WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Milliman, Inc. v. Contact Privacy Inc. Customer 1246838028 / Name Redacted and Contact Privacy Inc. Customer 1246990877 / Name Redacted
Case No. D2020-1036
1. The Parties
The Complainant is Milliman, Inc., United States of America (“United States”), represented by Adams and Reese LLP, United States.
The Respondent is Contact Privacy Inc. Customer 1246838028, Canada / Name Redacted, United Kingdom, and Contact Privacy Inc. Customer 1246990877, Canada / Name Redacted, United States.1
2. The Domain Names and Registrar
The disputed domain names <miliiman.com> and <mililman.com> are registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2020, 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 May 1, 2020 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 May 4, 2020.
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 May 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2020.
The Center appointed Luca Barbero as the sole panelist in this matter on June 15, 2020. 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 an independent consulting firm operating in the areas of employee benefits, investment, property and casualty, healthcare, life and financial services, and insurance services.
Active in this field since 1947, the Complainant is based in the city of Seattle, Washington, and operates in various markets throughout the world, with sixty-two offices located in Africa, Asia, Europe, Latin America, North America, and the Middle East.
The Complainant is the owner of several trademark registrations for MILLIMAN, including the following, as per trademark certificates submitted as annexes to the Complaint:
- United States trademark registration No. 2551240 for MILLIMAN (word mark), registered on March 19, 2002, in international class 36;
- Canadian trademark registration No TMA644211 for MILLIMAN (word mark), registered on July 13, 2005;
- Canadian trademark registration No. TMA791744 for MILLIMAN (figurative mark), registered on February 28, 2011.
The Complainant is also the owner of the domain name <milliman.com>, registered on September 21, 1995, and <millimanbenefits.com>, registered on December 13, 2005. Both domain names are used by the Complainant to promote its services under the trademark MILLIMAN. The Complainant also uses its domain name <milliman.com> for its employees’ email addresses.
The disputed domain names <miliiman.com>, registered on April 20, 2020, and <mililman.com>, registered on April 3, 2020, are not pointed to active websites. The Complainant provided evidence that the Respondent was using the disputed domain names to impersonate one of the Complainant’s employees in a fraudulent email scheme.
On April 24, 2020, the Complainant sent a cease-and-desist letter to the Respondent, and received no reply.
5. Parties’ Contentions
The Complainant contends that disputed domain names <miliiman.com> and <mililman.com> are confusingly similar to the trademark MILLIMAN in which the Complainant has rights as they reproduce the trademark in its entirety with the mere substitution, in the first case, of the second letter “l” in the trademark MILLIMAN with the letter “i” and, in the second case, with the sole inversion of the letters “l” and “i”, followed in both cases by the generic Top-Level Domain “.com”. Therefore, the Complainant asserts that both disputed domain names are virtually identical, in sound and appearance, to the trademark MILLIMAN, even despite the obvious misspellings.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of
the disputed domain names because:
- the Complainant is the exclusive owner of the distinctive and well-known trademark MILLIMAN;
- the Respondent is not, and has never been, a licensee or franchisee of the Complainant, is not commonly known by the disputed domain names and has never been authorized by the Complainant to register or use the Complainant’s trademark MILLIMAN or to apply for or use any domain name incorporating the trademark (or close approximation thereof);
- the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and service, or in a legitimate noncommercial or fair manner, as the disputed domain names are not pointed to active websites and have been used in connection with email addresses impersonating a Complainant’s employee in order to defraud at least one of the Complainant’s customers by sending falsified payment instructions and wiring funds to an unauthorized bank account;
- without authorization from the Complainant, no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed by the Respondent, as the trademark MILLIMAN was well known at the time of registration, due to the Complainant’s extensive use of such trademark.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, given the Complainant’s global trademark registrations for the trademark MILLIMAN, the Complainant’s ownership of domain names incorporating the trademark MILLIMAN, including <milliman.com>, the Complainant’s international reputation, and the fact that MILLIMAN is a well-known trademark universally associated with the Complainant, it is unlikely that the Respondent could have been unaware of the Complainant at the time of registration.
