WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Milliman, Inc. v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang

Case No. D2018-2178

1. The Parties

The Complainant is Milliman, Inc. of Seattle, Washington, United States of America (“United States”), represented by Adams and Reese LLP, United States.

The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States / Zhichao Yang of Hefei, China.

2. The Domain Names and Registrar

The disputed domain names <millimanbenefis.com>, <millimanbennefits.com>, <millimanbnefits.com>, and <millimannbenefits.com> are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2018. On September 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 26, 2018, 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 October 3, 2018, 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 October 5, 2018.

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 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2018.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on November 9, 2018. 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 independent actuarial and consulting firms operating in the areas of employee benefits, investment, property and casualty, healthcare and life financial services. The Complainant operates in this field since 1947. In 1957 the Complainant started using the trademark MILLIMAN & ROBERTSON, and in 2001 the trademark MILLIMAN.

The Complainant operates through the websites at “www.milliman.com” and “www.millimanbenefits.com”. The website “www.millimanbenefits.com” is an access-controlled web portal through which the Complainant provides services exclusively to the Complainant’s clients.

The Complainant provides its services in different countries worldwide and has 62 offices located in Africa, Asia, Europe, Latin America, North America, and the Middle East.

The Complainant is the owner of numerous trademark registrations for the MILLIMAN word and design trademarks worldwide, among which:

- MILLIMAN (word) European Union Trade Mark registration No. 3295474, filed on July 30, 2003, and registered on November 19, 2004, duly renewed, covering goods and services in classes 9, 16, 35 and 36;

- MILLIMAN (design), International registration No. 959067, registered on August 10, 2007, designating various jurisdictions including the European Union and China.

The disputed domain names were all registered on June 28, 2018 and are associated with websites displaying pay-per-click links.

Before filing its Complaint, the Complainant sent four cease and desist letters to the contact information in the WhoIs record, requesting the transfer of the disputed domain names to the Complainant. The Respondent did not reply to the Complainant’s letters and the disputed domain names continued to resolve to the same webpages.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s earlier trademarks as they fully incorporate the trademark MILLIMAN followed by typo-variants of the word “benefits”.

The Complainant further contends that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. The Respondent has never been commonly known by the trademark MILLIMAN. The Respondent is not one of the Complainant’s licensees or franchisees, nor has the Complainant ever authorized the Respondent to register or use its trademark or to apply for, or use, any domain name incorporating its trademark.

According to the Complainant, the Respondent is not using the dispute domain names in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner, as they all lead to webpages containing pay-per-click links purportedly offering services identical or related to those of the Complainant, such as “employee benefits” and “retirement benefits”.

Furthermore, the Complainant maintains that without authorization from the Complainant, no actual or contemplated bona fide or legitimate use of the disputed domain names can reasonably be claimed by the Respondent as the MILLIMAN trademark was well known at the time of the registration of the disputed domain names due to its extensive use.

The Complainant contends that the disputed domain names were registered and have been used in bad faith.

In view of the longstanding and widespread use of the Complainant’s trademark, the Respondent could not have been unaware of the Complainant at the time of the registration of the disputed domain names. The addition of the term “benefits” or misspelling thereof is further evidence of the fact that the Respondent knew the Complainant at the time of the registration of the disputed domain names.

The disputed domain names are being used to divert Internet users to commercial parking pages with links related and identical to the services offered under the Complainant’s mark. The Respondent is using the Complainant’s brand to attract the Complainant’s clients and to encourage them to visit other websites they might similarly assume were associated with the Complainant. Moreover, the Respondent is generating unjustified revenues for each click-through of the sponsored links, thereby illegitimately capitalizing on the Complainant’s name and reputation.

