The Complainant is The Manufacturers Life Insurance Company of Toronto, Ontario, Canada, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Perry Wong of North York, Ontario, Canada.
The disputed domain name <manulifeloans.com> is registered with 1&1 Internet SE (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2017. On August 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 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.
The Center verified that the 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 August 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2017.
The Center appointed J. Nelson Landry as the sole panelist in this matter on September 29, 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.
The Complainant, founded in 1887, is a leading Canada based financial services company with its principal operations in Canada, Asia and in the United States of America (“United States”) where it operates and offers its financial services such as financial advice, insurance and wealth as well as asset management solutions for individuals, groups and institutions. Its financial activities are dispensed by more than 34,000 employees, 63,000 agents and thousands of distribution partners around the world which activities have generated in 2014 for the Complainant revenues of USD 37.4 billion.
All this business activities of the Complainant are promoted and carried under its well-known trademarks MANULIFE and MANULIFE FINANCIAL, the first two registered in Canada in 1991 (herein the “MANULIFE Trademark”).
TRADEMARK | JURISDICTION /TM OFFICE | REGISTRATION | IC CLASS | DATE |
MANULIFE | Canada | TMA385240 | May 31,1991 | |
MANULIFE FINANCIAL | Canada | TMA385241 | May 31, 1991 | |
MANULIFE FINANCIAL | Canada | TMA643885 | July 8, 2005 | |
MANULIFE FINANCIAL | United States | 1790892 | 36 | August 31, 1993 |
MANULIFE | United Kingdom of Great Britain and Northern Ireland (“UK”) | 1301399 | 36 | December 8, 1989 |
MANULIFE | European Union (“EU”) | 000540989 | 16, 36, 41 | July 9, 1999 |
The Complainant operates and promotes its activities through numerous websites including “www.manulife.com” and “www.manulife.ca” which attract over 25,000 Internet visitors per month.
The disputed domain name was registered on April 19, 2010. According to the evidence provided by the Complainant the disputed domain name redirects to a website at “www.perrywong.ca” which displays an advertisement for the Respondent’s financial service.
On May 20 and May 27, 2016, the Complainant sent to the Respondent successively two cease and desist letters outlining its MANULIFE brand with four of its above Trademark registrations and associated activities claiming the identical or confusing similarity of the disputed domain name to its MANULIFE Trademark, stating not being aware of any rights or legitimate interest the Respondent may have in respect of the disputed domain name and further mentioning that the disputed domain name “suggests a false origin in respect of any goods or services which [the Respondent] may offer from the site or an endorsement of the same by Manulife or its licensees.” The Complainant further represented that the disputed domain name had been registered and is being used in bad faith and on that basis requested that the Respondent cease trading under the MANULIFE name or trademark and transfer the said domain name to the Complainant.
The Complainant has not received any response nor communication from the Respondent pursuant to its letter.
The Complainant represents that by reason of its long extensive use of its MANULIFE Trademark since at least the beginning of the 20th century in association with financial services and their registrations both as MANULIFE and MANULIFE FINANCIAL in Canada and United States and MANULIFE in UK and EU, it has acquired in its MANULIFE Trademark rights and significant reputation thereof by reason of its extensive and progressing use throughout Canada, United States, UK, EU and Asia and thereby enjoys a strong international reputation.
The Complainant further represents that the disputed domain name incorporates the MANULIFE Trademark to which the generic term “loans” has been associated. According to the Complainant, the said generic term “loans” is closely linked and associated with the Complainant’s field of activities carried under its well-known MANULIFE Trademark and not only creates but contributes to the confusing similarity between the disputed domain name and the Complainant’s MANULIFE Trademark. The Complainant concludes its representations of confusing similarity in quoting a long standing UDRP decision in which the panel stated that the addition of top-level domain such as “.net” or “.com” does not diminish the domain name confusion in determining whether it is identical or confusingly similar (see Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Complainant, who has been active in the field of financial assistance for over 125 years, states that the Respondent was or is not sponsored by nor affiliated in any way with the Complainant, and furthermore states that it has not given to the Respondent any license or permission to use its MANULIFE Trademark in any manner nor to register the disputed domain name. The Complainant submits that the Respondent is not commonly known by the disputed domain name or the term MANULIFE. The Complainant further submits that upon verifying the WhoIs information disclosing that the disputed domain name has been registered by the Respondent Perry Wong, said site does not provide any basis indicating that the latter was or is commonly known by the disputed domain name, there being neither evidence nor resemblance suggesting that the Respondent is commonly known by the disputed domain name.
The Complainant states that the website at the disputed domain name address redirects Internet visitors to the Respondent’s own website “www.perrywong.ca” which permanently displays an advertisement for the Respondent competing financial services business and submits that such use does not bestow legitimate rights or interests upon a respondent. The Complainant further submits that the use of a domain name which incorporates the Complainant’s MANULIFE Trademark to redirect Internet users to its website cannot be only incidental or accidental, but rather indicates a general intent to profit from the goodwill and the confusion created by the identical nature of the disputed domain name with Complainant’s mark and that such conduct clearly does not encourage the recognition of a legitimate interest. The Complainant makes reference to prior UDRP decisions in support of these assertions. The Complainant submits that previous panels have held that selling competing goods or services, coupled with the unauthorized use of a complainant’s trademarks in a confusingly similar domain name does not qualify as a bona fide offer or sale of goods and services under Policy 4(c)(iii) (see America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374).
