WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Manufacturers Life Insurance Company v. WhoisGuard, Inc. / hww toolz, director

Case No. DCO2021-0009

1. The Parties

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

The Respondent is WhoisGuard, Inc., Panama / hww toolz, Australia.

2. The Domain Name and Registrar

The disputed domain name <manulifesecurities.co> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2021. On January 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2021, 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 February 26, 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 March 2, 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 March 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2021.

The Center appointed Michael D. Cover as the sole panelist in this matter on April 26, 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 was established in 1887 and is a leading Canada-based financial services company, with its principal operations in Canada, Asia and the United States of America (the “USA”). The Complainant is listed on the Toronto Stock Exchange and other stock exchanges around the world. The Complainant has over 35,000 employees throughout the world and, in 2019, reported core earnings of CAD 6 billion and, as of September 2020, had CAD 1.3 trillion of assets under management. The Complainant is a leading provider of insurance and wealth and asset management products in the Americas and also in Asia.

The Complainant is the proprietor of the registered trademark MANULIFE under Registration No. TMA385240 in Canada filed on March 8, 1990 and registered on May 31, 1991 and registered trademarks for MANULIFE in Australia, China, the USA, and the European Union. Details of these registered trademarks are set out in Annex 1 to the Complaint.

The Complainant uses a number of domain names in the conduct of its business, and details of the primary domain names are set out in Annex 4 to the Complaint and screenshots of the main websites of the Complainant are set out in Annex 5 to the Complaint. The domain names include <manulife.com>, <manulife.ca>, and <manulifesecurities.ca>, and the earliest of these was registered on February 14, 1994.

The Disputed Domain Name was registered on December 16, 2020. Set out at Annex 3 to the Complaint are screenshots of the website to which the Disputed Domain Name resolved. This website purported to offer financial services of various kinds. The Disputed Domain Name has been used in connection with emails seeking to communicate with business associates of the Complainant about a wire transfer of CAD 250,000, as set out in Annex 10 to the Complaint.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar in which the Complainant has rights

The Complainant submits that its MANULIFE trademark is well-recognised by consumers, industry peers, and the broader global community, and that the Complainant has established considerable fame and goodwill in the MANULIFE trademark. Based on this and the Complainant’s extensive and continuous use of the MANULIFE trademark and the fact that the Complainant has made significant investments over the years to advertise, promote, and protect that trademark, the Complainant submits that it enjoys a substantial degree of public recognition in the MANULIFE trademark.

The Complainant states that, by virtue of its trademark registrations for its MANULIFE trademark, it is the owner of MANULIFE trademarks and cites in support section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as to the effect that “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The Complainant also notes that, according to the WIPO Overview 3.0 at section 1.11.1, the applicable Top‑Level Domain (“TLD”), e.g “.com” is to be viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test.

The Complainant notes that the Respondent has added the descriptive term “securities” to the Complainant’s MANULIFE trademark to make up the Disputed Domain Name and that this term is closely linked to and associated with the Complainant’s brand and trademark, which only serves to increase the confusing similarity between the Complainant’s trademark and the Disputed Domain Name. The Complainant also notes that the Disputed Domain Name is an exact match for the Complainant’s existing domain name <manulifesecurities.ca>.

The Complainant concludes under this heading by stating that past UDRP panels have consistently held that that a disputed domain name that consists merely of a complainant’s trademark and an additional term that is closely related to and describes the complainant’s business is confusingly similar to that complainant’s trademarks and that. Based on the foregoing, the Disputed Domain Name is clearly confusingly similar to the Complainant’s MANULIFE trademark.

Rights or Legitimate Interests

The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant in any way, nor has the Complainant given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names.

The Complainant submits that the Respondent is not commonly known by the Disputed Domain Name, which, says the Complainant, evinces a lack of rights or legitimate interests. The Complainant continues that the WhoIs information identifies the Respondent as “hww toolz”, which does not resemble the Disputed Domain Name in any manner. Furthermore, at the time of filing the Complaint, the Respondent was using a privacy WhoIs service, which past UDRP panels have found equates to a lack of legitimate interests, says the Complainant. The Complainant cites Jackson National Life Insurance Company v. Private WhoIs wwwjacksonnationallife.com N4892, WIPO Case No. D2011-1855 in support of this submission.

The Complainant continues that the Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of goods or services pursuant to the Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to the Policy 4(c)(iii). Here, states the Complainant, the Respondent is using a confusingly similar domain name to create the impression that the Respondent’s website is authorized and administered by the Complainant, for the sole purpose of sending emails, which appear to have come from an employee of the Complainant, relating to a wire transfer of CAD 250,000. The Complainant submits that the Respondent is passing itself off as the Complainant, in an attempt to “phish” personal information from business associates of the Complainant and concludes that the use of an email address associated with a disputed domain name in pursuit of a phishing scheme does not establish rights under the Policy 4(c)(i) or (iii). The Complainant draws the attention of the Panel to Annex 10 to the Complaint in this connection.

