WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Manufacturers Life Insurance Company v. domain buy, buy domain

Case No. D2017-1504

1. The Parties

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

The Respondent is domain buy, buy domain of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <manulifebank.biz> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 2, 2017. On August 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2017, 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 August 7, 2017, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and submitted an amended Complaint on August 8, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.

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 Japanese of the Complaint, and the proceedings commenced on August 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 5, 2017.

The Center appointed Douglas Clark as the sole panelist in this matter on September 11, 2017. 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

Founded in 1887, the Complainant The Manufacturers Life Insurance Company is a Canada-based financial services company with principal operations in Canada, Asia and the United States of America ("US") providing financial advice, insurance and wealth and asset management solutions for individuals, groups and institutions. The Complaint is listed on the Toronto Stock Exchange (TSX: MFC), the New York Stock Exchange (NYSE: MFC), the Philippine Stock Exchange (PSE: MFC) and on the Stock Exchange of Hong Kong (SEHK: 945).

The Complainant is the owner of trademark registrations across various jurisdictions, for example:

The Complainant owns and controls a portfolio of domain names bearing the MANULIFE mark, chief among them are <manulife.com>, <manulife.ca>, <manulifebank.com> and <manulifebank.ca>.

The Respondent is domain buy / buy domain of Beijing, China.

The disputed domain name is <manulifebank.biz> and it was registered on January 24, 2017. The website under the disputed domain name does not resolve to any page.

5. Parties' Contentions

A. Complainant

Identical or confusingly similar

The Complainant submits that the disputed domain name <manulifebank.biz> is made entirely up of the registered trademark MANULIFE and the generic word "bank" to which generic Top-Level Domain ("gTLD") ".biz" has been added. It is therefore confusingly similar to the Complainant's registered trademark MANULIFE.

No rights or legitimate interests

The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for MANULIFE or marks incorporating MANULIFE.

The Complainant further submits that by passively holding the disputed domain name the Respondent has failed to make use of this disputed domain name's website and has not demonstrated any attempt to make legitimate use of the disputed domain name and website.

Registered and is being used in bad faith

The Complainant's submissions are:

First, by registering a domain name that simply adds a generic, descriptive term "bank" to the Complainant's MANULIFE trademark, the Respondent has demonstrated a knowledge of and familiarity with the Complainant's brand and business.

Second, the Respondent demanded USD 1,000 for the transfer of the disputed domain name in response to a cease-and-desist letter sent by the Complainant; such intention to sell the disputed domain name to the Complainant therefore constituted bad faith.

Third, by only passively holding the disputed domain name the Respondent is not making any genuine or legitimate use of the disputed domain name and registered the disputed domain name for the purpose of preventing the Complainant from registering the same. As such, even though the disputed domain name has not been used, the registration and use of the disputed domain name was in bad faith.

Fourth, by holding other domain names which misappropriate the trademarks of well-known brands and businesses, the Respondent established a pattern of cybersquatting/typosquatting and such registrations are evidence of bad faith registration and use. Examples provided are:

- <bmoharris.biz> (BMO Harris Bank National Association – BMO HARRIS)
- <cathaybank.biz> (Cathay Bancorp, Inc. – CATHAY BANK)
- <citimortgage.biz> (Citigroup Inc. – CITI)
- <coutts.biz> (Coutts & Co. – COUTTS)
- <cunamutual.biz> (Cuna Mutual Insurance Society – CUNA MUTUAL GROUP)
- <lakelandbank.biz> (Lakeland Bancorp, Inc. – LAKELAND BANK)
- <optumbank.biz> (Optum, Inc. – OPTUM BANK)
- <rbcbank.biz> (Royal Bank of Canada – RBC BANK)

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceedings

The language of the Registration Agreement is in Japanese. However, paragraph 11(a) of the Rules provides that:

"unless otherwise agreed by the parties, or specified 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."

The Complainant requested the language of the proceeding be in English on the grounds that the Complainant is unable to communicate in Japanese – translating the Complaint would incur extra expense and delay; the disputed domain name is in Latin characters; other cases against the Respondent have proceeded in English and the Respondent had responded to a cease-and-desist letter in English.

The Respondent has not responded to the proceeding nor to the request for the language of the proceeding to be in English.

In the case of Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, this panel decided that the Respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding "should, in general be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint."

Based on the fact that the Respondent did correspond with the Complainant in English and that the Respondent has not responded to the Center's notification of a language request the Panel determines the language of proceedings to be English.

6.2. Substantive decision

The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:

(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 used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name <manulifebank.biz> is made up of the registered trademark MANULIFE, the word "bank", and the gTLD ".biz". The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark MANULIFE.

The first part of the paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests.

Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides:

"While the overall burden of proof in UDRP proceedings is on the complainant, 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 a prima facie case 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."

Paragraph 4(c) of the Policy sets out ways in which a respondent may establish they have rights and legitimate interests. These are:

"(i) before any notice to you of the dispute, your 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

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

(iii) you are 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."

The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.

The second part of the paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and used in bad faith.

The Panel finds that the disputed domain name <manulifebank.biz> has been registered in bad faith and is being used in bad faith.

The fact that the disputed domain name does not resolve to an active webpage does not preclude a finding that it has been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0, section 3.3).

The disputed domain name comprises the whole of the Complainant's mark plus the word "bank". The Respondent must have had knowledge of the Complainant's trademark when registering the disputed domain name, especially given the Complainant's worldwide reputation. The Panel finds that the Respondent's registration and conduct in relation to the disputed domain name in the circumstances of the present proceeding accounts to registration and use of the disputed domain name in bad faith.

Further, this case falls with paragraph 4(b)(i) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:

"(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".

The offer to sell the disputed domain name to the Complainant for USD 1,000 clearly falls within this paragraph of the Policy. The fact that the Respondent has registered numerous other domain names incorporating the trademarks of other banks supports this finding.

The third element of paragraph 4(a) of the Policy is, therefore, satisfied.

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, <manulifebank.biz> be transferred to the Complainant

Douglas Clark
Sole Panelist
Date: September 28, 2017