The Complainant further represents that the registration of the disputed domain name on April 19, 2010, is significantly after the Complainant’s first use in commerce of its MANULIFE Trademark in 1990 and after the Complainant’s registration of its <manulife.com> domain name on February 13, 1994.
On the basis of these facts and representations, the Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that upon considering the marketing and provision of its services in association with its well-known MANULIFE Trademark registered since 1990 and significantly used for decades well before the registration by the Respondent of the disputed domain name on April 19, 2010, and by adding the generic, descriptive term “loans” to the Complainant’s MANULIFE Trademark and registering a domain name that is confusingly similar to its Trademark, the Complainant represents that the Respondent has demonstrated knowledge or familiarity with the Complainant’s brand and business. Upon considering how the Complainant is well known in Canada where the Respondent is located and does business in the same province of Ontario, the Complainant further represents that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of [the complainant’s brand] at the time the disputed domain name was registered” (see Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Upon reiterating the likelihood of confusion with the Complainant’s MANULIFE Trademark by adding the generic descriptive term “loans” to said Trademark, the Respondent was then attempting to profit from such confusion by redirecting Internet visitors to his personal domain name <perrywong.ca> where he offers competing insurance and financial services thus attempting to profit in causing consumers to believe that the Respondent is somewhat associated with the Complainant, on this basis states that these facts are indicative of activities in bad faith.
The Complainant concludes its representations of registration and use of the disputed domain name in bad faith by the Respondent in stating that the Respondent has ignored its attempts and invitation to resolve the dispute outside of the present administrative proceeding in referring to past panels that have held that failure to respond to a cease and desist letter may properly be considered a factor in finding bath faith registration and use of a domain name (see Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330).
The Respondent did not reply to the Complainant’s contentions.
The Complainant has clearly established its extended offer and provision of financial services predominantly in Canada, the United States of America and Asia and marketed and provided the said financial services in insurance, wealth and asset management under its well-known MANULIFE Trademark, the earliest one MANULIFE, registered in UK in 1989 and in Canada 1991 and has thus, as acknowledged by numerous awards, caused such MANULIFE Trademark to become highly distinctive. The disputed domain name includes Complainant’s MANULIFE trademark in its entirety with the addition of the term “loan” which does not prevent a finding of confusing similarity.
As submitted by the Complainant with the support of the decision Roller Blade Inc. v. Chris McCrady, supra, the Panel agrees that the Top-Level Domain such as “.net” and “.com” is generally disregarded in the comparison between a domain name and a trademark for the purposes of assessing confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the well-known MANULIFE Trademark of the Complainant.
The first criterion has been met.
The Complainant has discharged its prima facie burden in stating that although it has considerable employees, agencies and distribution partners around the world, the Respondent is not having nor benefiting of any kind of relationship of any type with the Complainant and furthermore, the latter has clearly stated same both in the Complaint and its cease and desist letter to the Respondent that it has never granted to the Respondent any license or permission to use its MANULIFE Trademark in any manner nor to register the disputed domain name.
The Panel notes that the Complainant has investigated the WhoIs information disclosing the registration of the disputed domain name by the Respondent Perry Wong and found no information or facts showing that the Respondent is commonly known by the disputed domain name or the term MANULIFE. The Panel notes that in its letter of May 20 and May 27, 2016, to the Respondent, the Complainant invited the Respondent to comment the Complainant’s statement of not being aware of any rights or legitimates interests the Respondent may have in respect of the disputed domain name and the Panel further notes that the Respondent has not provided any reply or comments pursuant to the reception of the said cease and desist letter of the Complainant.
The Panel notes that a respondent who incorporates in its disputed domain name a well-known trademark such as the MANULIFE Trademark in the present instance to redirect Internet users to its website is justified to read in said behavior a general intent to profit from the goodwill and the confusion created by the identical nature of the disputed domain name with the Complainant’s Trademark and adopts the conclusion that such conduct does not grant rights or legitimate interests in the disputed domain name. The Panel adopts the conclusion of previous panels holding that offering or providing competing goods or services in association with the unauthorized use of a complainant’s trademark in a confusingly similar domain name does not qualify as a bona fide use of goods and services. The Panel determines that the Respondent has no rights or legitimate interests in the disputed domain name.
The second criterion has been met.
Upon considering the international use provided by its thousands of employees, agents, distribution partners generating revenues of at least USD 35 billion for the year 2014, the confusing similarity of the disputed domain name with the well-known MANULIFE Trademark, the fact that the Respondent is residing in North York, a city near Toronto where the Complainant is located, the Panel is convinced that the Respondent was well aware of the existence, activities and reputation of the Complainant under its well-known MANULIFE Trademark with which it seeks a likelihood of confusion and business association. Considering that said likelihood of confusion is contributing to the diversion of Internet visitors to the personal website of the Respondent at the website “www.perrywong.ca”, the Panel determines that the disputed domain name was registered in bad faith.
The Panel considers that the activities of the Respondent offering competing services in association with an unauthorized use of the MANULIFE Trademark of the Complainant does not qualify as a bone fide use but rather a use in bad faith of the disputed domain name.
In addition, the Panel considers that the Respondent did not answer to the Complaint or to the Complainant’s cease and desist letters being further evidence that the Respondent registered and used the disputed domain name in bad faith.
The third criterion has been met.
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 <manulifeloans.com> be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Date: October 9, 2017
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