WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Manufacturers Life Insurance Company v. Privacy service provided by Withheld for Privacy ehf / Jason Lopland, Liam Markutis, Bernhard Weiss

Case No. D2021-3646

1. The Parties

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

The Respondents are Privacy service provided by Withheld for Privacy ehf, Iceland / Jason Lopland, Liam Markutis and Bernhard Weiss, Canada.

2. The Domain Names and Registrars

The disputed domain names are registered with the following registrars (the “Registrars”):

- <manulifetrust-cdic.com> with 1API, GmbH
- <manulifetrustcompany.com> with NameCheap, Inc, and
- <manulifetrust-account.com> with NameSilo, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 2, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 2 and November 3, 2022, the Registrars transmitted by email to the Center their verification responses disclosing registrants 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 November 10, 2021, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 15, 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 November 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2022.

The Center appointed Christiane Féral-Schuhl, as the sole panelist in this matter on January 26, 2022. 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 Manufacturers Life Insurance Company, which is a Canada-based financial services company operating in Canada and Asia as Manulife.

The Complainant provide financial advice, insurance and wealth and asset management solutions for individuals, groups, and institutions.

The Complainant is the owner of numerous trademarks, registered in several countries (thereafter the “MANULIFE Trademarks”) such as:

- the Canadian word trademark MANULIFE TRUST COMPANY, registration No. TMA844607, registered on February 25, 2013, for products and services in Class 36;
- the Canadian word trademark MANULIFE TRUST, registration No. TMA844606, registered on February 25, 2013, for products and services in Class 36;
- the Canadian word trademark MANULIFE, registration No. TMA385240, registered on May 31, 1991, and regularly renewed, for products and services relating to financial matters.
- the United States of America word trademark MANULIFE, Registration No. 1790892, registered on August 31, 1993, and regularly renewed, for products and services in Class 36,
- the United Kingdom word trademark MANULIFE, registration No. 1301399, registered on December 8, 1989, for products and services in Class 36,
- the European Union Trade Mark MANULIFE, Registration No. 000540989, registered on July 9, 1999, for products and services in Classes 16, 36, 41.

The Complainant also owns multiple domain names, including:

- <manulife.com> registered on February 14, 1994;
- <manulife.ca> registered on October 13, 2000;
-<manulifebank.ca> registered on October 17, 2000;
- <manulifetrust.com> registered on September 24, 2009;
- <maulifetrust.ca> registered on September 24, 2009.

The disputed domain name <manulifetrustcompany.com> was registered on August 22, 2021. The disputed domain names <manulifetrust-account.com> and <manulifetrust-cdic.com> were registered on October 9, 2021.

The disputed domain names <manulifetrustcompany.com> and <manulifetrust-cdic.com> resolved to a website offering purporting Complainant’s services and copying Complainant’s official website, the disputed domain name <manulifetrust-account.com> resolved to a website that displaying “Index of /”. At the time of the Panel’s decision, the disputed domain names resolve to inactive websites, under status “service unavailable”.

5. Parties’ Contentions

A. Complainant

First of all, the Complainant argues that the disputed domain names are under common control, even though the WhoIs information indicates three different registrants.

Then, the Complainant stands that the disputed domain names are confusingly similar to the Complainant’s Trademarks, given that:

- it is standard practice to not take the extension “.com” into account; and

- the disputed domain names consist of the Complainant’s Trademarks in their entirety, solely or with terms that do not prevent similarity with the Complainant’s Trademarks.

Moreover, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain names, given that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant adds that it has not given the Respondent permission to use the Complainant’s Trademarks in any manner including in domain names. The Complainant contends that there is no evidence that the Respondent is commonly known by the disputed domain names. Further, the Complainant asserts that, before the Complaint, the disputed domain names <manulifetrustcompany.com> and <manulifetrust-cdic.com> redirected Internet users to websites that copied and attempted to duplicate the Complainant’s official website, by copying design, layout and color scheme found on the Complainant’s website. Then, the Complainant adds that the Respondent is currently using the disputed domain names to redirect Internet users to websites that resolve to blank pages or “account suspended” pages, failing to make use of the disputed domain names or to attempt to make legitimate use of the disputed domain names.

Furthermore, the Complainant finds that the Respondent has registered the disputed domain names in bad faith, considering that:

- the disputed domain names incorporate the Complainant’s Trademarks in their entirety, so that the Respondent has demonstrated a knowledge and familiarity with the Complainant’s Trademarks and business;

- it is not possible to conceive of a plausible situation in which the Respondents would have been unaware of the Complainant’s Trademarks at the time the disputed domain names were registered, given that before the Complaint, the disputed domain names <manulifetrustcompany.com> and <manulifetrust-cdic.com> redirected Internet users to websites that copied and attempted to duplicate the Complainant’s official website; and

- at the time of the registration of the disputed domain names, the Respondent knew or should have known of the existence of the Complainant’s Trademarks.

At last, the Complainant considers that the Respondents are using the disputed domain names in bad faith, given that:

- before the Complaint, the disputed domain names <manulifetrustcompany.com> and

<manulifetrust-cdic.com> redirected Internet users to websites that copied and attempted to duplicate the Complainant’s official website;

- the Respondents was using the disputed domain names to fraudulently pose as the Complainant for purposes of launching phishing attack; and

- the disputed domain names currently resolve to inactive websites.

