John Hancock Life Insurance Company (U.S.A.) v. Guowei Hai Gui
Claim Number: FA1309001518728
Complainant is John Hancock Life Insurance Company (U.S.A.) (“Complainant”), represented by Joshua S. Jarvis of Foley Hoag LLP, Massachusetts, USA. Respondent is Guowei Hai Gui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johnhancockinsurance.com>, registered with Moniker Online Services, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2013; the National Arbitration Forum received payment on September 11, 2013.
On September 18, 2013, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <johnhancockinsurance.com> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@johnhancockinsurance.com. Also on September 20, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
i. Complainant owns the JOHN HANCOCK mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 557,033 registered April 1, 1952).
ii. Complainant owns the JOHN HANCOCK mark through its trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,097,429, registered September 7, 1997).
iii. Complainant uses the mark in connection with numerous financial services, insurance underwriting and administration, financial planning, and investment for others.
iv. Complainant’s business was founded in 1862 in the United States. The JOHN HANCOCK mark is now registered in over 45 countries.
v. Complainant’s use, promotion, and advertisement of the JOHN HANCOCK mark for over 150 years, has garnered significant and valuable goodwill, such that the mark is considered famous. The New York Times named JOHN HANCOCK one of the “100 most powerful corporate, media, and product brands of the 20th Century.”
i. Policy ¶ 4(a)(i)
1. The <johnhancockinsurance.com> domain name is confusingly similar to Complainant’s JOHN HANCOCK mark. The addition of the term “insurance” actually serves to increase the confusing similarity, as Complainant’s mark is used in connection with insurance services.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is not licensed or otherwise authorized to use the JOHN HANCOCK mark.
2. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial use. The disputed domain name resolves to a “pay-per-click” website, where Respondent presumably has been using the domain name for commercial gain by redirecting Internet users to commercial websites for profit. The resolving website advertises and redirects users to services that compete with Complainant’s insurance services.
iii. Policy ¶ 4(a)(iii)
1. Respondent is a serial cybersquatter, as demonstrated by several previous UDRP decisions adverse to Respondent. This ongoing pattern is evidence of Respondent’s bad faith.
2. Respondent has registered and used the domain name in bad faith because it has hindered Complainant’s customers from contacting Complainant. Nearly all of the links displayed on the resolving page are for services related to, and competing with, Complainant’s financial services offered under the JOHN HANCOCK mark.
3. Respondent’s use of the domain name creates the erroneous impression of endorsement by, or affiliation with, Complainant. Respondent commercially benefits from such confusion as Respondent uses the resolving website in connection with pay-per-click links.
4. Respondent registered the disputed domain name with actual and constructive knowledge that it was confusingly similar to Complainant’s mark. Such knowledge is evidence of Complainant’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the fields of financial services, insurance underwriting and administration, financial planning, investment for others and related activities.
2. Complainant owns the JOHN HANCOCK mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 557,033 registered April 1, 1952) and China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,097,429, registered September 7, 1997).
3. Respondent registered the disputed domain name on October 15, 2002. It resolves to a “pay-per-click” website, where Respondent presumably has been using the domain name for commercial gain by redirecting Internet users to commercial websites for profit. The resolving website advertises and redirects users to services that compete with Complainant’s insurance services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims owns the JOHN HANCOCK mark through numerous trademark registrations with agencies around the world, including registrations with the USPTO (e.g., Reg. No. 557,033 registered April 1, 1952), and the SAIC (Reg. No. 1,097,429, registered September 7, 1997). Complainant uses the mark in connection with numerous financial services, insurance underwriting and administration, financial planning, and investment for others. The Panel notes that the Respondent resides in China. In light of Complainant’s numerous trademark registrations worldwide, including registrations with the USPTO and SAIC, the Panel finds that Complainant has established rights in the JOHN HANCOCK mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark … through its numerous registrations with many governmental trademark authorities. . .including the State Intellectual Property Office of the People’s Republic of China. . .and the United States Patent and Trademark Office.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s JOHN HANCOCK mark. Complainant argues that the <johnhancockinsurance.com> domain name is confusingly similar to the JOHN HANCOCK mark. Specifically, Complainant asserts that the addition of the term “insurance” actually serves to increase the confusing similarity, as Complainant’s mark is used in connection with insurance services. Previous panels tend to agree. For example, in Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the panel found that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business. The Pane also notes that the disputed domain name differs from the mark in that the domain name eliminates the spaces in the mark, and includes the generic top-level domain (“gTLD”) “.com”. Previous panels have consistently held that such differences are insufficient to establish the requisite distinctiveness required of the Policy. For example, in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), the panel wrote, “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.” In line with precedent, the Panel finds that