The Complainant also states that the fact that the disputed domain names resolve to inactive websites does not prevent a finding of bad faith given the well-known character of its trademark MILLIMAN, the Respondent’s use of the disputed domain names for a fraudulent activity and the Respondent’s provision of false contact information and impersonation of a Complainant’s employee in an attempt to conceal its true identity.
The Complainant requested the redaction of the Respondent’s name, as the Respondent impersonated one of the Complainant’s employees.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark MILLIMAN based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 6 to the Complaint
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain names.
In the case at hand, as highlighted in the Complaint, the Complainant’s trademark MILLIMAN is entirely reproduced in the disputed domain names <miliiman.com> and <mililman.com>, with the mere substitution, in the first case, of the second letter “l” of the trademark MILLIMAN with the letter “i” and, in the second case, with the inversion of the letters “l” and “i”, followed in both cases by the generic Top-Level Domain “.com”.
As stated in section 1.9 of the WIPO Overview 3.0, “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. Moreover, as indicated also in section 1.11 of the WIPO Overview 3.0, the Top Level Domain is commonly disregarded under the first element confusing similarity test.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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 non-commercial 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 the case at hand, the Complainant has made a prima facie case and the Respondent, by not submitting a Response, has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain names.
As mentioned above, the disputed domain names have not been pointed to active websites but, according to the documents and statements submitted by the Complainant, have been used for the creation of email addresses used by the Respondent for the sending of fraudulent email communications impersonating a Complainant’s employee and sending falsified payment instructions in order to divert funds due to the Complainant to a third-party bank account. The Panel finds that the Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
See, along these lines, section 2.13.1 of the WIPO Overview 3.0: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain names were registered and are being used by the Respondent in bad faith.
As to bad faith at the time of the registration, the Panel notes that, in light of the widely known character of the Complainant’s trademark MILLIMAN and of the substantial correspondence of the disputed domain names with the Complainant’s trademark and its domain name <milliman.com>, the Respondent was more likely than not aware of the Complainant’s trademark.
In addition, according to the records, email addresses based on the disputed domain names have been used, shortly after their registration, for the sending of fraudulent communications, which misused the Complainant’s trademark and pretended to be sent on behalf of an existing employee of the Complainant. The Panel finds that this is compelling evidence of the Respondent’s actual knowledge of the Complainant’s trademark.
Moreover, in view of the well-known character of the Complainant’s trademark in its sector, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain names are so obviously connected with the Complainant that its very selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain names were registered with a deliberate intent to create an impression of an association with the Complainant.
As to the current use of the disputed domain names, they do not resolve to active websites. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances. Indeed, as stated in section 3.3 of the WIPO Overview 3.0, “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
In the case at hand, in view of the Respondent’s registration of domain names confusingly similar to the Complainant’s trademark, the absence of any documented rights or legitimate interests of the Respondent in the disputed domain names, its failure to respond to the Complaint and its provision of false contact details in order to impersonate the Complainant, the Panel finds that the Respondent’s lack of use of the disputed domain names in connection with active websites also amounts to bad faith. Moreover, the fact that the disputed domain names were used to deliver fraudulent email communications to at least one of the Complainant’s customers and provide false payment instructions in order to divert money due to the Complainant to a third-party bank account demonstrates that the Respondent clearly acted in bad faith.
As stated in section 3.4 of the WIPO Overview 3.0, “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”.
The Panel also finds that typosquatting constitutes an additional evidence of bad faith (Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286, National Association of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011; Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller, WIPO Case No. D2006-0536 (stating that “in the present case, in the absence of any Response, the Panel is satisfied that the Respondent has engaged in flagrant typosquatting which is exactly the sort of abusive conduct to which the Policy is directed”).
Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain names in bad faith according to 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 <miliiman.com> and <mililman.com> be transferred to the Complainant.
Date: June 29, 2020
1 The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.