Finally, the Respondent has engaged in a pattern of cybersquatting, demonstrated by the Respondent’s registration of the four disputed domain names, as well as by the Respondent’s longstanding history in other UDRP proceedings.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are all confusingly similar to the Complainant’s earlier trademarks. The disputed domain names fully include the Complainant’s trademark, followed by the descriptive word “benefits” or a misspelling thereof, such as “benefis” and “bnefits”. Furthermore, in the domain name <millimannbenefits.com> the trademark MILLIMAN is spelt with two letters “n”. All these variations do not prevent a finding of confusing similarity. The addition of the word “benefits” and its typo-variations which refer to the Complainant’s activity do not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The fact that in one instance the trademark MILLIMAN is spelt with two letters “n” is also a slight variation that can hardly be perceived and does certainly not prevent a finding of confusing similarity.

Thus, the Panel is satisfied that the first condition under the Policy is met.

B. Rights or Legitimate Interests

The second condition to be proved in order to succeed in a UDRP proceeding is that the Respondent lacks rights or legitimate interests in the disputed domain names.

While the overall burden of proof rests with the complainant, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant must make a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.

The Panel finds that the Respondent was not authorized to reflect the Complainant’s trademark in the disputed domain names, and that the Respondent does not appear to have been commonly known by the name “milliman”. The Complainant’s trademark is not a dictionary word that could justify the use of the disputed domain names to access pay-per-click links advertising services in competition with those offered by the Complainant. The webpages associated to the disputed domain names are commercial webpages generating revenues from each click on the sponsored links. Thus, the Respondent is capitalizing on the reputation and goodwill of the Complainant’s mark or is otherwise misleading Internet users. Accordingly, the disputed domain names are not used in connection with a bona fide offering of goods or services, or in a legitimate, noncommercial or fair way.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that case because it did not respond to the Complainant's contentions.

Therefore, the Panel is satisfied that also the second condition under the Policy is met.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, in order to prevail in this UDRP proceeding, the Complainant must prove that the disputed domain names have been registered and are being used in bad faith.

As far as registration in bad faith is concerned, it is clear from the contents of the case file that the Respondent was well aware of the Complainant, and of its trademark and activities at the time of the registration of the disputed domain names.

The Complainant’s trademarks predate the disputed domain names by many years. The Complainant’s trademarks are registered worldwide, including in China, which is where the Respondent is located. The addition of the term “benefits” or misspelling thereof, clearly indicate an awareness of the Complainant’s activities under its MILLIMAN trademark (see also Milliman, Inc. v. Wanzhongmedia, WIPO Case No. D2012-1649; Milliman, Inc. v. Jiang Li, WIPO Case No. DCO2018-0004).

Thus, the Panel concludes that it is very likely that the Respondent knew the Complainant and its trademark at the time it registered the disputed domain names. The Respondent decided to proceed with the registration of four domain names containing the MILLIMAN trademark notwithstanding it lacked any authorization from the Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith.

With respect to use in bad faith, the Panel notes that the disputed domain names resolve to websites containing pay-per-click links advertising services in competition with those offered by the Complainant. The websites display the following notice: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in WhoIs)”.

In the Panel’s view, the Respondent is responsible for the contents of the websites associated with the disputed domain names, regardless of whether the sponsored links are automatically generated or not. The Policy does not require that the Respondent itself profits directly from the pay-per-click links in order to establish use in bad faith. It is sufficient for the third party behind the pay-per-click links, or another third party, to have made some profit.

The disputed domain names lead to commercial pages, and the Respondent is deriving a direct or indirect undue economic advantage from the Complainant’s trademark and activity. In this respect see also section 3.5 of the WIPO Overview 3.0, which states: “Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”.

In addition, the Panel notes that the Respondent failed to reply to the cease and desist letters sent by the Complainant, and that it was the respondent in other prior 27 UDRP proceedings.

Thus, the Panel concludes that the disputed domain names were registered to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s websites or other on-line locations, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or locations.

Hence the Panel is satisfied that the Complainant has successfully proved that the disputed domain names were registered and have been used in bad faith.

7. Decision

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 <millimanbenefis.com>, <millimanbennefits.com>, <millimanbnefits.com>, and <millimannbenefits.com> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist
Date: November 17, 2018