then transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 23, 3017, the Registrar transmitted by email to the Center its verification response.
On March 9, 2017 the Center transmitted by email a request for clarification of the registrant, noting that although the Registrar had stated that the “Respondent is not the current registrant of the domain name”, the contact details of the Respondent provided by the Registrar matched the contact details in the Complaint. On March 9, 2017 the Registrar confirmed that the registrant is ICS Inc., rather than Contact Privacy Inc. as stated in the original verification email. The Center acknowledged by further email on the same date receipt of the Registrar’s response.
The Center verified that the Complaint satisfies 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”) on March 10, 2017.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 10, 2017. In accordance with the Rules, paragraph 5, the due date for the Response was March 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2017.
The Center appointed David Williams as the sole panelist in this matter on April 21, 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 the owner and proprietor of the registered trademark MILLIMAN. The Complainant has been operating as an actuarial and consulting firm since 1947. The mark MILLIMAN & ROBERTSON was first used in 1957 and the mark MILLIMAN was first used in 2001. The Complainant owns registrations for MILLIMAN and related marks in at least 35 jurisdictions. The Complainant has provided evidence of 14 trademark registrations for MILLIMAN across 6 jurisdictions, which predate the creation of the disputed Domain Name.
The Complainant has provided a non-exhaustive list of numerous domain names of which it is the owner, including <milliman.com> and <millimanbenefits.com>.
On June 17, 2012 the Respondent registered the Domain Name. The Doman Name is linked to a commercial parking page, with pay-per-click links to competitors purporting to offer similar or identical services as the Complainant.
Prior to December 26, 2016 the Respondent listed the Domain Name for sale at a price of USD 3,039. On January 10, 2017 the Complainant sent the Respondent a cease-and-desist letter of which evidence was provided. Following receipt of this letter, the listed Domain Name sale price rose to USD 4,299.00.
The Respondent has not made contact with the Complainant. The Respondent takes no part in these proceedings.
5. Parties’ Contentions
(a) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complaint has rights
The Complainant submits it is an independent actuarial and consulting firm with an international reputation and is the owner and proprietor of the well-known registered trademark MILLIMAN. The Complainant advertises its goods and services through the domain names <milliman.com> and <millimanbenefits.com> which it owns. The Complainant alleges that the Domain Name is identical or confusingly similar to the Complainant’s MILLIMAN mark and websites. The MILLIMAN mark is incorporated into the Domain Name alongside the word “bebefits” which the Complainant contends is a common misspelling of the word “benefits” and is insufficient to distinguish the Domain Name from the MILLIMAN mark.
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant submits that is the exclusive owner of the mark MILLIMAN. It contends that the circumstances which may demonstrate rights or legitimate interests in the Domain Name are absent in this case. First, the Respondent’s name is not, and has never been, Milliman. Secondly, the Respondent is not, and has never been, an authorized licensee or franchisee of the Complainant. Thirdly, the Respondent has not been authorized by the Complainant to register or use the mark MILLIMAN or use any domain name utilizing the mark MILLIMAN.
The Complainant further submits that the Domain Name is not being used in conjunction with a bona fide offer of goods or services or in a legitimate noncommercial or fair manner. Rather, the Domain Name is a commercial parking page with pay-per-click links to advertisers offering competing services from which the Complainant assumes the Respondent is generating revenue.
(c) The Domain Name was registered and is being used in bad faith
The Complainant contends that the Respondent registered and is using the Domain Name in bad faith. The Complainant submits four arguments on this point.
First, the Complainant submits that the Respondent could not have been unaware of the existence of the Complainant when registering the Domain Name due to the global trademark registrations for the MILLIMAN mark; the use of similar domain names to the Domain Name including <milliman.com> and <millimanbenefits.com>; the Complainant’s international reputation and its association of the well-known mark MILLIMAN.
Secondly, the Domain Name diverts Internet users away from the Complainant’s websites to a commercial parking page with pay-per-click links purporting to offer the same or similar services to the Complainant. In this manner, the Respondent generates revenue based on the bad faith use of the Domain Name.
Thirdly, the Complainant submits that the Respondent’s offers to sell the Domain Name at increasing prices demonstrate bad faith, as both prices exceed the costs associated with the Domain Name.
Finally, the Complainant notes that the Respondent has a history of cybersquatting. The Respondent has been the subject of more than 190 UDRP proceedings, one of which involved the Complainant. The Complainant submits that this pattern of behavior is evidence of the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must show three elements to succeed in its claim:
(i) the Domain Name registered by the Respondent 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 domain name; and
(iii) the domain name has been registered and is being used by the Respondent in bad faith.