In addition, the Complainant notes that the Respondent is using the Disputed Domain Name to redirect users to a website featuring links to third party websites, some of which compete with the Complainant. The Complainant submits that prior UDRP decisions have consistently held that respondents that monetize domain names using pay‑per‑click links have not made a bona fide offering of goods or services nor a legitimate noncommercial or fair use as allowed under the Policy.

Finally, under this heading, the Complainant notes that the Respondent registered the Disputed Domain Name on December 16, 2020, which was significantly after the filing and registration of the Complainant’s MANULIFE trademark and significantly after the Complainant’s first use in commerce of that trademark in 1990, and also significantly after the Complainant’s registration of its domain name <manulifesecurities.ca> on July 11, 2001.

For the reasons set out above, the Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Registered and Used in Bad Faith

The Complainant notes that it and its MANULIFE trademarks are known internationally, with trademark registrations across numerous countries and that it has marketed and sold its goods and services under this trademark since 1990. The Complainant continues that the Respondent has created the Disputed Domain Name which is confusingly similar to the Complainant’s MANULIFE trademark and also its domain name <manulifesecurities.ca>. The Complainant submits that, at the time of registration of the Disputed Domain Name, the Respondent knew or at least should have known of the existence of the Complainant’s trademarks and submits that the registration of domain names containing well-known trademarks constitutes bad faith per se.

The Complainant also submits that that the composition of the Disputed Domain Name makes it illogical to believe that the Respondent registered the Disputed Domain Name without specifically targeting the Complainant. The Complainant repeats its submissions about the “phishing” exercise and also the evidence that the Respondent has created a likelihood of confusion with the Complainant and its trademarks.

The Complainant then submits that the Respondent has provided false WhoIs details, when registering the Disputed Domain Name and concludes that the Respondent should be found to have registered and used the Disputed Domain Name in bad faith.

Remedy Requested by the Complainant

The Complainant requests that the Panel decide that the Dispute Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has established rights in its trademark MANULIFE. The Complainant has registered rights, through trademark registrations in various jurisdictions, the earliest of which was registered in 1991. That is sufficient for the purposes of the Policy, not least as the registered rights in question go back many years before the registration of the Disputed Domain Name.

The Panel also accepts that the Disputed Domain Name is confusingly similar to the Complainant’s MANULIFE trademark, in which it has established rights. The Disputed Domain Name incorporates the Complainant’s MANULIFE trademark in its entirety and, in assessing confusing similarity, it is well established that the incorporation of a descriptive term such as “securities” does not avoid a finding of confusing similarity. Finally, under this heading, it is well established that the incorporation of a TLD, here the country code TLD “.co”, does not avoid a finding of confusing similarity.

The Panel therefore decides that the Disputed Domain Name is confusingly similar to the Complainant’s trademark MANULIFE, in which the Complainant has rights, and the provisions of the Policy, paragraph 4(a)(i) have been met.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel accepts the prima facie submission of the Complainant, which, has not been challenged by the Respondent, that the Respondent has not been licensed by the Complainant to use its MANULIFE trademark and that the Respondent has not been commonly known by the Disputed Domain Name. The use of the Disputed Domain Name has taken two forms, one of which is a “phishing” scheme, which cannot constitute a bona fide offering of goods or services or legitimate or noncommercial fair use. The other form of use has been in relation to a website which has links to third parties’ websites, some of which offer services similar or identical to those provided by the Complainant, and the same considerations apply to these. These two uses show that the Respondent has targeted the trademark and business of the Complainant.

The Panel accordingly finds that the provisions of the Policy, paragraph 4(a)(ii) have been met.

C. Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith.

The Panel infers from the material before it that the Respondent was aware or should have been aware of the Complainant’s trademark, which was both used and registered significantly before the registration of the Disputed Domain Name in December 2020. The Complainant has not licensed or authorized the Respondent to use its MANULIFE trademark. Furthermore, the Panel notes that one of the main domain names of the Complainant, <maulifesecurities.ca>, is effectively identical to the Disputed Domain Name and that the Complainant has built up considerable goodwill in the business associated with its MANULIFE trademark, which affirms a finding that the Disputed Domain Name was registered in bad faith.

The Panel notes that the Disputed Domain Name resolved to a website which features links to competitors of the Complainant and accepts that this is evidence of use of the Disputed Domain Name in bad faith. The fraudulent phishing emails are further evidence of bad faith use, as they can only have been sent primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s MANULIFE trademark.

The Panel therefore decides that the provisions of the Policy, paragraph 4(a)(iii) have been met and the Disputed Domain Name has been registered and is being 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 Name <manulifesecurities.co> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: May 3, 2021