WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Manufacturers Life Insurance Company v. Jan Fishman, Fishman Lawyers

Case No. D2016-0511

1. The Parties

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

The Respondent is Jan Fishman, Fishman Lawyers of Vancouver, Canada.

2. The Domain Names and Registrar

The disputed domain names <manulifedenial.com>, <manulifedenial.net> and <manulifedenial.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2016. On March 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 17, 2016, 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. On March 22, 2016, the Complainant submitted an amended Complaint fixing a discrepancy concerning the Complainant’s name.

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 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2016. The Response was filed with the Center on March 30, 2016.

On April 5, 2016, the Complainant submitted a supplemental filing.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on April 8, 2016. 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.

On April 19, 2016, the Complainant submitted a request to add an additional domain name in the decision for the present case.

4. Procedural Questions

A. Admissibility of an unsolicited supplemental filing from the Complainant

On April 5, 2016, the Complainant submitted a supplemental filing to address some points of the Response.

The UDRP Rules grant the Panel sole discretion to request further statements and determine the admissibility of evidence which may include an unsolicited filing.

It is the consensus view of UDRP panels that panels have discretion whether to accept an unsolicited supplemental filing from either party or not, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances (See paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

As highlighted by a prior UDRP panel, “the danger is that admitting a further document submitted by one party may lead the other party to submit a further document in reply, which may lead to further submission by the first party, and so on” (See Société des Hôtels Méridien v. ABC-Consulting, WIPO Case No. D2004-0792).

The Complainant’ submission dated April 5, 2016 only consists of a response to some of the Respondent’s arguments. It is the Panel’s opinion that the Complainant’s submission dated April 5, 2016, does not constitute exceptional circumstances that would justify its admission into evidence.

For these reasons, the Panel rejects the supplemental filing from the Complainant.

B. Admissibility of the addition of a further domain name

On April 19, 2016, the Complainant submitted a request to add an additional domain name for the present case after the commencement of the administrative proceeding.

The UDRP Rules do not explicitly address the way in which the Panel should consider such request. However, it appears that previous UDRP panels have been reluctant in granting such request for the addition of domain names to a complaint where it was received after their appointment (See paragraph 4.8 of the WIPO Overview 2.0). Acceptance of such a request would require the renotification of the Complaint to allow a proper response opportunity in relation to the added domain names.

In the present case, considering the lateness of the Complainant’s request (3 days before due date of the Panel’s decision) and the objective of an effective and quick proceeding under the UDRP, the Panel considers that the addition of a new domain name should be rejected.

This might appear harsh to a complainant who, as in the present case, is not guilty of any omission (the further domain name was registered after the submission of the Complaint), but it is in the interest of the quick and simplified UDRP system. It is, of course, open to the Complainant to bring a separate Complaint in respect of the additional domain name if it so desires.

5. Factual Background

The Complainant is a Canada-based financial services company with principal operations in Canada, Asia and the United States of America (“United States”).

The Complainant is the owner of numerous MANULIFE and MANULIFE FINANCIAL trademarks throughout the world:

- With the Canadian Intellectual Property Office (“CIPO”), trademark No. TMA385240 MANULIFE registered on May 31, 1991 and duly renewed;

- With CIPO, trademark No. TMA385241 MANULIFE FINANCIAL registered on May 31, 1991 and duly renewed;

- With CIPO, trademark No. TMA643885 MANULIFE FINANCIAL and design registered on July 8, 2005;

- With the United States Patent and Trademark Office (“USPTO”), trademark No. 1790892 MANULIFE FINANCIAL on August 31, 1993 in class 36 and duly renewed;

- With the United Kingdom Intellectual Property Office (“UKIPO”), trademark No. 1301399 MANULIFE on December 8, 1989 in class 36 and duly renewed;

- With the Office for Harmonization in the Internal Market (“OHIM”), trademark No. 000540989 MANULIFE on July 9, 1999 in classes 16, 36 and 41 and duly renewed.

The Complainant also holds two domain names: <manulife.com>, which has been registered on February 14, 1994 and <manulife.ca>, which has been registered on October 13, 2000.

The Respondent was an in-house counsel of the Complainant from 2002 until 2012. The Respondent is currently a lawyer who is actively involved in representing insured persons notably with claims against the Complainant.

The disputed domain names <manulifedenial.com>, <manulifedenial.net> and <manulifedenial.org> were registered by the Respondent on December 8, 2015 with GoDaddy.com, LLC by the Respondent and are used to direct Internet users to the website of the Respondent’s law firm.