B. Respondent

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

6. Discussion and Findings

A. General remarks

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the complainant shall prove the following three elements:

(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.

B. Consolidation of the Complaint

According to the Rules, paragraph 10(e), the Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. According to prior UDRP panel decisions, criteria for consolidation scenario include: (i) the registrants’ contact information, (ii) relevant IP addresses, name servers, or webhost(s), (iii) the content or layout of websites corresponding to the disputed domain names, (iv) the nature of the marks at issue (e.g., where a registrant targets a specific sector) (see section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the disputed domain names, the Panel finds that:

- each of the disputed domain names incorporates the Complainant’s Trademarks in their entirety;
- <manulifetrust-account.com> and <manulifetrust-cdic.com> were both registered on October 9, 2021, and indicate the same contact information e-mail;
- the Complainant has provided evidence that <manulifetrust-cdic.com> and <manulifetrustcompany.com> have the same domain name server and that before the notification of the Complaint, these two disputed domain names resolve to similar websites that both reproduce the Complainant’s Trademarks and website content.

In view of these circumstances, the Panel finds that the Complainant has established prima facie that the disputed domain names are subject to common control and that the Respondents had the opportunity but did not respond to the Complaint.

The Panel therefore decides to accept the consolidation and to refer collectively to the Respondents as the Respondent hereafter.

C. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the MANULIFE, MANULIFE TRUST and MANULIFE TRUST COMPANY trademarks.

Then, the Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s Trademarks and the disputed domain names.

This test 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 domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the disputed domain names, the Panel finds that:

- <manulifetrustcompany.com> consist solely of the Complainant’s MANULIFE TRUST COMPANY trademark and the generic Top-Level Domain (“gTLD”) “.com”, which is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark,

- <manulifetrust-cdic.com> consists of the Complainant’s MANULIFE TRUST trademark in its entirety and (i) by a hyphen “-” followed by the term “cdic” which is the abbreviation for Canada Deposit Insurance Corporation of which the Complainant is a member, and which is related to the Complainant’s business, (ii) the gTLD “.com”,

- <manulifetrust-account.com> consists of the Complainant’s MANULIFE TRUST trademark in its entirety and (i) by a hyphen “-” followed by the term “account”, and (ii) the gTLD “.com”.

Therefore, the Panel holds that the disputed domain name <manulifetrustcompany.com> is identical to Complainant’s trademark MANULIFE TRUST COMPANY, and the disputed domain names <manulifetrust-cdic.com> and <manulifetrust-account.com> are confusingly similar to the Complainant’s Trademark MANULIFE TRUST and that the Complainant has established the first element of paragraph 4(a) of the Policy.

D. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain names.

These circumstances are:

- before any notice of the dispute, the respondent’s 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

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

- the respondent is making a legitimate noncommercial 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.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines did. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that 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. As such, where a complainant makes out prima facie 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 the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain names, since the Respondent has never been sponsored by or affiliated with the Complainant in any way, nor has been given by the Complainant permission to use the Complainant’s Trademarks in any manner including in domain names.

Moreover, the Panel finds that the Complainant has provided evidence that:

- the Respondent is not commonly known by the disputed domain names;

- before notice of the dispute, two of the disputed domain names (<manulifetrustcompany.com> and <manulifetrust-cdic.com>) redirected Internet users to websites that copied and attempted to duplicate the Complainant’s official website; and

- actually, none of the disputed domain names are used in the context of a bona fide offer of goods or services since they lead to white pages.

Furthermore, the Panel notes that the Respondent did reply to the Complainant’s contentions.

Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain names.

E. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain names have been registered and are being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

First of all, the Panel finds that it is established that the Complainant’s Trademarks were registered before the registration of the disputed domain names so that there is a presumption of bad faith registration of the disputed domain names.

Then, the Panel considers that the Respondent knew or should have known the Complainant’s prior trademarks at the time of the registration of the disputed domain names, given that:

- the disputed domain names incorporate the prior Complainant’s Trademarks in their entirety; and

- the Complainant has provided evidence that Internet search engines for “manulife trust company” or “manulife trust cdic” returns multiple links referencing the Complainant and its business.

Moreover, the Panel considers that the Complainant has provided evidence that, before any notice of the dispute, two of the disputed domain names redirected Internet users to websites that copied and attempted to duplicate the Complainant’s official website, so that there is no doubt that the Respondent knew the Complainant’s prior trademarks and that it registered the disputed domain names in bad faith.

Furthermore, the first use of <manulifetrustcompany.com> and <manulifetrust-cdic.com> demonstrates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Trademarks.

Finally, at the time of the Panel’s decision, all the disputed domain names resolve to inactive websites, under status “service unavailable”. This “passive holding” of the disputed domain names by the Respondent can be also considered as a use in bad faith, considering the circumstances hereafter (See section 3.3 of the WIPO Overview 3.0):

- the Complainant’s has provided evidence that the Complainant’s Trademarks are widely known;

- the Respondent did not reply to the Complainant’s contentions to provide evidence of any actual or contemplated good faith use by it of the disputed domain names;

- the implausibility of any good faith uses to which the domain names may be put.

In view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

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, <manulifetrust-account.com>, <manulifetrust-cdic.com> and <manulifetrustcompany.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: February 11, 2022