WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Manufacturers Life Insurance Company v. kai fan tang, tang kai fan

Case No. D2021-0202

1. The Parties

The Complainant is The Manufacturers Life Insurance Company, Canada, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is kai fan tang, tang kai fan, China.

2. The Domain Name and Registrar

The disputed domain name (the “Disputed Domain Name”) <manulifefunds.com> is registered with Iconicnames LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2021. On January 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 25, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 February 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2021.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on March 23, 2021. 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, founded in 1887, is a Canada-based financial services company with principal operations in Canada, Asia, and the United States. The Complainant has over 35,000 employees and 98,000 agents around the world. The Complainant operates numerous websites, including “www.manulife.com”, “www.manulife.ca” and “www.manulifefunds.com.hk”.

The following registered trademarks are owned by the Complainant:

(1) MANULIFE, Canada trademark number TMA385240, registered on May 31, 1991, designating class 9,16,35,36,37,41 and 44.
(2) MANULIFE, United States trademark number 1790892, registered on August 31, 1993, designating class 36.
(3) MANULIFE, European Union trademark number 000540989, registered on July 9, 1999, designating class 16,36 and 41.
(4) MANULIFE, China trademark number 1087320, registered on August 28, 1997, designating class 16.
(5) MANULIFE, China trademark number 1115596, registered on September 28, 1997, designating class 36.

The Respondent is an individual located in Yunnan, China, and the Disputed Domain Name <manulifefunds.com> was registered on March 2, 2020. The Disputed Domain Name redirects to a website in Chinese that offers lottery and gambling services.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions could be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to the MANULIFE trademarks in which the Complainant has rights

The Complainant is the owner of MANULIFE trademark registrations across various jurisdictions and has trademark rights for purposes of standing to file a UDRP case.

The Top-Level Domain (“TLD) “.com” is a generic TLD and should be disregarded for the purpose of comparing the Disputed Domain Name to the Complainant’s trademarks.

The Disputed Domain Name includes the MANULIFE trademark and adds a descriptive term “funds”, which is closely linked and associated with Complainant’s services. Such term, which is closely linked and associated with Complainant’s brand and trademark, only serves to underscore and increase the confusing similarity. In addition, past Panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name <manulifefunds.com>

The granting of registrations to the Complainant for the MANULIFE trademarks is prima facie evidence of the Complainant’s exclusive rights to use the MANULIFE trademarks. The Respondent is not licensed by, sponsored by or affiliated with the Complainant in any way.

The Complainant has found no evidence to suggest that the Respondent has been commonly known as “manulifefunds”.

The Complainant further asserts that the Disputed Domain Name has not been used to provide a bona fide offering of goods or services nor a legitimate noncommercial or fair use, as the Disputed Domain Name redirects Internet users to a third-party website in Chinese that offers lottery and gambling services, which is prohibited in China.

(iii) The Disputed Domain Name <manulifefunds.com> has been registered and is being used in bad faith.

The Complainant has marketed and sold its goods and services using this trademark well before Respondent’s registration of the Disputed Domain Name on March 2, 2020. The Complainant asserts that the Respondent should have had the Complainant’s name and trademarks firmly in mind when registering the Disputed Domain Name, given that the Complainant and its trademarks are well known. MANULIFE is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith.

The Complainant further asserts that it is illogical to believe that the Respondent registered the Disputed Domain Name without specifically targeting the Complainant, because the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, as well as its <manulife.com> and <manulifefunds.com.hk> domain names.

The Disputed Domain Name redirects to a commercial website which promotes lottery and gambling services unrelated to the Complainant and its services. This sort of “bait-and-switch” tactic has been held to be evidence of bad faith by past Panels under the UDRP proceedings.

The Respondent currently holds registrations for over 2,300 domain names, including several other domain names that misappropriate the trademarks of well-known brands and businesses. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Disputed Domain Name.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:

(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.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of MANULIFE trademarks.

The Disputed Domain Name incorporates the Complainant’s trademark, MANULIFE, in its entirety, with the addition of a descriptive term “funds”, which closely relates to and describes the Complainant’s business. Where a relevant trademark is recognizable within a disputed domain name, the addition of other descriptive, geographical, or pejorative terms would not prevent a finding of confusing similarity under the first element. (See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287).

In addition, the TLD “.com” in the Disputed Domain Name is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. (See Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087).

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

According to paragraph 4(a) of the Policy, the overall burden of proof in UDRP proceedings is on the complainant. However, proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Therefore, where a complainant makes out a prima facie case, the burden of production on this element shifts to the respondent to demonstrate rights or legitimate interests in the domain name. (See OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149; B-Boy TV Ltd v. bboytv.com c/o Whois Privacy Service / Chief Rocka LTD, formerly named BreakStation LTD., WIPO Case No. D2012-2006 ).

The Complainant has established that it is the owner of the MANULIFE trademarks, and that it has neither licensed nor authorized the Respondent to make any use of such trademarks or apply for registration of the Disputed Domain Name.

There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or any similar name. There is also no evidence indicating use of the Disputed Domain Name in connection with a bona fide offering of goods or services. In addition, the Disputed Domain Name redirects to a lottery website, which is unrelated to the Complainant’s business and may be deemed a “bait-and-switch” tactic. Therefore, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy.

Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: […]

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.

The commencement of the Complainant’s business and the registration of the Complainant’s MANULIFE trademarks both predate the registration of the Disputed Domain Name. And the Complainant maintains an international network for its operations, including China. Given this, and the incorporation of the entirety of the Complainant’s trademark in the Disputed Domain Name, the Panel finds that the Respondent knew or should have known that its registration of the Disputed Domain Name would be identical or confusingly similar to the Complainant’s trademark.

As for the use of the Disputed Domain Name, the Respondent performs a “bait-and-switch” tactic by attracting Internet users to a site they may believe is the Complainant’s site only to discover that the Disputed Domain Name is unconnected to the Complainant. Such inclusion of trademarks of others is an indication of Respondent’s use in bad faith . (See Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

The Panel finds no evidence in the record to support a finding that the Respondent’s registration and use of the Disputed Domain Name has been for any reason other than attracting, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks.

The Respondent has been found to register other domain names which misappropriate the trademarks of brands and businesses. The Panel finds a pattern of actions to target trademarks of others. This is an additional indication of the Respondent’s bad faith in registering and using the Disputed Domain Name.

Having considered the above, the Panel finds that the Complainant has fulfilled the condition provided in paragraph 4(a)(iii) of the Policy.

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 Name, <manulifefunds.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: April 6, 2021