WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

John Hancock Life Insurance Company (U.S.A.) v. Wangcong and Modanfeng

Case No. D2021-2650

1. The Parties

The Complainant is John Hancock Life Insurance Company (U.S.A.), United States of America (“US”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondents are Wangcong, China, and Modanfeng, China.

2. The Domain Names and Registrar

The disputed domain names <johnhancockinsurnace.com>, <johnhandcockinsurance.com>, and <jonhancockinsurance.com> are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2021. On August 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 18, 2021, 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 August 22, 2021, 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 August 27, 2021.

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 September 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.

The Center appointed Marilena Comanescu as the sole panelist in this matter on October 28, 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 is a wholly owned subsidiary of Manulife Financial Corporation, founded in 1862. Its core retail products in US include life insurance, mutual funds, 401(k) plans, retirement plans, long-term care insurance, travel insurance, and annuities.

The Complainant has used the JOHN HANCOCK mark in the US since its inception in 1862 and internationally since the early 1990s in connection with financial services, insurance and long-term care underwriting and administration, financial planning, and investment for others.

The Complainant received numerous accolades and recognitions in its industry.

The Complainant owns over 90 trademark registrations for its JOHN HANCOCK mark in over 45 jurisdictions worldwide, including the following:

- the US Registration No. 1287236, for the word mark JOHN HANCOCK, filed on May 4, 1983 and registered on July 24, 1984, for services in IC 36;

- the Chinese Registration No. 1097428, for the word mark JOHN HANCOCK, filed on May 20, 1996 and registered on September 7, 1997, for services in IC 36; and

- the European Union Trade Mark Registration No. 000078972, for the word mark JOHN HANCOCK, filed on April 1, 1996 and registered on September 22, 1998, for goods and services in IC 16, 35, and 36.

The Complainant’s primary website is available at “www.johnhancock.com”. The Complainant also holds the domain name <johnhancockinsurance.com>, registered on October 15, 2002.

The disputed domain names <johnhancockinsurnace.com>, <johnhandcockinsurance.com>, and <jonhancockinsurance.com> were registered on June 13, 2021.

At the time of filing the Complaint, all the disputed domain names resolved to websites that displayed adult pornografic content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its well-known trademark JOHN HANCOCK being prototypical examples of typosquatting, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith knowing the Complainant’s trademark and business. The Complainant requests the transfer of the disputed domain names to it.

B. Respondent

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

6. Discussion and Findings

In view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the disputed domain names are 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 the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Consolidation of multiple Disputed Domain Names and Respondents request

According to the provisions of paragraph 10(e) of the Rules, the Panel has the power to decide the consolidation of multiple domain names disputes. Further, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Under the Rules, the respondent “means the holder of a domain name registration against which a complaint is initiated”.

From section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), it results that in cases involving a complainant’s request to consolidate against multiple respondents, panels look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties, and also procedurally efficient.

In the present case, there are three disputed domain names and two sets of registrant details.

According to the Registrar verification, the registrants for the disputed domain names are the following:

wangcong, China for the disputed domain name <johnhandcockinsurance.com>, and modanfeng, China for the disputed domain names <jonhancockinsurance.com> and <johnhancockinsurnace.com>. They will be collectively referred to as the “Respondent”.

The present disputed domain names: (i) were created in a similar manner: the trademark JOHN HANCOCK together with the additional term “insurance” written with a misspelling of the mark or of the additional term; (ii) were registered with the same Registrar; (iii) were registered on the same day, on June 13, 2021; (iv) have similar contact details, email adresses, and phone numbers – particularly all disputed domain names are registered in China and two of which (<jonhancockinsurance.com> and <johnhancockinsurnace.com>) share the same email address and phone number; (v) were used in a similar manner and direct to websites displaying similar content; and (vi) are hosted on the same server.

The Respondent had the opportunity to comment on the consolidation request made by the Complainant but it chose to remain silent.

For the above, the Panel finds that the disputed domain names are subject to common control and it would be equitable and procedurally efficient to decide the consolidation of multiple disputed domain names and the Respondents in the present procedure. See also section 4.11.2 of the WIPO Overview 3.0.

B. Identical or Confusingly Similar

The Panel finds that the Complainant holds rights in the JOHN HANCOCK trademark.

The disputed domain names <johnhancockinsurnace.com>, <johnhandcockinsurance.com>, and <jonhancockinsurance.com> incorporate the trademark JOHN HANCOCK with the additional term “insurance” written with a misspelling of the mark or of the additional term. However, a domain name which consists of a common, obvious or intentional mispelling of the trademark does not prevent a finding of confusing similarity for purposes of the first element of the Policy. See section 1.9 of the WIPO Overview 3.0.

It is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.site”, “.info”, “.shop”) is typically disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain names are confusingly similar to the trademark JOHN HANCOCK, pursuant to the Policy, paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark JOHN HANCOCK, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain names or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain names.

This Panel is further convinced, based on the Complainant’s undisputed contentions, that the Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, especially, since the websites to which the disputed domain names lead contain sexually explicit and pornografic material, and such use misleads and diverts the Internet users and ultimately tarnishes the Complainant’s trademark.

Furthermore, the nature of the disputed domain names, comprising the Complainant’s trademark and an additional related term with misspellings of the mark or the additional term, indicates an awareness of the Complainant and its mark and intent to take unfair advantage of such, which does not support a finding of any rights or legitimate interests.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).

D. Registered and Used in Bad Faith

The Complainant uses the JOHN HANCOCK mark for 150 years and such mark has gained reputation worldwide.

The disputed domain names were registered in 2021 and reproduce an obvious misspelling of the Complainant’s trademark or the term “insurance”, which is closely related to the Complainant’s core activities.

The Complainant also holds a domain name for <johnhancockinsurance.com>.

From the above and the available record, the Panel finds that the disputed domain names were registered by the Respondent in bad faith, with knowledge of the Complainant and targeting its trademark.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

At the time of filing the Complaint, the disputed domain names redirected Internet users to websites offering explicit adult oriented content. In doing so, it is likely, that the Respondent used the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark. See also Averitt Express, Inc. v. Protection of Private Person / Roman Emec, WIPO Case No. D2018-0249, and cases cited therein.

In addition, paragraph 4(b)(ii) of the Policy lists the situation when the respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. Paragraph 3.1.2 of the WIPO Overview 3.0 explains that a pattern of conduct involves multiple UDRP cases with similar fact situations. This present case involves three disputed domain names used in a similar manner.

The Complainant’s trademark is well-known and used for more than a century and half, the Respondent did not submit a response, and there is no plausible reason for the Respondent to choose and register the disputed domain names other than to create confusion or association with the Complainant and its trademark.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can, by itself, constitute a presumption of bad faith for the purpose of the Policy. See section 3.1.4 of the WIPO Overview 3.0. Furthermore, the misspellings in the disputed domain names tend to support a finding of bad faith.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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, <johnhancockinsurnace.com>, <johnhandcockinsurance.com>, and <jonhancockinsurance.com>, be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: November 4, 2021