6. Parties’ Contentions

A. Complainant

The Complainant contends that the three disputed domain names are confusingly similar to the trademark MANULIFE in which the Complainant has rights.

The Complainant considers that when registering the three disputed domain names, the Respondent has only added the generic and descriptive term “denial” to the Complainant’s MANULIFE trademark, making them confusingly similar to the Complainant’s trademark.

Furthermore, the Complainant highlights that such a term is closely linked and associated with the Complainant’s brand and trademark, the idea of insurance denial being common in the Complainant’s business and industry.

The Complainant adds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Indeed, the Complainant asserts that the Respondent is not sponsored by or affiliated with the Complainant in any way, and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names.

The Complainant also highlights that there is no evidence suggesting that the Respondent is commonly known by the disputed domain names, the Respondent being identified as “Jan Fishman, Fishman Lawyers”, which does not resemble the disputed domain names.

Moreover, the Complainant considers that the Respondent has intentionally registered the disputed domain names based on a trademark that is famous in Canada and known internationally, and is using the disputed domain names to bring Internet users to its own website “www.fishmanlawyers.ca”.

The Complainant adds that the Respondent has sent a letter to the Complainant offering to sell the disputed domain names for CAD 250,000 plus taxes or threatened to re-tool his business to focus on cases against the Complainant.

Lastly, the Complainant considers that the Respondent registered and uses the disputed domain names in bad faith.

The Complainant contends that its MANULIFE trademarks are known internationally and that the Complainant has marketed and sold its goods and services using this trademark since 1990, which is well before the Respondent’s registration of the disputed domain names on December 8, 2015.

Moreover, the Complainant highlights that Respondent served as in-house counsel for the Complainant from 2002 to 2012 and that the Respondent stated that it acquired the disputed domain names for the purpose of re-tooling its business model to “focus directly on actions involving Manulife Financial”.

The Complainant adds that by creating a likelihood of confusion with the Complainant and its trademarks, the Respondent is attempting to profit from such confusion by using the disputed domain names to redirect Internet users to the Respondent’s own website “www.fishmanlawyers.ca” which promotes the Respondent’s legal practice.

The Complainant also notes the number of infringing domain names registered by the Respondent and the Respondent’s admitted intent to profit from the use of the domain names.

The Complainant adds that the fact the Respondent is currently offering to sell the disputed domain names constitutes bad faith.

The Complainant therefore requests the Panel to transfer the three disputed domain names to the Complainant.

B. Respondent

As to whether the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Respondent relies on a case which came before the British Columbia Court of Appeal in 2014, relating to a former lawyer for an insurance corporation who had opened his own practice in which he marketed his services to plaintiffs with actions involving claims against that corporation, and thus had registered a domain name including the name of the corporation followed by the generic term “advice”.

The Respondent recalls that British Columbia courts had found that the domain name was a commercial website used as marketing tool “of a lawyer who acts for persons involved in claims against [the insurance corporation]” and that it was neither identical nor confusingly similar to the corporation’s trademark and domain names, and thus dismissed the corporation’s action.

The Respondent considers that the three disputed domain names are no more likely to be confused with <manulife.com> or <manulife.ca> than in the case above.

Moreover, as to whether the Respondent has rights or legitimate interests in respect of the disputed domain names, the Respondent alleges that it has a legitimate interest, since the Respondent is a lawyer who is actively involved in representing insured persons with claims against the Complainant.

The Respondent recalls that the Supreme Court of British Columbia confirmed that the Respondent has a legitimate interest in acting for individuals with lawsuits against the Complainant in a former case.

The Respondent also considers that the Complainant is not acting in good faith and that its aim is to interfere with the Respondent’s practice.

Lastly, as to whether the disputed domain names have been registered and are being used in bad faith, the Respondent states that its offer to transfer the disputed domain names to the Complainant was temporary and reflected a true and considered estimate of their value to the Respondent.

The Respondent alleges that the disputed domain names were not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and that it has not engaged in a pattern of such conduct.

The Respondent adds that the disputed domain names were not either registered to disrupt the Complainant’s business, recalling that the Complainant and the Respondent are not competitors.

Finally, the Respondent asserts that the disputed domain names were not registered by the Respondent in an intentional 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.

The Respondent therefore does not consent to the remedy requested by the Complainant.

7. Discussion and Findings

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;

(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 Panel finds that the Complainant has provided evidence that it has rights in the MANULIFE and MANULIFE FINANCIAL marks and two domain names incorporating “manulife” (<manulife.com> and <manulife.ca>).