the alterations made to the JOHN HANCOCK mark in Respondent’s domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s JOHN HANCOCK trademark and to use it in its domain name, adding only the word “insurance”, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then used the disputed domain name to resolve to a “pay-per-click” website, where Respondent presumably has been using the domain name for commercial gain by redirecting Internet users to commercial websites for profit. The resolving website advertises and redirects users to services that compete with Complainant’s insurance services;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the domain name. Specifically, Complainant contends that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record indicates that “Guowei Hai Gui” is the registrant of the disputed domain name. Further, Complainant contends that Respondent is not licensed or otherwise authorized to use the JOHN HANCOCK mark. The Panel notes that Respondent did not submit a Response to refute Complainant’s contentions. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant also argues that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or for a noncommercial legitimate use. Complainant asserts that the disputed domain name resolves to a “pay-per-click” website, where Respondent presumably has been using the domain name for commercial gain by redirecting Internet users to commercial websites for profit. Complainant stresses that the resolving website advertises and redirects users to services that compete with Complainant’s insurance services. In Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panel was faced with comparable circumstances, and held that the respondent was not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process. The Panel agrees and finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or for a noncommercial legitimate use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name
was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent is a serial cybersquatter, as is demonstrated by several previous UDRP decisions adverse to Respondent. Complainant argues that this ongoing pattern is evidence of Respondent’s bad faith in the current proceeding. Complainant cites four UDRP cases in which panels entered decisions adverse to Respondent. See L’Oréal v. Gui, No. D2011-0775 (WIPO June 17, 2011); see also Allstate Ins. Co. v. Moniker Privacy Servs. / Gui, No. D2001-0176 (WIPO Mar. 29, 2011); see also US Cmty. Credit Union v. Moniker Privacy Sers., Inc., Registrant [2918486] / Gui, No. D2010-1136 (WIPO Sept. 15, 2010); see also Barclays Bank PLC v. Gui, No. D2010-1991 (WIPO Jan. 11, 2011). Previous panels have recognized evidence of bad faith where a respondent has a history of bad faith as demonstrated by past UDRP decisions. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel finds evidence of bad faith under Policy ¶ 4(b)(ii), based on Complainant’s evidence of several adverse UDRP decisions against Respondent.
Secondly, Complainant argues that Respondent has registered and used the domain name in bad faith because Respondent has hindered Complainant’s customers from contacting Complainant. Complainant notes that nearly all of the links displayed on the resolving page are for services related to, and competing with, Complainant’s financial services offered under the JOHN HANCOCK mark. See Complainant’s Exhibit 10. Previous panels have found evidence of bad faith disruption where the complainant provides evidence that the respondent promotes links to websites that offer products or services in competition with the complainant. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). Complainant includes printouts of the home page and various sub-pages for the resolving website in disputed. The Panel notes that these printouts are included in Annex 10, and show numerous links including <www.metlife.com> and <geico.com>, which provide services that compete with Complainant in the insurance field. As such, the Panel finds evidence of bad faith pursuant to Policy ¶ (4)(b)(iii).
Thirdly, Complainant argues that Respondent’s use of the domain name creates the erroneous impression of endorsement by or affiliation with Complainant. Further, Complainant asserts that Respondent commercially benefits from such confusion by using the resolving website in connection with pay-per-click links. The Panel notes that Annex 10 includes screen shots of the resolving pages, which promote numerous links including <www.metlife.com> and <geico.com> that provide services competing with Complainant in the insurance field. Previous panels have found evidence of bad faith under similar circumstances. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Similarly, the Panel finds that Respondent’s use of the domain name demonstrates bad faith registration and use pursuant to Policy ¶ (4)(iv).
Fourthly, Complainant contends that Respondent registered the disputed domain name with actual and constructive knowledge that the domain was confusingly similar to Complainant’s mark. Complainant argues that such knowledge is further evidence of Complainant’s bad faith. Complainant contends that Respondent should have known of Complainant’s rights in the mark given the marks extensive notoriety and use in commerce, as well as Complainant’s trademark registrations with the USPTO. However, previous panels have generally concluded that constructive notice is insufficient to support a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). Still, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the JOHN HANCOCK mark given Respondent’s full incorporation of Complainant’s famous mark in the domain name, and the fact that the resolving webpage provides links to Complainant’s website as well as links to others in the insurance field. See Complainant’s Annex 10 for screen shots of the links on the resolving pages. Therefore, the Panel concludes that Respondent registered the <johnhancockinsurance.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the JOHN HANCOCK mark, adding to it the word “insurance” and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <johnhancockinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October, 17, 2013
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