As a preliminary point, the Panel notes that the Respondent’s failure to participate does not automatically result in a decision in favor of the Complainant. As noted above, the Complainant must still satisfy all three elements under the Policy. However, if the Respondent fails to provide justification for its non-participation, the Panel is entitled to draw adverse against the Respondent (see the Rules, paragraph 14(b); Educational Tertiary Service v. TOEFL, WIPO Case No. D2000-0044). In particular, it has been held that if the respondent fails to submit a response, the panel can accept the complainant’s allegations as true (see Randstand General Partner (U.S.), LLC v. Domains for Sale For You, WIPO Case No. D2000-0051; Edgar Rice Burroughs, Inc. v. Adtel Communications, WIPO Case No. D2000-0115).
While there are no exceptional circumstances justifying the Respondent’s failure to reply to the Complainant’s submissions, the Panel will nevertheless assess whether the Complainant has met the requirements under the Policy based on the facts as stated by the Complainant.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy contains two elements. First, the Complainant must have rights to the relevant trademark or service mark. Secondly, the Respondent’s Domain Name must be “identical or confusingly similar” to the trademark or the service mark in which the Complainant has rights.
The first consideration is whether the Complainant has rights to the mark MILLIMAN. The Panel is satisfied that the Complainant has rights to the trademark MILLIMAN. It has provided evidence in Annex 5 of the Complaint of 14 trademark registrations for MILLIMAN and related marks across 6 jurisdictions, including the Respondent’s location (Reg. No. CT3295474, November 19, 2004).
UDRP panels have articulated the test for “confusingly similar” as typically involving a straightforward comparison of the mark and the alphanumeric string in the domain name. The mark generally needs to be recognizable as such within the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Confusing similarity will often result where the disputed domain name wholly incorporates or reproduces a principal component of the complainant’s trademark (see Eauto, LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc, WIPO Case No. D2000-0047; Magnum Piercing Inc. v. the Mudjackers and Garwood S Wilson, Sr, WIPO Case No. D2000-1525; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd, WIPO Case No. D2001-0110; Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215).
The Respondent’s Domain Name uses the Complainant’s mark, followed by the word “bebefits”. Although the Complainant’s mark and the Respondent’s Domain Name are not identical, they are nevertheless confusingly similar as the Domain Name fully incorporates the Complainant’s mark.
The Respondent’s inclusion of the term “bebefits” does little in reality to distinguish the Respondent’s Domain Name from the Complainant’s mark. Additionally, the Complainant’s business involves the provision of benefits and indeed operates from, amongst other websites, “www.millimanbenefits.com”. The addition of “bebefits” thus does not avoid a finding of confusing similarity.
Moreover, UDRP panels have consistently found that the deliberate misspelling of a word constitutes typo-squatting (see Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317: “[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. This is the case, in particular, where the Complainant’s mark is well-known”; Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145). The purpose of typo-squatting is “to be confusing to Internet users in order to lure them to the registrants’ websites” (Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk WIPO Case No. D2003-0161; see also Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302). However, differentiation of a single letter will not always amount to typo-squatting (see Dell Computer Corporation v. Clinical Evaluation, WIPO Case No. D2002-0423).
While in this case, the misspelled word is not the trademark but rather the word “benefits” (included in the Complainant’s domain name <millimanbenefits.com>), the panel notes that the Respondent has replaced the “n” in “benefits” with “b”, which is located next to “n” on a standard keyboard. This is a clear and transparent attempt to take advantage of common typing errors in order to direct Internet users to the Respondent’s commercial parking page rather than the Complainant’s domain name <millimanbenefits.com>. As such, this further supports a finding of confusing similarity.
On this basis, the Panel finds that the Domain Name <millimanbebefits.com> is confusingly similar to the Complainant’s trademark MILLIMAN and its other marks. The Complainant has met the first criterion of the Policy.
B. Rights or Legitimate Interests
Without more, the registration of a domain name does not give rise to rights or legitimate interests in that domain name (see Gold Medal Travel Group Plc v. Damir Kruzicevix, WIPO Case No. D2007-1902). Paragraph 4(c) of the Policy provides the circumstances in which a respondent may demonstrate rights or legitimate interests in a domain name. The burden of proof is borne by the complainant in relation to the three elements of paragraph 4(a) of the Policy. However, once the complainant has shown a prima facie case under 4(c) of the Policy, the respondent has the practical burden of adducing evidence of a right or legitimate interest in a domain name (see Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093).
Paragraph 4(c)(i) of the Policy refers to rights or legitimate interests where there is a bona fide offering of goods or services, while paragraph 4(c)(iii) of the Policy requires the respondent to show its rights or legitimate interests if it uses the trademark noncommercially or fairly without intention for commercial gain.