In this case, the three disputed domain names <manulifedenial.com>, <manulifedenial.net> and <manulifedenial.org> are each composed of the distinctive element “manulife”, which is the exact reproduction of the MANULIFE marks and the generic term “denial” and the generic Top-Level Domains(“gTLD”) “.com”, “.net” and “.org”.

First of all, the gTLDs are not taken into account for the purpose of determining whether it is identical or confusingly similar to a mark.

Furthermore, the Panel concurs with the opinion of several prior UDRP panel decisions which have held that the fact that a domain name wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Hoffmann-La Roche Inc., Roche Products Limited v.Vladimir Ulyanov, WIPO Case No. D2011-1474; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059).

The Respondent considers that the disputed domain names are not likely to be confused with the Complainant’s trademark, relying on a judgment from the Court of appeal for British Columbia. This judgement concerns violations of the Canadian Trade-marks Act. However, the Panel shall decide a complaint in accordance with the UDRP and the UDRP Rules and the threshold test for confusing similarity under the UDRP is not necessarily the same as the one held by local courts.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. Thus, it is the consensus view of UDRP panels that the inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP’s first element threshold requirement (See paragraph 1.3 of the WIPO Overview 2.0).

Regarding the disputed domain names <manulifedenial.com>, <manulifedenial.net> and <manulifedenial.org>, the Panel finds that the addition of the generic suffix “denial” to the trademark MANULIFE is not sufficient to exclude confusing similarity.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the three disputed domain names must be considered confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Policy’s paragraph 4(c) outlines circumstances that if found by the panel to be proved shall demonstrate the respondent’s rights or legitimate interests to the disputed domain name. These circumstances are:

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

According to the Panel, the Complainant has made a prima facie showing that the Respondent is not sponsored by or affiliated with Complainant in any way, and that the Complainant has not given it permission to use its trademarks in any manner, including in domain names, and that the Respondent is not commonly known by the disputed domain names.

The Respondent replied that it had a legitimate interest since it was actively involved in representing insured persons with claims against the Complainant as a lawyer. The Respondent relies on a judgement of the Supreme Court of British Columbia and contends that “the Supreme Court of British Columbia confirmed that the Respondent has a legitimate interest in acting for individuals with lawsuits against the Complainant”. However, under the UDRP Rules, the second criterion does not aim to establish that the Respondent has a legitimate interest in its professional activity, but to determine if the Respondent has rights or legitimate interests “in respect of the disputed domain name”. Furthermore, the argument of the Respondent concerning a “the Complaint being part of a continuing campaign by the Complainant to interfere with the Respondent’s practice” are irrelevant to determine whether the Respondent has rights or legitimate interests in respect of the disputes domain names.

Thus, the Panel finds that the Respondent has not provided evidence that it has right or legitimate interest in respect of the disputed domain names.

Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy outlines non-exclusive circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith.

First of all, concerning the bad faith registration of the disputed domain names, it is established that the Respondent was an in-house counsel of the Complainant until 2012 and thus could not have been unaware of the Complainant’s trademarks at the time the disputed domain names were registered in 2015, all the more so as the Complainant’s trademarks were registered significantly before the Respondent filed for registration of the three disputed domain names.

Moreover, as said before, it is also established that the Respondent stated that it acquired the disputed domain names for the purpose of re-tooling its business model “to focus directly on actions involving Manulife Financial”.

Consequently, the Panel concludes that evidence is provided that the Respondent registered the disputed domain names in bad faith.

The Respondent is using the disputed domain names to forward Internet users to its website, where it offers legal services against insurance denials. In doing so, the Respondent is not only attempting to attract Internet users to its website for its own commercial gain but also causing harm to the Complainant’s business.

Secondly, regarding the bad faith use of the disputed domain names, evidence is provided that in 2016, the Respondent offered to sell the Complainant the disputed domain names for CAD 250,000, which excesses of out-of-pocket costs directly related to the disputed domain names. The Respondent indicates in its letter to the Complainant that “I have acquired the exclusive rights to the 4 website domains listed above. My conservative estimate is that this collection of domains will generate 10 meritorious files in the first year increasing by at least 2 files each year. (…) I estimate the business these domains will generate over the next 5 years to be at least CAD 1.750,000. These domains are currently “parked”. Prior activating them I am prepared to transfer to Manulife Finacial all rights to these domains, in perpetuity, for CAD 250,000, plus applicable taxes.” Even if this proposal was temporary, it does not prevent the Panel to consider it as an evidence of the Respondent use of the disputed domain names in bad faith.

Therefore, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith.

8. 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, <manulifedenial.com>, <manulifedenial.net> and <manulifedenial.org> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: April 25, 2016