The Complainant is Milliman, Inc., United States of America (“United States”), represented by Adams and Reese LLP, United States.
The Respondent is Zhichao Yang (杨智超), China.
The disputed domain names <commillimanbenefits.com>, <millimaanbenefits.com>, <millimabbenefits.com>, <millimanbbenefits.com>, <millimanbeefits.com>, <millimanbeenefits.com>, <millimanbeenfits.com>, <millimanbemefits.com>, <millimanbenedits.com>, <millimanbeneefits.com>, <millimanbeneffits.com>, <millimanbenefiits.com>, <millimanbenefist.com>, <millimanbenefites.com>, <milliman-benefits.com>, <millimanbenefitss.com>, <millimanbenefitts.com>, <millimanbenefiys.com>, <millimanbeneflts.com>, <millimanbeneftis.com>, <millimanbenegits.com>, <millimanbenenfits.com>, <millimanbenfeits.com>, <millimanbenrfits.com>, <millimanbenwfits.com>, <millimanbrnefits.com>, <millimanbwnefits.com>, <millimanebenefits.com>, <millimanenefits.com>, <millimannenefits.com>, and <millimanvenefits.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2020. On July 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2020, 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 July 15, 2020 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 July 15, 2020.
On July 15, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On July 15, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment.
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 in English and Chinese of the Complaint, and the proceedings commenced on July 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2020.
The Center appointed Sok Ling MOI as the sole panelist in this matter on August 21, 2020. 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.
The Complainant, based in Seattle, Washington, United States, 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 like and financial services, and insurance services. The Complainant operates 66 offices across North and Latin America, Europe, Asia, Africa, and the Middle East.
The Complainant advertises its goods and services through various websites, including <milliman.com> and <millimanbenefits.com>, as well as through print media and other advertising and promotional campaign. The Complainant has been using the trade mark MILLIMAN since 2001.
The Complainant owns numerous trade mark registrations for MILLIMAN in various jurisdictions, including the following:
|
Jurisdiction |
Mark |
Registration No. |
Registration Date |
|
United States |
MILLIMAN |
75714848 |
March 19, 2002 |
|
United States |
MILLIMAN |
75714666 |
January 29, 2002 |
|
China |
MILLIMAN |
3838950 |
May 14, 2006 |
|
China |
MILLIMAN |
5853860 |
March 28, 2010 |
The disputed domain names were registered on June 18, 2020. Each of the 31 disputed domain names resolves to a website displaying a collection of click-through links which divert Internet users to third party websites.
The Complainant claims that as a result of its long-standing use, extensive promotion, advertising and publicity, the MILLIMAN trade mark is well known throughout the world.
The Complainant contends that the disputed domain names are confusingly similar to its MILLIMAN trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith.
The Complainant requests for the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
Although the Respondent appears to be a native Chinese individual, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names are all registered in Latin characters, rather than Chinese script;
(b) the disputed domain names each comprises the English word “benefits” or a misspelling thereof; and
(c) according to the evidence submitted by the Complainant, the disputed domain names all direct to commercial parking pages showing pay-per-click links in English.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present his case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in MILLIMAN by virtue of its use and registration of the same as a trade mark.
Each of the disputed domain names incorporates the Complainant’s trade mark MILLIMAN in its entirety (or a typo-variant therefore), together with the word “benefits” (or a top-variant thereof). Each of the disputed domain names is thus an intentional typographical variant of the Complainant’s domain name registration <millimanbenefits.com>, differing by only a single letter (for 25 of the disputed domain names), by two letters (in the case of <millimanbeenfits.com>, <millimanbenefist.com>, <millimanbeneftis.com> and <millimanbenfeits.com>), by three letters (in the case of <commillimanbenefits.com>, or by the addition of a hyphen (in the case of <milliman-benefits.com>.
The addition of a dictionary/descriptive word “benefits” (or a typo-variant thereof) does not prevent the a finding of confusing similarity as the trade mark MILLIMAN remains the dominant element of the disputed domain names and is sufficiently recognizable in the disputed domain names.
The addition of the generic Top-Level Domain (“gTLD”) “.com” does not in this case impact the above analysis.
Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the MILLIMAN trade mark or to seek registration of any domain name incorporating the trade mark. The Respondent appears to be an individual by the name of “Zhichao Yang”. There is no evidence suggesting that the Respondent is commonly known by the disputed domain names or has acquired any trade mark rights in the term “milliman”.
According to the evidence submitted by the Complainant, each of the disputed domain names resolves to a parking webpage featuring a collection of click-through links, which redirect to third party websites, some of which are associated with the Complainant. Presumably, the Respondent receives pay-per-click fees from the linked websites. The consensus view of previous UDRP panels is that use of a domain name to post pay-per-click links may be permissible in some circumstances, but would not of itself automatically confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. In this case, the Panel finds such use of the disputed domain names does not confer any rights or legitimate interests on the Respondent.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to come forward with evidence of his rights or legitimate interests in the disputed domain names. Since the Respondent did not file a response, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted 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.
By virtue of its extensive use and advertising since 2001, the Complainant and its trade mark MILLIMAN enjoy a significant reputation worldwide and a strong online presence. Considering the composition of the disputed domain names (namely by the inclusion of the word “benefits” or typo-variants thereof), there is no doubt that the Respondent was aware of the Complainant and its trade mark when he registered the disputed domain names. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the MILLIMAN trade mark and its extensive use by the Complainant. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.
According to the evidence submitted by the Complainant, each of the 31 disputed domain name resolves to a website which appears to be a parking page featuring a collection of click-through links, which divert Internet users to third party websites. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.5.
A presumption may be made that the Respondent stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such use of the disputed domain names clearly seeks to capitalise on the trade mark value of the Complainant’s MILLIMAN trade mark resulting in misleading diversion.
In registering the disputed domain names that are typographical variants of the Complainant’s trade marks and domain names, and using them to offer sponsored links or redirect Internet users to websites offering competitive goods and services, the Respondent deprives the Complainant of the opportunity to sell its goods and services to prospective clients who are clearly looking for the Complainant and, at the same time, promotes goods and services offered by competitors. The Respondent is clearly engaging in bad faith.
The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel is satisfied that the Respondent is using the disputed domain names for mala fide purposes and for commercial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 names <commillimanbenefits.com>, <millimaanbenefits.com>, <millimabbenefits.com>, <millimanbbenefits.com>, <millimanbeefits.com>, <millimanbeenefits.com>, <millimanbeenfits.com>, <millimanbemefits.com>, <millimanbenedits.com>, <millimanbeneefits.com>, <millimanbeneffits.com>, <millimanbenefiits.com>, <millimanbenefist.com>, <millimanbenefites.com>, <milliman-benefits.com>, <millimanbenefitss.com>, <millimanbenefitts.com>, <millimanbenefiys.com>, <millimanbeneflts.com>, <millimanbeneftis.com>, <millimanbenegits.com>, <millimanbenenfits.com>, <millimanbenfeits.com>, <millimanbenrfits.com>, <millimanbenwfits.com>, <millimanbrnefits.com>, <millimanbwnefits.com>, <millimanebenefits.com>, <millimanenefits.com>, <millimannenefits.com>, and <millimanvenefits.com> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: September 10, 2020