The Domain Name leads to a commercial parking page with links to companies purporting to sell identical or similar services to the Complainant. Although UDRP panels have recognized some circumstances will render the use of commercial parking or landing pages permissible under the Policy, this does not in and of itself confer the rights or legitimate interests that arise from a “bona fide offering of goods and services”. Rights or legitimate interests do not, in particular, arise where the parking page offers a connection to services that are in competition with those provided by the rights holder. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.6. (See, e.g., Milliman, Inc. v. PrivacyProtect.org/Telecom Tech Corp., WIPO Case No. D2011-0246; Berlitz Investment Corporation v. Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-0836; Berlitz Investment Corporation v. Telecom Tech Corp., WIPO Case No. D2008-0267). Further, Internet users expect to be directed to the company website of the trademark or mark incorporated into the domain name (see Microsoft Corporation v. J. Holiday Co, WIPO Case No. D2000-1493), rather than to parking pages or competitors’ websites.
It appears the Domain Name is being used for the purpose of misleading Internet users seeking to use the Complainant’s services. Therefore the Respondent’s use of the Domain Name is not a bona fide offering of goods and services under paragraph 4(c)(i), or legitimate noncommercial use of the Domain Name for the purposes of paragraph 4(c)(iii).
The Complainant alleges it did not authorize the use and registration by the Respondent of the MILLIMAN mark nor did it authorize the application or use of the mark within a domain name. In addition, the Respondent is not, and has never been, a licensee or franchisee of the Complainant.
Therefore, there is no evidence suggesting that the Respondent was commonly known by the Domain Name for the purpose of paragraph 4(c)(ii) of the Policy. There is no evidence that the Respondent has rights or legitimate interests in the <millimanbebefits.com> Domain Name.
The Respondent has not challenged the Complainant’s assertions. As a result, the Complainant has made an unrebutted prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy is framed in both present and past tenses. There are two elements to 4(a)(iii): (a) the registration of the disputed domain name must have been undertaken in bad faith; and (b) the respondent must be using the domain name in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Paragraph 4(b) of the Policy delineates situations where the registration and use of a domain name will involve 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 document 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 web site 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 web site or location.”
The first consideration is whether the Respondent registered the Domain Name in bad faith. The Complainant contends that its mark MILLIMAN is well-known, with an international reputation, such that the Respondent cannot credibly claim to be unaware of the Complainant’s rights. In Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, the well-known nature of the complainant’s name was one of the factors considered which meant that it was “inevitable that the Respondent registered the domain name in full knowledge of the Complainant’s rights and interests.”
The Complainant has been marketing and promoting its business since 1947. The mark MILLIMAN & ROBERTSON was first used in 1957 and the mark MILLIMAN was first used in 2001. The Complainant provides actuarial and consulting services in the areas of employee benefits, investment, property and casualty, healthcare and life and financial services. Given that the advertisement links on the Respondent’s parking page lead to websites purporting to offer the identical or similar services to the Complainant, the Respondent’s knowledge of the Complainant’s trademark at the time of registration is obvious. This finding, together with the Respondent’s lack of rights or legitimate interests in the Domain Name, leads the Panel to conclude that the Domain Name has been registered in bad faith.
The second consideration is whether the Respondent is using the Domain Name in bad faith. The Respondent does not have a connection with the Complainant. The Respondent’s Domain Name links to competitors websites purporting to offer the same or similar services to the Complainant.
UDRP panels have found that bad faith can be evidenced in several ways. Typo-squatting (see Express Scripts v. Windgather Investments Ltd, WIPO Case No. D2007-0267), diversion of Internet traffic (see Microsoft Corportation v. StepWeb, WIPO Case No. D2000-1500; Edmunds.com, Inc. v. Ult. Search Inc, WIPO Case No. D2001-1319; National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128) and offering to sell a disputed domain name for valuable consideration which exceeds the out-of-pocket costs associated with that domain name (see Central Garden & Pet Company v. Ryan G FOO, PPA Media Services/Domain Admin / Whois Privacy Corp., WIPO Case No. D2015-2268; DHL Operations B.V. v. Karel Salovsky, WIPO Case No. D2006-0520; AstraZeneca AB v. Alvaro Collazo, WIPO Case No. D2005-0367; CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243) have all been found to constitute evidence of bad faith.
As found above, the Respondent engaged in typo-squatting by substituting the letter “b” for the letter “n” in the word “benefits” to create the Domain Name <millimanbebefits.com>. In doing so, the Respondent directed Internet users away from the Complainant’s services to a commercial parking page and competitors of the Complainant. Finally, the Respondent listed the Domain Name for sale at a price that exceeds the out-of-pocket costs associated to it. This price rose considerably following the Complainant’s cease-and-desist letter of January 10, 2017.
The Complainant alleges the Respondent has a history of cybersquatting and has annexed to the Complaint UDRP search results listing panel decisions involving the Respondent. This is accepted by the Panel as prima facie evidence that the Respondent has acted in bad faith in accordance with paragraph 4(c)(ii) of the Policy.
Accordingly, the cumulative circumstances lead the Panel to conclude that the Respondent has registered and is using the Domain Name in bad faith. The third criterion is met.
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, <millimanbebefits.com>, be transferred to the Complainant.
Sir David AR Williams KNZM, QC
Date: May 4, 2017