Complainant is Milliman, Inc. of Seattle, Washington, United States of America (“United States”), represented by Adams and Reese LLP, United States.
Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States / Domain Admin, This Domain is For Sale, Home of Domains of Phoenix, Arizona, United States.
The disputed domain name <millimanmind.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2018. On April 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2018, 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 Complainant on May 2, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 3, 2018.
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 Respondent of the Complaint, and the proceedings commenced on May 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 28, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on June 1, 2018. 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.
Complainant is one of the world’s largest independent actuarial and consulting firms operating in the areas of employee benefits, investment, property and casualty, healthcare and life and financial services. Complainant operates in various markets throughout the world, and has 62 offices located in Africa, Asia, Europe, Latin America, North America, and the Middle East. Complainant owns valid and subsisting registrations for MILLIMAN and related marks in numerous jurisdictions around the world. Complainant first used the MILLIMAN & ROBERTSON mark in 1957 and the MILLIMAN mark in 2001. Complainant recently launched a new web-based modelling platform for use by actuaries and insurance analysts under the mark MILLIMAN MIND. Complainant first applied for the MILLIMAN MIND mark on September 20, 2017 and it was registered on January 18, 2018 (European Union Trade Mark Reg. No. 017234584). Complainant advertises its goods and services through various websites, including its principal website at “www.milliman.com” and its website advertising the MILLIMAN MIND platform at “www.milliman-mind.com”.
Respondent registered the disputed domain name on September 20, 2017. At the time of filing of the Complaint, the disputed domain name was parked and offered for sale for USD 950. Currently, the disputed domain name resolves to a page parked by the Registrar.
Complainant asserts that the disputed domain name incorporates Complainant’s MILLIMAN MIND trademark in its entirety. Complainant asserts that the first and most prominent element of the disputed domain name is Complainant’s MILLIMAN mark in its entirety.
Complainant asserts that neither “Milliman” nor “Milliman Mind” is Respondent’s name, and Respondent is not, and has never been commonly known as “Milliman” or “Milliman Mind”. Complainant asserts that Respondent is not, and has never been a licensee or franchisee of Complainant. Complainant further asserts that Respondent has never been authorized by Complainant to register or use Complainant’s MILLIMAN or MILLIMAN MIND trademarks or to apply for or use any domain name incorporating these marks.
Complainant asserts that the disputed domain name merely resolves to a website displaying the statement “millimanmind.com is for sale! Buy now for $950”. Complainant also asserts that no rights or legitimate interests derive from Respondent’s use of Complainant’s trademarks in connection with an inactive website that serves only as a sale offer for the disputed domain name.
Complainant asserts that the MILLIMAN mark was well known at the time of registration, due to Complainant’s extensive use of the mark, and thus no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by Respondent.
Complainant asserts that it is not plausible that Respondent could have been unaware of Complainant at the time of registration due to the global trademark registrations for the MILLIMAN mark, Complainant’s ownership of domain names incorporating the MILLIMAN mark, including <milliman.com> and <milliman-mind.com>, Complainant’s international reputation, and the fact that MILLIMAN is a well-known mark universally associated with Complainant. Complainant asserts that bad faith is evident where the creation date of the disputed domain name matches the filing date of Complainant’s European Union Trade Mark application for MILLIMAN MIND (Reg. No. 017234584). Complainant also asserts that bad faith is evident where the disputed domain name wholly incorporates Complainant’s newly filed mark and the domain name resolves to a website displaying the statement “millimanmind.com is for sale! Buy now for $950”. Complainant asserts that this amount far exceeds Respondent’s out-of-pocket costs directly related to the disputed domain name.
Finally, Complainant asserts that Respondent never replied to the cease and desist letters its counsel sent on April 10 and 17, 2018 to the contact details provided in the WhoIs record and through the contact form it provided.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the MILLIMAN and MILLIMAN MIND marks, which have been registered in the United States, the European Union, and elsewhere.
With Complainant’s rights in the MILLIMAN and MILLIMAN MIND marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g.,
B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,
WIPO Case No. D2010-0842.
Here, the disputed domain name is identical to Complainant’s MILLIMAN MIND mark as it incorporates the MILLIMAN MIND mark in its entirety. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the MILLIMAN and MILLIMAN MIND marks and in showing that the disputed domain name is identical or confusingly similar to these marks.
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its MILLIMAN mark, and in particular its MILLIMAN MIND mark, and that Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant, nor has it any authorization to use Complainant’s marks. Respondent has not made any legitimate bona fide use of the disputed domain name in connection with any product or service. Rather, Respondent has used the disputed domain name to redirect Internet users to a website that offers the disputed domain name for sale. Such an offer to sell the disputed domain name, identically incorporating the Complainant’s MILLIMAN MIND mark, is not a bona fide use of the disputed domain name. Furthermore, it is evident that Respondent is not known by the disputed domain name.
Given that Complainant has established with sufficient evidence its prima facie case, and given Respondent’s failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Here, Respondent registered the disputed domain name on September 20, 2017, which is the same date as the filing date of Complainant’s European Union Trademark application for MILLIMAN MIND (Reg. No. 017234584). It is clear from the record, especially in the absence of any response from Respondent, that the disputed domain name was not registered by mere coincidence and that Respondent was aware of Complainant’s rights and new trademark application when it registered the disputed domain name. See Güde GmbH & Co. KG v. Shanshan Huang, WIPO Case No. D2017-0562 (“[I]t would be too much of a coincidence that the Respondent decided to register the disputed domain name on the same day the application for registration of the aforementioned Complainant’s WOLPERTECH trademark no. 014786875 became visible online in the EUIPO database”); Covestro Deutschland AG v. Cenk Erdogan, This domain name is for sale, WIPO Case No. D2016-1886 (“[I]t is unlikely that the registration of the disputed domain name on the same day as the trademark application is a coincidence”).
Furthermore, Respondent registered the disputed domain name, which wholly incorporates Complainant’s newly filed MILLIMAN MIND mark, and pointed it toward a website with an offer to sell the disputed domain name for USD 950, well in excess of Respondent’s out of pocket registration costs. Thus, the Panel finds that Respondent registered or acquired the disputed domain name primarily for the purpose of selling the domain name registration for valuable consideration in excess of documented out-of-pocket costs evidencing bad faith as contemplated by paragraph 4(b)(i) of the Policy. See Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No. D2000-1551.
Finally, Respondent failed to reply to cease and desist correspondence sent by Complainant’s counsel, or to respond to the Complaint in this proceeding. In light of the other facts in this matter, Respondent’s failure to reply or respond to the cease and desist letters further supports an inference of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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, <millimanmind.com>, be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: June 19, 2018